Personality rights and trademarks in names: Wielding a double-edged sword?

A recent post (https://www.dhirubhai.net/posts/startup-pedia_startuppedia-startup-sharktankindia-activity-7281346776756862976-bQuM?utm_source=share&utm_medium=member_desktop) regarding the grant of trademark registration to Ashneer Grover, of BharatPe and Shark Tank fame, for his name as a word mark, sparked off a debate on the appropriateness of such registration. I was one of the persons who got excited (having just written an intense examination for qualification as a TM agent) and responded to the post hurriedly, unnecessarily criticizing the Registrar’s decision.?

?After preliminary research on the protection of personality rights worldwide (including India), I am slightly wiser, but still excited by the topic. My initial disbelief about the registration has been replaced by the understanding that Registrar allowed the word mark based on the evidence of distinctiveness. However, in my humble opinion, a personal full name is not very useful as a trademark. It is better to come up with a unique identifier as a trademark for the trade or business one engages in, rather than using one’s own full name. This view is supported by law since there could be several persons with identical names (the ‘John Smith’ problem), and it is questionable to monopolize a name. The general principles in the matter of registration of surnames have been stated in Burford and Co. Ltd.’s Application ([1919] 36 RPC 139. ?

?The Indian trademarks statute provides limits as well as safeguards to the use of names as trademarks – for example,? S 14 of the Trade Marks Act, 1999, prohibits the use of names of living persons or persons who have expired within 20 years of applications except with the consent of the person or the successor, and S 29 provides that a business owner has common law remedy against passing off. So Ashneer Grover is well protected against infringers even without trademark registration in his name. I guess startup owners would welcome such infringers who offer them a load of money!

?Irrespective of the reputation enjoyed by a business owner in the name, the bona fide use of that name cannot be prevented (S 35). Thus a fictitious Ashneer Grover cannot be prevented from using the name of the business he has been running (say ‘Ashneer Grover Coaching Institute’) by Ashneer Grover, Proprietor of BharatPe. Being entitled to protection to the mark as a whole, it may not be possible to contest marks such as ‘Ashneer Investment Services’ or ‘Grover Private Limited’. Therefore, the rights enjoyed by Ashneer Grover based on his registration are akin to Schr?dinger’s cat- they exist as well as are non-existent. In the event of litigation, he may prevail or he may not. Moreover, licensing or assignments of trademarks with full names is impracticable.

?In Mehta v Registrar of Trade Marks, the name ‘Sulekha’, a word signifying feminine name, was allowed registration on evidence of distinctiveness. A very common-sounding name ‘Aggarwal Sweet Corner’ was also allowed registration on the basis of user. So the allowability of a mark does not just depend on whether the name itself is uncommon but also on the duration and/or extent of use in trade.

?Globally the issue of registration of names as trademarks is very contentious. Chapter 6 of the UK’s Trade Marks Registry Work Manual outlines the Registry’s practice in this matter and states that “full names have a greater capacity to distinguish the goods/services of one undertaking than a surname per se… unless the name happens to be very common..” In the Elvis Presley case (Elvis Presley case [1997] RPC 543), the Court of Appeal concluded “..there should be no a priori assumption that only a celebrity or his successor may ever market (or license the marketing of) his character. Monopolies should not be so readily created.” A signature is allowed for registration in the UK and India since it is prima facie capable of distinguishing the goods and services offered by the applicant.

?One might argue that a large number of established, well-known businesses have used their personal / family names, ?e.g. Ford, Calvin Klein, Christian Dior, etc. While Henry Ford established the Ford Motor Company and also used ‘Ford’ as a logo, many such registrations are allowed on the evidence of use rather than based on any distinctiveness. There are several instances where registration for names has been refused. Most of the fashion and luxury goods suffer piracy, counterfeiting, and imitations – the use of the name does not guarantee an infringement-proof mark.

?Ashneer Grover is not the first person to obtain a trademark for his name. Shah Rukh Khan and Sachin Tendulkar have registered their names as trademarks in 2008 and 2010. (Note: Amitabh Bachchan registered a company ‘Amitabh Bachchan Corporation Limited’. This is not the same as registering a trademark in the name). ?What could be the rationale for such registrations? There has been a tendency in the entertainment industry to exploit the likeness of famous, successful personalities. While certain acts like mimicry and ‘body double’ for stunts are legitimate, on many occasions there has been gainful exploitation of the likeness beyond acceptable extent- for example, a whole movie with lookalikes and imitators! So, the trademark registration by the celebrities appears to be an attempt at protecting their personality rights.

?Personality rights subsist as privacy rights and publicity rights. The latter rights are important for safeguarding the commercial interests of celebrities, often beyond the boundaries of their fame or expertise. For example, celebrities can control the rights to merchandise (photos, souvenirs and memorabilia, audio-visual recordings, etc). Personality rights are protected as a common law remedy for passing off, but statutory protections exist in some states of the USA, and civil law jurisdictions such as France and Germany. ??

?The matter of enforcing personality rights is not straightforward and depends on the legal regime. In most of the common law jurisdictions, such rights are extinguished after the death of the person concerned. In jurisdictions with codified statutes, the personality rights remain enforceable for 60-75 years after death. Acts like news reporting, criticism, and mimicry, are not treated as violations of personality rights. Moreover, outcomes of disputes vary from case to case.

?Many celebrities in India were successful in asserting their personality rights- examples include Amitabh Bachchan, Sachin Tendulkar, Rajnikanth, Anil Kapoor, etc. Others like the father of the late Sushant Singh Rajput were unfortunate- the court ruled in Krishna Kishore Singh vs Sarla A. Saraogi and ors. that the personality rights of Sushant Singh Rajput were lost after his death. In Lady Diana’s case, the Franklin Mint had approached Lady Diana’s successor-in-interest to license certain commemorative items. The license was refused, but the Franklin Mint continued to market the items. The successor-in-interest filed a suit, but their claim was rejected by the US District Court for the Central District of California on the basis that the applicable jurisdiction in the case was Great Britain, where Lady Diana’s rights did not exist after her death. The ruling was upheld by the US Court of Appeals for the 9th Circuit.

Later, the Franklin Mint sought summary judgment in respect of other claims of the case under S 43(a) of the Lanham Act. A verdict was granted in their favor, stating that the plaintiff’s action amounted to use in an aesthetically appealing way rather than by way of indicating source or endorsement, as trademarks normally do. The judge observed that “when a celebrity’s persona becomes pervasive, any mental association between the persona and the source or endorsement of goods is dulled to the point of meaninglessness”. The judge also observed that Lady Diana never objected to the use of her likeness in her lifetime and that there were many instances of commercial exploitation of her personality.

?In Gary Honey vs Australian Airlines ([1989] FCA 234), the plaintiff, an athlete, wanted to restrain the defendant from using his photograph, alleging that it suggested endorsement of the defendant’s activities. The Court rejected this claim, stating that the impugned image depicted excellence in general rather than the depiction of a person in particular.

?To conclude, the use of a name appears to be a straightforward choice of trademark for a celebrity- one need not go searching for an invented, fanciful, or arbitrary word. Nevertheless, enforcing such a mark could pose several difficulties. ??