India: Registration Of Celebrity Names As Trade Marks

Barbadian singer, songwriter, and actress Robyn Rihanna Fenty recently decided to sue her father Ronald Fenty to stop him from using the "Fenty" trademark. Rihanna has registered the trademark "Fenty" and uses it for her range of cosmetic products, Fenty Beauty. Her father had been using this mark since 2017 as the name of his company, Fenty Entertainment, and it has been alleged by her that her father has been gaining undue profit by banking on the reputation of Fenty Beauty. She is also suing Moses Perkins, co-founder of Fenty Entertainment for fraudulently making bookings in her name, even though she is not associated with the company in any capacity.1

Situation Internationally - The abovementioned situation is a bit tricky as the person being sued by the trademark owner is the one who gave her the name in the first place. There have been many instances where a person with a name same as a registered trademark, has been prohibited from using his own name due to the same being an existing registered mark in the same class of goods and services. Until recently, trademark registries around the world had been reluctant to register names as trademarks, due to the fact that the person trying to register his name wasn't the exclusive owner of the name. However, this approach has been revised and celebrities are now able to register their names. For example, in 1997, a UK Court held that 'Elvis Presley' was not a registrable mark for memorabilia. A businessman named Sid Shaw had challenged the trademarks registered by a company selling toilet related products under the brand name 'Elvis Presley'. It was held that neither the deceased singer nor anyone else exclusively owned the name "Elvis Presley" and that it had become so well known that it was no longer distinctive and therefore not eligible for trademark protection. However, in 2001, the UK Court held that the trademark "Arsenal" was correctly registered, irrespective of the fact that it had been used before its registration by others in a non-trademark sense. It was concluded that prior use of the name didn't render it non-distinctive for football related merchandise like shirts and scarves associated with the football club. Although Arsenal is the name of a football team, the UK IP Office has confirmed that a similar approach is taken with respect to names belonging to an individual or a group. The Trademarks Registry at the UK Patent Office issued a Practice Amendment Notice to regulate the names of famous people, either living or deceased. This amendment has enabled the celebrities to have a better control over the use of their names beyond the primary field of operation. This has given them a greater control as compared to others who register the names of their businesses for typical commercial activity.2

With the incessant celebrity worship that is prevalent in India and everywhere else, there has been a growing practice of using the name of a celebrity for unscrupulous businesses. The reason behind such dishonest practices is that usage of a celebrity name increases visibility of the respective goods or services as well as creates an impression in the minds of customers that the said celebrity has endorsed these goods or services. Such malpractices have made the celebrities aware of their rights and the commercial value of their names. Many celebrities, especially in the US, have started registering their names as trademarks for various classes of goods and services. Getting a trademark registration allows celebrities to prevent others from using their name for dishonest commercial purposes. Also, the viability of any product enhances as soon as it gets endorsed by a celebrity, so registration of a name as a trademark is another way of enhancing the sources of income. For example, Beyoncé has reserved the exclusive right, with respect to baby goods, for the usage of 'Blue Ivory Carter', her daughter's name.3 Angelina Jolie also strived to fight for such exclusivity for her daughter's name, 'Shiloh'. She was allegedly in a legal fight with Symine Salimpour, to protect the usage of 'Shiloh' for the new range of perfume.4

Situation in India - Although celebrities in India lag behind their western counterparts in registering their names as trademarks, they can't really blame the law for this. It is evident that there is no specific provision in Trademarks Act, 1999, which allows or disallows registration of names, thus it is safe to assume that registration of a personal name is allowed. As per Section 2(zb) of the Act, "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors. A perusal of the above definition will make it abundantly clear that a trademark cannot be registered in isolation so as to protect the brand value of a person. Therefore, if a celebrity is desirous of registering his/her name it should be with respect to a particular class of goods or/and services. For instance, Paris Hilton got a trademark for her name for sale of clothes and perfumes, whereas David Beckham has a trademark registration for clothing, footwear and headgear. Shah Rukh khan too has filed applications to register trademark 'SRK', in almost all the 45 classes.

Without a rich body of case laws and a comprehensive statute governing image or publicity rights, the Indian legal system has proven to be quite inadequate when it comes to dealing with the modern trend of registering names as trademarks. However, the law has started to mature and evolve in this area. The right to publicity as an independent right was first time recognized by the Delhi High Court in ICC Development (International) Ltd. v. Arvee Enterprises5 where the court held that the right to publicity does not extend to events and is confined to persons.6 Section 14 of the Trade Marks Act has been significantly instrumental in regulating an unchecked use of celebrity names. It prohibits the use of personal names under section 14 where an application is made for the registration of trademark which falsely suggests connection with a living person, or person whose death took place within 20 years prior to date of application for registration of trademark. Certain names like, Sri Sai Baba, Lord Buddha, Sri Ramakrishna, the Sikh gurus cannot be registered under section 16(1) of 1940, 23(1) of Trade & Merchandise Act, 1958, Mark &159(2) of the Trade Mark Act, 1999.7

Footnotes

1. Ben Beaumont-Thomas, 'Rihanna Sues Father Over Use Of Fenty Brand Name' (the Guardian, 2019) (https://www.theguardian.com/music/2019/jan/16/rihanna-sues-father-over-use-of-fenty-brand-name) accessed 5 February 2019.

2. Knspartners.com. (2011). [online] Available at: http://www.knspartners.com/assets/files/ARTICLE%20CELEBRITY%20MARKS.pdf [Accessed 5 Feb. 2019].

3. Steve Brachmann, 'Beyoncé Seeks Trademark on Daughter Blue Ivy Carter Name for Everything from Cosmetics to High Chairs - Ipwatchdog.Com | Patents & Patent Law' (IPWatchdog.com | Patents & Patent Law, 2017) (http://www.ipwatchdog.com/2017/02/14/beyonces-trademark-blue-ivy-carter/id=78276/) accessed 5 February 2019.

4. 'Angelina Jolie Fights To Save Misuse Of Shiloh's Name' (Chinadaily.com.cn, 2019) (http://www.chinadaily.com.cn/entertainment/2007-05/14/content_871851.htm) accessed 5 February 2019.

5. ICC Development (International) Ltd. v. Arvee Enterprises, (2003 (26) PTC 245 Del).

6. Cheshta Sharma, 'How Indian Celebrities Are Protected By IP Laws? - IIPTA' (IIPTA, 2019) (https://www.iipta.com/indian-celebrities-protected-iplaws/) accessed 5 February 2019.

7. Ibid.

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