Ian Wood and Mary Bagnall, intellectual property partners at Charles Russell, discuss the recent decision by musicians Jay-Z and Beyonce to trademark the name of their daughter, Blue Ivy Carter. The article throws light on how the world of intellectual property rights in areas such as trademarks and images is evolving.

Nearly everyone wants to protect their image – and many are able to make money from it.  We are all familiar with celebrities appearing in advertisements, endorsing products and using their names on merchandising - and the money can be enormous. For example, in 2006 footballer David Beckham earned ÂŁ4.4 million (around $7 million) from football club Real Madrid and more than ÂŁ19 million from commercial endorsements.  Golfer Rory McIlroy has recently been unveiled as Nike’s new brand ambassador in a deal reported to be worth $100 to $125 million over the next five years.

As part of this image protection, many celebrities register their name as a trademark including sportsmen (such as Roger Federer and Tiger Woods) and those in the music industry (such as Paul McCartney, Britney Spears and Justin Bieber).  It is not just the celebrities themselves who are involved. On January 26, 2012, less than three weeks after the birth of Beyonce and Jay-Z’s daughter, Blue Ivy Carter, a trademark application was made for “Blue Ivy Carter” covering all sorts of goods and services.

But if it is possible for a baby’s name to be registered, one can well imagine that other people (especially those with a high public profile), would wish to do the same – especially if it would somehow allow that person to control the use of their name by others. Despite this, many well-known people (such as politicians and high-profile business people) have not registered their names as trademarks.  There is a good reason for this: as explained in more detail below, rather than giving a broad spectrum of control, a registered trademark will only protect the use of that mark (or name) in trade – and even then that protection only applies to its use in relation to specific goods or services (which have to be identified by the party seeking registration). 

What does “trademarking” mean?

When considering what protection registered trademarks can give, it is important to recognize what “trademarking” a name really means. Although the precise detail of the law varies considerably from one country to another, generally the law is such that it will recognize that rights can be built up in a name which is used in the course of trade to identify a business (or its goods or services). Sometimes that name will be an invented and highly-distinctive word (such as “Xerox”); on other occasions it may be a combination of ordinary surnames (such as “Rolls” and “Royce”); and again it might be a person’s name. But if it is wished to rely on any rights that have been built up through use (and to prevent what might be perceived as “misuse” of that name in the course of trade), the courts will require a considerable amount of evidence to show that there is goodwill in that name and that it has become distinctive of the party using it. This evidence can be very expensive to assemble.

Accordingly, there arose a system of registering trademarks – the basic point of which was to avoid the need to provide all the evidence showing there was goodwill, and indeed to protect a sufficiently distinctive name even before any goodwill had been acquired.  When someone says they are “trademarking” a name, they usually mean they are using this system and are applying for a registered trademark.

This system allows trademarks (which are considered sufficiently distinctive of the goods or services of the party applying to register the mark) to be registered in different “classes” – each class corresponding to very different types of goods or services. Thus the same trademark can be registered by different people for different goods – for example “Burton” for clothing, biscuits, beer and snow boards, or “Polo” for cars, clothing and mints. There is unlikely to be any confusion between these different types of goods – unlike, for example, perfume, soap and cosmetics, where use of the same mark would probably leave the public thinking they were connected.

These registered trademarks generally have to be registered on a country-by-country basis – although there are exceptions (for example a single trademark registration covering the whole of the European Union can be obtained).

Among the criteria for maintaining a registration is that the mark be used for the goods or services for which it is registered - and if it is not used for five years (typically, although the period is different for some countries) for any distinct category of goods or services for which it is registered, the registration can be lost.  There also has to be an intention to use the mark for the goods or services for which the mark is applied for - so there is generally no point in obtaining a mark for all conceivable goods and services. Thus, while it is easy to see that Victoria Beckham might wish to have a registered trademark covering perfume and cosmetics, it is difficult to see why her business interests might extend to “abrasive cloths and paper; windscreen and windshield cleaning liquids” (for which she has also sought registered trademark protection). 

So, in summary, registered trademarks:

• Can only be used to give protection in the course of a business (including that of clubs and charities) - and not socially;

• Have to cover specific goods or services – so the same mark might be used by different people for different things;

• Are geographic – so only cover specific countries or territories; and

• Have to be used for the goods or services for which they are registered – or the registration may be lost.

Are all people’s names capable of registration?

The practice varies from one country to another but nowadays generally the starting point is that a person’s name can be registered (rather than in the past, where the starting point was that they could not). However, there will often be circumstances in which the name lacks the necessary distinctive character such that it is not capable of distinguishing the goods or services of one “undertaking” (i.e. generally a business) from another. For example there clearly are several doctors in the US whose surnames are “Smith” – and so some other distinctive feature may be required if it is to form part of a registered trademark. Thus, a stylized form of the name (e.g. a person’s signature) will usually be registrable – but would only provide protection for the name in that (or a confusingly similar) stylized form.

Whilst other distinctive features (and various plays on a name) might be thought of as a modern phenomenon (sprinter Usain Bolt has UK-registered trademarks not only for “Usain Bolt” and “Usain Bolt” in stylized form, but also “Usain Bolt of Lightening”, deriving from his media nickname of “Lightning Bolt”) a certain Mr Smith (how much less distinctive can a name get?!) went into business with his nephew – resulting in a very distinctive addition to his name, resulting in the very familiar registered trademark “Smith and Nephew.”

Are trademarks the complete picture regarding image and name protection?

While at one end of the spectrum for a celebrity wishing to exploit their name and image, it would be sensible to seek trademark protection for goods and services that might well be sold with their authority using their name (such as clothing or cosmetics), for a person not wishing to commercialize their name (such as a politician or other high-profile figure), generally trademark protection would be of no practical value.

However, trademarks are only part of the picture regarding image and name protection; there are many other legal aspects relating to the protection of a person’s image and name which might need to be considered and which will generally be of more relevance to most people – for example laws relating to copyright, libel and slander. And you should not forget the practical aspects - such as ensuring that you obtain the email (and even website) addresses based on your name, especially where there is an increased risk of misuse. 

Editor’s note: Guernsey recently made a world-first by introducing new image rights legislation enabling high-profile people to potentially register and protect the “asset” of a range of recognizable characteristics – from catchphrases to hairstyles. For an example of an article on the issue, click here.