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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.
Lionel Messi
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
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.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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