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It is only natural and prudent to want to protect a personal brand by acquiring a trade mark, but there is a common misconception that using or registering a personal name or full names as a trade mark is an absolute right.
In trade mark law, distinctiveness and priority are paramount. Specifically, the law considers whether the chosen trade mark can distinguish the goods and services for which protection is sought and, in a battle of names, which name or trade mark was first used and/or registered as a source identifier.
These principles in relation to names were recently highlighted in two cases abroad.
Europe's trade mark authority recently refused registration for the name GEORGE ORWELL in relation to books and films on the grounds that it will be perceived as a descriptive indication of the subject matter (i.e. the literary works of George Orwell, the author) as opposed to being distinctive, which is the essence of a trade mark. The decision has the trade mark fraternity in a tizzy because famous names are being held to a higher standard to qualify for protection in contrast with established trade mark principles. In addition, trade mark rights are distinct from copyright which protected the literary contents of Orwell's books, and copyright considerations are not decisive in relation to trade mark registrability.
A further interesting case concerned James Martin, a celebrity chef and television personality. The chef sought to claim exclusivity in his name by registering it as a trade mark for "Alcoholic beverages" and "spirits" amongst other goods in class 33 in the UK. However, his trade mark applications were refused because of earlier registered rights for the marks JAMES MARTIN'S and JAMES MARTIN in relation to "Whisky", also in class 33. The relevant law prohibits the registration of a mark that is identical to an earlier trade mark registered in relation to identical or similar goods.
In South Africa, personal names or identifiers can be registered as trade marks, if they are distinctive and do not conflict with earlier rights. The standard threshold for registrability applies equally to all names. Importantly, unless use of full names has been made in good faith, a proprietor with an earlier registered identical or similar trade mark may well have cause and grounds to prevent the use and registration of your name as a trade mark. Our law similarly considers which name occurred first in time as a trade mark.
Top tips for winning in the trade mark name game include applying to register a name as a trade mark sooner rather than later and ensuring that the name or mark adopted, even if it is your own, personal name, is distinctive of the intended goods and services and not already in use, or registered, as a trade mark.
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.
