Is trademark a celebrity's best friend?

2018 | roadmap

Many celebrities are choosing to register their names as a trademark in order to prevent other people from exploiting it for profit (ie advertising products carrying their names). One could argue this basically means that they seek for privacy through trademark registration, which is rooted in the idea that everyone should have the right to be left alone and have control over the commercialisation of their persona, including celebrities, who have invested a lot of work in building their recognition in the world of fame.

We talked about this with rising young football star Carlos Rolando*, who was seeking advice on protecting his privacy through trademark registration.
* The interviewee is a fictional character who we created for this contribution. His trademark rights have not (yet) been protected.

Why do celebrities trademark their personal name?
After a great season in the Football Kings League, Carlos Rolando's name exploded like a bomb. In a world of Twitter, Facebook and Instagram, there are not many left, who would not recognize his name. Moreover, he has recently become aware of many products, such as T-shirts, cups, perfumes and even dog collars bearing his name. He pointed out that these products create confusion among customers, who probably believe he is endorsing them, which is not the case. Taking into account his charity endeavours, he also does not want anyone to be able to benefit from his name for commercial purposes only. He wants to be a football player first and foremost, not a celebrity, and therefore wishes to register his name as a trademark to prevent such exploitation.

Grounds for registering a personal name as a trademark in the EU
Under Regulation 2015/2424,1 an EU trademark may consist of any signs, in particular words, including, inter alia, personal names, provided they are capable of distinguishing the goods or services of one undertaking from those of others.2

A trademark does not give a celebrity all-encompassing rights to his or her name, but is limited to the indication of origin of the goods and services, which is the trademark's function. Therefore, if successfully registered, the celebrity gains a monopoly on his or her name only for registered goods and services.

Carlos was thus advised to select the most appropriate classes of goods and / or services when registering the trademark. For example, it does not make much sense to register a "Carlos Rolando" trademark for chemical products (Class 1 of NCL3) or motors and engines (Class 7 of NCL), but certainly does when it comes to things like clothing, footwear (Class 25 of NCL) or toys (Class 28 of NCL).

Downside of trademarking a personal name
During our talk, Carlos emphasised that he only wants to prevent third parties from exploiting his name for profit and has no intention of using the "Carlos Rolando" trademark himself as he only seeks for some privacy. This sounds reasonable enough, but is not how the world of trademarks works. If a celebrity wants to keep the trademark, he or she will have to use it; otherwise it may be subject to revocation.

Under Regulation 207/2009,4 the rights of the proprietor of an EU trademark can be revoked if the trademark has not been put to genuine use in the EU in connection with the goods or services in respect of which it is registered within a continuous period of five years and there are no proper reasons for non-use. Moreover, where grounds for revocation of rights exist in respect of only some of the goods or services for which the EU trademark is registered, the rights of the proprietor shall be declared revoked in respect of those goods or services only.5

This means that in order to keep his trademark, Carlos will need to "start a career" in relation to registered goods and services, otherwise he may "lose" his privacy in respect of some or all of the goods or services for which the trademark is registered. For example, to prevent third parties from producing and selling T-shirts, sweaters and other clothing, Carlos will need to start his own clothing line to keep his trademark safe.

Conclusion: friendly, but not a friend
Registering a personal name as a trademark is a double-edged sword. It may prevent others from exploiting a celebrity's name, but in order to preserve the situation, the celebrity has to use the trademark. This forces celebrities to engage in different businesses in return for privacy.

In the middle of our discussion, Carlos Rolando asked: "Does trademark registration of my personal name even protect my privacy or only let me choose who will exploit and commercialise my name?" Good question! Now he knows the answer.

Further reading

A "private sphere" for entrepreneurs - are you ready for the new Trade Secrets Directive?
How to surprise the market: The secret trademark application

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Footnotes
REGULATION (EU) 2015/2424 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trademark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trademark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trademarks and Designs) ("Regulation 2015/2424").

Art. 1, para. 8.  

The Nice Classification ("NCL") is an international classification of goods and services applied to the registration of trademarks.

4 COUNCIL REGULATION (EC) No 207/2009 of 26 February 2009 on the Community trademark ("Regulation 207/2009").

Article 51.

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Eva Škufca

Eva Škufca

Local Partner in cooperation with Schoenherr

T: +386 1 200 09 82
e.skufca@schoenherr.eu

Urša Kranjc

Urša Kranjc

Associate

T: +386 1 200 09 64
u.kranjc@schoenherr.eu

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