In today’s highly digital and connected world, protecting the brand name of your business is important. The impact and influence of social media has increased the scale of brand promotion and broadened the reach of businesses and in particular, celebrities and influencers to millions of followers and households. Now more than ever, an individual and their name can be the “brand” and so intellectual property protections such as obtaining a trade mark registration can provide vital protection and a competitive advantage.
In Australia, whether a trade mark is capable of distinguishing the goods or services applied for from those of other persons is one of the factors taken into account by the Trade Marks Office (“TMO”) upon examination of a trade mark application for registration.[1] Generally speaking, in relation to names, the more common the name and the more commonplace the goods or services, the less distinguishable it is likely to be and the more likely that a ground for rejection to registration will be raised by the TMO, unless the applicant is able to demonstrate that the trade mark does or will distinguish the applicant’s goods or services. [2] For instance, this may involve providing sufficient evidence of use of the trade mark in the marketplace to the TMO.
In Australia and around the world, celebrities have sought to register trade marks over their own names such as Miranda Kerr, Elle Macpherson and Lionel Messi just to name a few.
For instance, Australian model and businesswoman, Miranda Kerr, successfully registered her name ‘MIRANDA KERR’ as a trade mark in 2012 in relation to goods or services such as cosmetics, clothing, beauty salons and marketing.[3]
In addition, Australian model and businesswoman Elle Macpherson holds various registered Australian trade marks including for her name and signature in relation to goods or services such as cosmetics, clothing, bags, advertising and entertainment services.[4]
Well-known soccer player, Lionel Messi, who represents FC Barcelona and the Argentina National Football team, was able to trade mark a logo containing his surname in the European Union, after a lengthy dispute with a Spanish cycling business named ‘MASSI’. The Spanish company opposed this trade mark application and argued that the similarity between their logos would cause confusion. This argument was rejected last year by the Court of Justice of the European Union after taking into account Messi’s international reputation. [5]
Other highly publicised trade mark disputes around the world involving “names” demonstrate the importance of obtaining trade mark registration as early as possible.
For instance, Australian clothing designer, Katie Jane Taylor recently commenced legal proceedings in the Federal Court of Australia against American songwriter, Katheryn Elizabeth Hudson (better known as her stage name, Katy Perry) and her company Killer Queen LLC alleging trade mark infringement in relation to goods or services such as the sale of clothing and accessories under the name of ‘KATY PERRY’. Taylor has held a trade mark registration in Australia for the words ‘Katie Perry’ in relation to clothing since 2008. [6] This case is still continuing.
Further, in 2016, a company in which popular music artist Beyoncé Knowles-Carter was the sole member, (“Applicant”) applied to the United States Patent and Trademark Office to trade mark her first born child’s name, ‘BLUE IVY CARTER’ in relation to a variety of goods or services. Veronica Morales (“Opponent”) who operated a lifestyle event planning company known as ‘Blue Ivy’ opposed this application, and asserted, amongst other grounds, that the use and registration of the Applicant’s proposed trade mark would cause confusion as it was too similar to her previously registered trade mark ‘BLUE IVY’ for certain services such as event planning.
On appeal, the Trademark Trial and Appeal Board found, inter alia, that “the parties’ goods and services, and their respective channels of trade, are so dissimilar that confusion is unlikely…”[7] and the Opponents claims were dismissed.
Pointon Partners can assist you in protecting your trade marks and brand names. If you wish to discuss matters relating to this article or the protection of your intellectual property, then please feel free to contact Felicity Cara-Carson, David Mazzeo or Arhita Del Fierro of our Intellectual Property Team on (03) 9614 7707.
[1] Trade Marks Act 1995 (Cth), section 41.
[2] IP Australia Trade Marks Manual of Practice and Procedure, Part 22, Section 6.
[3] See Australian Trade Mark Registration No. 1482597.
[4] See Australian Trade Mark Registration Nos. 516423, 602607, 750897, 827191, 913085, 1327891, 1491011.
[5] T-554/14 – Messi Cuccittini v EUIPO – J-M.-E.V. e hijos (MESSI).
[6] See Australian Trade Mark Registration No. 1264761.
[7] Veronica Morales d/b/a Blue Ivy v BGK Trademark Holdings, LLC Opposition No. 91234467 (TTAB June 30, 2020).
Authors
