Should Celebrities Register their Names and Images as Trademarks in India?

Introduction

In recent years, many celebrities have sought to protect their reputation and popularity by registering their birth names and professional names as trademarks worldwide.

In India, while ‘celebrity’ isn’t clearly defined in IP law, the Copyright Act uses ‘performer,’ which includes actors, singers, musicians, dancers, and other public entertainers.

Historically, trademark offices were hesitant to register names as trademarks because individuals did not “own” their names exclusively. However, with the rise of celebrity culture, there has been a surge in businesses misusing celebrity names to attract customers by implying endorsement, leading many celebrities to register their names to protect their rights.

The Origin of Celebrity Trademarks Globally

In the 1980s, Madonna became one of the first celebrities to use trademark law to protect her likeness. Another notable case occurred in 1998, when Elvis Presley’s estate won a case against 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. 

Today, celebrities use trademarks similarly to how companies use them for products, as their names serve as a powerful branding tool. For instance, Kim Kardashian holds US trademarks for her name in connection with advertising (under number 4,978,865) and entertainment services (under number 4,989,420). Beyoncé has also registered her name as a trademark for products like clothing and fragrances, helping her control its use and maintain her brand.

Some celebrities have expanded their trademark protection into newer areas like virtual goods and NFTs. Muhammad Ali, Cristiano Ronaldo, and David Beckham have all filed trademarks related to virtual goods and services to protect their names in the digital space.

Celebrity Trademarks in India

In India, the Trade Marks Act of 1999 does not specifically address the registration of celebrity names. However, Section 14 helps manage the unauthorized use of personal names. Celebrities like Shah Rukh Khan, Kajol, Ajay Devgan, Alia Bhatt, and Amitabh Bachchan have successfully registered their names as trademarks. Indian law also provides additional protections for the personal image and privacy of celebrities under Articles 19 and 21 of the Indian Constitution.

Other examples of celebrity trademarks in India include BABA RAMDEV, whose name has been trademarked by the Divya Yog Mandir to prevent unauthorized use, Sanjeev Kapoor, who registered SANJEEV KAPOOR KHAZANA in the food industry, Akshay Kumar, who trademarked KHILADI, Sachin Tendulkar who registered his initials, SRT.

In D.M. Entertainment v. Baby Gift House (CS (OS) No. 893/2002), a well-known Indian performer, Daler Mehndi, took action against an unauthorised domain name registration, ‘dalermehndi.net.’ The Delhi High Court ruled in favor of the singer, preventing the unauthorized use of his name and acknowledging the performer’s fame. The court also held the defendants liable for violation of the right of publicity, false endorsement and passing off.

In Tata Sons Limited v. Ramadasoft (Case No. D2000-1713), Tata Sons, under the Tata Group, succeeded in evicting a cyber-squatter from ten contested internet domain names. They filed a complaint at WIPO wherein the latter settled that domain names used by the Respondent were confusingly similar to the Complainant’s trade mark TATA, hence having no rights or legitimate interests over the domain names and having registered and used said domain names in bad faith. These specifics entitled the order transferring the domain names from the Respondent to the Complainant.

In another case, Amitabh Bachchan v. Rajat Nagi and Ors. (CS(COMM) 819/2022) the Delhi High Court issued an ad interim in rem injunction protecting Amitabh Bachchan’s image and voice from unauthorized commercial use. This marked a significant development in India, as it was the first John Doe order for personality rights.

Can a Person be Registered as a Trademark in India?

A person cannot be registered as a trademark, which implies that there isn’t a clear legal way to protect their image as a trade mark either. The Trademarks Act of 1999 doesn’t specifically say whether personal names can be registered, so it seems that registering a personal name is allowed.

According to Section 2(zb) of the Act, a “trade mark” is something that can be represented visually and helps distinguish one person’s goods or services from another’s. Clearly, trademarks are meant to protect the brand value of a person, not just an isolated name. Thus, if a celebrity wants to register their name, it should relate to a specific type of product or service. In other words, while a person cannot be registered as a trademark per se, their name can be trademarked if it is linked to specific goods or services.

Further, a celebrity can get trademark protection only if their name has gained “secondary meaning,” i.e., people connect their name to them rather than just to the product. This connection can be shown through surveys, consumer opinions, how exclusive the name is, and how long it has been used.

Additionally, the Emblems and Names (Prevention of Improper Use) Act, 1950, prevents the use of names of national figures like freedom fighters for business purposes without government permission.

Finally, it is important to note that if a trademark is not used for five consecutive years, it can be removed from the register to prevent defensive registration. Therefore, a celebrity’s trademark only protects their name in areas where it has been registered, and not universally.

Remedial Measures

Under the Trade Marks Act, 1999, celebrities in India can take specific remedial measures to protect their names and images.

First, they can register their names and likenesses as trade marks, providing legal recognition and exclusive rights against unauthorized use. This registration must demonstrate that the name or image has acquired distinctiveness and is associated with the celebrity’s brand. 

Second, regular monitoring of trade mark databases helps identify potential infringements early. In cases of unauthorized use, celebrities can issue cease-and-desist letters to infringers, compelling them to halt misuse. Filing opposition against conflicting trade mark applications can further safeguard their rights. If necessary, celebrities can pursue legal action for trade mark infringement, seeking damages and injunctions to prevent future violations.

Additionally, utilizing collective trademarks or joining industry associations can enhance protection.

Continuous public engagement and brand management reinforce the association of their names and images with their identity.

Overall, leveraging the Trade Marks Act provides a robust framework for protecting the personal brands of celebrities in India.

Conclusion

As celebrities navigate the complex world of fame and branding, trademarking their names has become a key strategy. It allows them to control how their names are used, protect their identity, and capitalize on their personal brand. Trademarking isn’t just a legal step; it opens up new avenues for licensing and merchandising while maintaining control over their public image.

Though there are still challenges, the relationship between celebrities and trade mark law shows how legal systems can adapt to cultural and economic changes. As celebrities continue to have a significant impact on society, using trade marks effectively becomes a powerful way to protect not just their names, but the core of their fame and success.

References

  1. https://www.mondaq.com/india/intellectual-property/1185944/
  2. R. Bailav, Celebrities using trademark route to check name misuse: Celebrities using trademark route to misuse
  3. https://jipel.law.nyu.edu/trademarks-in-the-entertainment-industry/
  4. https://finbold.com/muhammad-ali-registered-as-a-trademark-in-web3-covering-nfts-and-metaverse/ 
  5. http://trademarkalertz.com.au/trademark/1315754-sanjeev-kapoor-s-khazana
  6. https://www.mondaq.com/india/intellectual-property/1185944/
  7. http://www.marketing- schools.org/consumer-psychology/marketing-with-celebrities.html
  8. http://www.indianmba.com/occasional_papers/

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