Celebrities have done a great deal to increase awareness of intellectual property ("IP"). The reason for this is simple: celebrities make significant use of IP and when they get into legal spats, their disputes make the news. The reason why celebrities are attracted to IP in the first place is equally simple: they know that they can use IP to significantly increase their wealth.
One way celebrities get richer through IP is by obtaining trade mark registrations for, inter alia, their names, nicknames, signatures, images and catchphrases. These registrations can cover all sorts of goods or services, but things like clothing, cosmetics and jewellery tend to be very popular. They then license their rights to companies to use the trade marks and the companies pay royalties.
In this article, I'll be looking at two celebrities who have recently been involved in trade mark disputes. The one celebrity was successful, the other was not.
For the benefit of any readers who are unfamiliar with this name, Barcelona and Argentina star Lionel Messi is regarded as the finest footballer of his generation, possibly even of all time. On five occasions, he has been awarded the Ballon d'Or, the annual award for the world's best footballer. Messi recently filed applications in Europe to register a trade mark comprising the name Messi and a fairly innocuous logo for sports clothing and equipment. His application was opposed by an individual called Jaime Coma, on the basis that it clashed with his registration for the trade mark Massi for similar goods. The opposition was successful. Messi took this decision on appeal and the opposition was upheld. But highly successful sportsmen tend to be tenacious, so Messi took this matter on a further appeal to the General Court of the European Union.
When it comes to issues of this sort, the court considers three types of similarity: visual similarity, phonetic similarity and conceptual similarity. The General Court accepted that the trade marks Messi and Massi are visually similar. It also accepted that the trade marks are phonetically similar, but it went on to hold that the conceptual differences between the trade marks are such that there will be no consumer confusion.
What are these conceptual differences? Well, as the court said, just about everyone knows who Lionel Messi is, so they are unlikely to confuse the trade mark Messi with the trade mark Massi. The court made the point that, as Messi appears on TV and in advertising, his reputation extends well beyond football. It went on to add that even if there are people who have no idea who Messi is, the mere fact that the goods in issue here (sports clothing and equipment) will be bought by people who have some knowledge of sport is highly relevant.
Dr Dre is perhaps almost as famous as Lionel Messi. The rapper who sold his headset business to Apple for USD3-billion recently got involved in a spat with a celebrity gynaecologist – the good doctor's full name is Draion Burch, but he seemingly goes by the name of Dr Drai.
When Dr Drai filed a US trade mark application to register his name for various things such as books, audiobooks, podcasts, MP3s and educational services, Dr Dre registered his displeasure by filing an opposition, claiming that there would be consumer confusion. Dr Dre himself has trade mark registrations for his name covering, inter alia, posters, clothing and entertainment services. In his opposition, Dr Dre claimed the confusion would arise because of the "entertainment nature" of the goods and services covered by Dr Drai's application. Needless to say, Dr Drai denied that there would be any confusion. He also vehemently denied that he was hoping to piggyback on Dr Dre's fame, saying that he had no wish to be associated with a hip-hop artist who was associated with "misogyny and homophobic things." These things can get nasty!
The US Patent and Trade Mark Office accepted that the trade marks are phonetically similar, but it held that there was no likelihood of confusion because of the differences in the goods and the services, with much turning on the fact that Dr Drai's products all have a medical focus. There was no suggestion of any trade connection.
Unfortunately, we do not have many celebrity trade mark cases in South Africa, but exactly the same principles apply – visual, phonetic and conceptual similarity.
Reviewed by Gaelyn Scott, director and head of ENSafrica's IP department.
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