Up till a few years back, trademark registries around the world had been reluctant to register names as trademarks, due to the fact that the person trying to register his/her name wasn't the exclusive owner of the name.
With the incessant celebrity worship that is prevalent in India and also around the world, there has been a growing practice of using the name of a celebrity for corrupt/dishonest businesses. Such mala-fide practice is prevalent owing to the reason that celebrity name when used in relation to a business, the same increases visibility of the respective goods sold or services rendered and also creates an impression in the minds of consumers that the said celebrity has endorsed these goods or services.
Owing to the prevailing mala-fide practices, more and more celebrities are becoming aware of their rights and the commercial value attached to their names, and therefore, there has been a growing demand for registration of their names as trademarks for various goods and/or services.
HISTORY
In the 1980s, Madonna became one of the first celebrities to consult trademark law to protect her likeness rights. Later in the year 1998, another prominent trademark case was a battle between Elvis Presley's estate and "The Velvet Elvis," (now called 'The Velvet Melvin') a dive bar in Houston. While the traditional understanding of trademark doctrine applies most seamlessly to tangible goods or services, many current-day celebrities have begun to follow in Madonna and Elvis's footsteps in seeking protection of their identity and likeness.
In many ways, 'selfmarks'1 function like trademarks do under the modern doctrine. Selfmarks represent a particular source in the mind of the public, albeit one associated with a well-known persona instead of with more traditional goods or services.2 The use of the celebrity's name captures the public's attention, sparks curiosity and creates interest in the products and services. No wonder, companies and manufacturers do not shy away from using celebrities to launch and market their products. The use of a celebrity name in an advertisement may help to breathe life into a product.3A famous example is that of Kim Kardashian West, who is a television celebrity, model, and a spokesperson, holds numerous registered trademarks in different forms of her name. At the USPTO, she holds the Registration for the trademarks (selfmarks): "KIM KARDASHIAN WEST" with Registration No. 4,978,865 in relation to services under Class 35- "advertising services, namely, promoting the brands, goods and services of others; and endorsement services, namely, promoting the goods and services of others." and "KIM KARDASHIAN WEST" with Registration Number 4,989,420 under Class 41 in relation to services namely, "entertainment services, namely, personal appearances by a celebrity, actress and model."
THE LAW ON REGISTERING NAMES AS TRADEMARKS IN INDIA
There are no specific provisions in the Trade Marks Act, 1999, that allow or disallow the registration of celebrity names as trademark in India. In accordance with Section 2(zb) of the Trade Marks Act, 1999 (hereinafter referred to as the 'Act') defines "trade mark" as 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. Section 14 of the Act has however, instrumental in regulating unchecked use of celebrity names i.e., preventing/ restricting 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 wherein the Registrar may require a written consent from such living person or from a legal representative (in case the person is deceased).
Over the years, the Indian Courts have recognized the reputation/ goodwill attached to a celebrity name. In the case of D.M. Entertainment vs. Baby Gift House and Ors,4 a famous Indian performer and composer Daler Mehndi brought an action against the defendant for registering the domain name 'dalermehndi.net'. The hon'ble Delhi High Court in this case restrained the defendant from using the trademark 'DALER MEHNDI' in their domain name, thus recognizing the fact that the performer's name had fame and reputation.
List of Indian celebrities who have got a trademark registration for their name [nonexhaustive list]
DEFENSIVE REGISTRATION IS FROWNED UPON
The trademark law in India is amply clear on the point that it provides protection only when the mark is being used on goods or services and not merely to protect the brand value of a person, thereby meaning that the protection is limited to the goods or services that the said mark is applied for. However, there has been a growing trend in India to protect the selfmark in as many classes possible with an aim to protect the reputation of the celebrity rather than to use it on actual goods or services which is contrary to the practice followed elsewhere. For instance, Shahrukh Khan has applied for the registration of his name "SHAH RUKH KHAN" as well as his initials 'SRK' as trademark under almost all 45 classes in India. Such defensive registration is highly frowned upon and in fact not permitted under the Act. A trademark can still be opposed, cancelled or removed from the register on grounds of non-use, hence it is always advisable to get the trademark only in relation to goods/services for which the mark is used or proposed to be used.
CONCLUSION
The idea behind registering the celebrity's name as a trademark is to prevent misuse of the name by unscrupulous businesses. This not only allows the celebrity to protect his/her name and image from being associated arbitrarily with a plethora of products, but also ensures that the celebrity is paid every time he/she lends his/her name to a product. However, it seems that the celebrities in India have been given the wrong memo. This is because the growing trend in India seems to be moving more towards defensive registration, which is far from the trend followed by other countries around the world. We are however hopeful that the practice in India with regard to the registration of celebrity name as a trademark will eventually catch-up to the everevolving trademark law world-wide.
Footnotes
1. “Selfmarks” are branded personal identifiers that can be protected as trademarks. [coined by William McGeveran]
2. Hous. L. Rev., William McGeveran, Selfmarks, 56 Hous. L. Rev. 333 (2018).
3. Dr. Ranjana Ferrão, “Status of Celebrity Marks in India”, 2016.
4. CS(OS) No. 893/2002 before the Hon'ble High Court of Delhi at New Delhi decided on 29.04.2010.
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