Can a Celebrity name be registered as a trademark?
John F. Kennedy’s “forgive your enemies but, never forget their names” is a quote, though negative highlights the importance of the name in this 21st century of a highly competitive and globalized era. Every second eminent celebrity around the world, especially in the US, is now running to register their name as ‘Trademark’. In this scenario, the question is whether a Celebrity name be registered as a Trademark or not? This article is an attempt to answer the cited question and to discuss all the possibilities in registering the name as a trademark.
Who are these Celebrities?
The dictionary meaning of the word ‘celebrity’ means a famous person. The word celebrity is derived from the old French word celebrite or Latin term celebritas which means frequented or honored. Generally, it refers to a person who is widely recognized in a given society and commands a degree of public and media attention. It may include any actors, sportspersons, singers, politicians, and other media personalities.
Why this uproar for Celebrity Trademark?
We have seen that celebrities like Amitabh Bachchan, Shahrukh Khan, and Sachin Tendulkar are starred in the branding of a wide range of goods and services. Such publicity and advertising have made them a brand value that even the use of their name is sufficient to attract the public attention towards the goods and services. In that case, companies were fond of using celebrity names with their goods and services. However, it must be kept in mind that using the celebrity name without their consent for commercial exploitation will be regarded as unfair trade practice.
Thus to protect and prohibits the unauthorized use of their name celebrity can either go for protection under copyright or trademark. Since, in the case of Krishika Lulla v. Shyam Vithalrao Devkatta (2016) 2 SCC 521 the Supreme Court held that title of the works cannot be protected under copyright, then thus the only possible protection left is a trademark. However, for registering their name as a trademark it should be with respect to a particular class of goods or services. That means a trademark cannot be registered in isolation so as to protect the brand value of a person.
Legal Precedents highlighting the importance of celebrity name/persona
Arun Jaitley v Network Solutions Private Limited, (2011) 181 DLT 716 concerning the fight over the domain name is one of the prominent case on celebrity trademark. In this case, the court held that Arun Jaitley being a celebrity by his own right can protect his name from being used by any other person. Thus the defendant using the plaintiff name in making the website was held wrong.
In another case of D.M. Entertainment v. Baby Gift House and Ors MANU/ DE/ 2043/ 2010 Daler Mehndi, a famous Indian performer and composer bought an action against the defendant for selling dolls, which, were allegedly imitations of, and identical to the likeness of Daler Mehndi. The plaintiff urges that such an act by the defendant is the commercial exploitation of his persona. The Delhi High Court held that the defendants were selling the dolls, on the basis of publicity value or goodwill in the artist’s persona into the product. Thus the Court concluded that the right of publicity of Daler Mehndi was infringed.
A person can be said to be a celebrity when he is popular in the public eye. These celebrities have their brand value in the market and thus the trademark protection for their name, catchphrase, professional name, media name or nickname, and signature pose is a good move by the celebrities to secure their reputation which they had well-earned after their time and effort in their respective field. Also, some IP practitioners suggest that to protect name celebrities should opt for trademark protection. However, at the same time, one needs to keep in mind that if the registered trademark remains unused for a period of five consecutive years, then the mark may be removed from the trademark register. Thus one cannot only register their name for more stardom and popularity. Through the above two discussed cases, the Indian Judiciary has also been successful in recognizing the fact that the performer’s name or persona had fame and reputation and thus one cannot make unauthorized use of the name. Thus this can be right to say that a celebrity name can be registered as a trademark.