Can A Celebrity Name Be Registered As Trademark? Meta Title- Celebrity Trademark

INTRODUCTION

A celebrity is a person who is famous in the eyes of the general public and has goodwill attached to it, they are in constant spotlight they can be actors, sportspersons, singers, etc. In ancient times the name of Kings and Queens were used to make the products prevalent in the market, this technique has worked in the past and that is why companies do not fail to sponsor a celebrity to launch their products to make them prevalent in the market. To prevent the undue usage of their goodwill and branding celebrities used to get their names registered under the trademark act.

The term ‘Celebrity’ is not defined in the Intellectual Property Law in India; however, the Indian Copyright Act defines the term “performer” which is a wider expression and may include the word “Celebrity”. A performer “includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a performance”. The special rights of performers in envisaged in Section 38 2 of the Copyright Act.

This is not a complete definition. A celebrity can be a person who has public recognition and has some goodwill and branding attached to his name. Thus, we cannot say a performer must always be a celebrity and a celebrity must always be a performer.

LAW RELATING TO REGISTRATION OF NAMES AS TRADEMARKS IN INDIA

There is not any particular provision that prohibits celebrities to register their name as trademarks in India under the trademark act, of 1999. Thus, it can be assumed that registration of names as trademarks is allowed. As per Section 2(zb) 3 of the Act, trademark means, “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 the shape of goods, their packaging, and combination of colors.”

[Image Sources : Shutterstock]

Also, Section 14 4 of the trademark act, 1999 comes into pictures, it prohibits the registration of a deceased person’s name and it also regulates the unchecked use of celebrity names i.e. it prohibits the registration of such persons who have been deceased within 20 years of the date of
application or whose names are falsely attached with a living person, that is why it also require
written consent from the person whose name is being registered or from a legal representative,
where the person is deceased.

Are there any live examples of celebrity trademarks?

There are a couple of prominent cases of celebrity trademark the first one being, “Arun Jaitley vs Network Solutions Private Ltd 5 ” this case is about to the fight over the domain name. The defendant has used the name “Arun Jaitley” in its name and as a result of which the court held that the name “Arun Jaitley” being a celebrity of his own has the right to protect his name from being used by another person, thus the defendant was wrong in using the name of the plaintiff in his website.

Secondly, we have another case of “D.M. Entertainment v. Baby Gift House and Ors 6 ”. Daler Mehndi the famous Punjabi music artist, composer, and performer brought a suit against the defendant who was selling dolls which were the exact imitation of Daler Mehndi, due to the likeness of the artist there were huge selling of that doll and Daler Mehndi (defendant), urged that such an act by the defendant is the commercial exploitation of his persona and thus he claimed to infringement of his rights.

On this, the Delhi High Court held that, “the defendant was selling the dolls on the publicity and the goodwill in the artist’s persona in the product and thus the court held that the right of publicity of Daler Mehndi was infringed.”

List of Indian celebrities who have got a trademark registration for their name [non-
exhaustive list]

The trademark law in India is very clear on the point that a name will only be protected under a trademark when it is used concerning to any product or service and not merely to protect the identity or the brand value of that person. While India has seen a growing trend to protect the reputation of the celebrity by registering the self-mark under the trademarks act rather than using it on the actual goods or services which is contrary to the practice. One of the examples is Shahrukh Kahn has applied under almost all 45 classes for the registration of “SHAH RUKH KHAN” as well as “SRK”. Although it is not used on any kind of product or for any services, the act says that the trademark can be canceled and removed on the ground of non-use, and such a
defensive trademark is not permitted under the act.

CONCLUSION

Celebrities are the person whose names are famous and have stardom and popularity in their life. If their names are attached to any product or service the goodwill of that particular celebrity makes that product or service famous. The popularity and goodwill earned by the celebrities over some time and thus anyone who uses their name, nickname, or signature pose must pay them.

Thus, the celebrities should register their name under the trademarks act which is to be used on goods as well as for services. Also, if their names are registered no one can use them without their consent and it will prevent misuse. But if that registered name is not in use for five consecutive years, then it may be removed from the trademark register. Therefore, one should not register their name for stardom and popularity.

Author: Kushagra Singh, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing

1 Trademark Act, § 2(zb), 1999
2 Indian Copyright Act, § 38, 1957
3 Id at 1.
4 Trademark Act, § 14, 1999
5 Arun Jaitley vs Network Solution Pvt Ltd, (2011) 181 DLT 716
6 D.M. Entertainment v. Baby Gift House and Ors, MANU/DE/2043/2010