99 Problems? Trade marking Blue Ivy Carter

Rolling Stone has reported that Jay-Z and Beyonce want to trade mark the name of their new daughter, “Blue Ivy Carter”.

It’s being claimed that the new parents have plans to reserve their child’s name in the US for possible use as a brand name for a line of baby-related products, including “carriages” (prams), and “diapers” (nappies).

However the happy parents may not actually want to run the world – they perhaps just wish to knock the hustle of third parties taking advantage of their daughter’s distinctive moniker.

Is a trade mark the same as a brand, and does it apply all over the world?

A trade mark is a sign which distinguishes goods and services of an organisation from those of its competitors, indicating particular origin and usually an associated level of quality. 

The classic distinction between trade marks and brands is that a trade mark is the “intellectual property” of a brand.  However the terms are increasingly used interchangeably (thanks, I think, to television programmes such as The Apprentice and Dragon’s Den mentioning “brands” every ten seconds as if they are pieces of gold).  Even the UK’s Intellectual Property Office doesn’t seem too bothered about the distinction anymore.

 Trade mark rights are established in a particular jurisdiction, and the rights are generally only enforceable in that jurisdiction.  However, there are a range of international trade mark conventions which facilitate the protection of trade marks in more than one jurisdiction.

It’s not known if Beyonce and Jay-Z intend to register Blue Ivy Carter in the UK, and they haven’t contacted Brodies (yet).  Nevertheless it’s good to be prepared, so I have had a look at the relevant law.

The Trade Marks Act 1994 and distinctiveness

In the UK the applicable legislation is the Trade Marks Act 1994 (“the Act”), and section 1 states clearly that a trade mark means “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertaking”, and that “a trade mark may, in particular, consist of words (including personal names)”.

Applicants seeking to register their personal name must meet the essential criteria for trade mark registration, and in the vast majority of cases this will mean meeting section 3(1)(b) of the Act by showing that their name has distinctive character.

Distinctiveness depends on a variety of factors, but as a rule of thumb, the more common the name is the less likely it will be considered distinctive as there may be many others with the same name. Likewise, the more unusual the name is, the greater the distinctiveness, and the greater the likelihood that registration will be granted.

It’s worth noting that a speculative registration of Blue Ivy Carter by a third party separate from Beyonce or Jay-Z is likely to be rejected in the UK under section 3(6) of the Act (bad faith).

The proprietor of a registered trade mark has exclusive use of the mark for the class of goods or services for which it is registered. There are 45 classes in total (and we will mention some of them below).

The “Image Carriers” Exception

To discourage celebrities seeking to register their names in every class, the Trade Marks Registry has offered guidance that, in many cases, the famous name attached to any product will indicate to consumers that the product is “about the person whose name it is rather than as an indication that the goods/services are supplied by, or under the control of, one undertaking”.

In this situation, any use of the celebrity’s name in relation to the product will not be taken as an indication of the origin or quality of the goods (the purposes usually performed by trade marks), but as descriptive of the subject matter of the goods.

This means that applications to register a famous name in relation to classes of goods involving “image carriers” (posters, calendars etc) may fall within the absolute grounds for refusal set down in section 3(1)(c) (descriptiveness) of the Act.

Additionally, unofficial merchandisers who use the names of celebrities in descriptive or decorative ways would seek to rely on the statutory defence which permits honest use of descriptors (section 11(2) (b)), or the more fundamental argument that such use does not denote trade origin.

Celebrities on the trade mark register

If Blue Ivy Carter isn’t yet on the UK trade mark register, who is?

Unsurprisingly, David Beckham has several trade marks related to his name, the most recent being a Community trade mark registered in November in Class 25 (Clothing; footwear; headgear; underwear). (The Community Trade Mark system is the trademark system which applies in the EU, whereby registration of a trademark with the Office for Harmonization in the Internal Market leads to a registration which is effective throughout the EU as a whole.)

As befits his surname, Russell Brand’s name is registered in the UK in Class 06 (Key rings) Class 09 (pre-recorded media eg CDs; DVDs), Class 16 (calendars; cards; greeting cards; stationery; posters or prints), Class 21: (household or kitchen utensils), Class 28 (toys) and Class 41 (entertainment services).  (As discussed above, it’s questionable whether the use of Russell’s name in some of these classes could be relied upon in any infringement action.)

Kylie Minogue’s trading company (KDB Pty) holds about 40 trade marks containing “Kylie”,  including marks distinguishing her lingerie and perfume goods.

Quite surprisingly, the currently ubiquitous Holly Willoughby and Philip Schofield don’t appear to have their names trade marked.  Perhaps they don’t have time to consider endorsing goods!

“Before you finish – my name is Blue Ivy Carter and I am a fisherman from Arbroath – am I going to lose my name?”

Don’t worry Blue Ivy Carter- section 11(2)(a) of the Act states that “a registered trade mark is not infringed by the use by a person of his own name”.

ps baby names is an interesting topic.  The Freakonomics chaps theorised in 2005 that “once a name catches on among high-income, highly-educated parents, it starts working its way down the socioeconomic ladder.”  It seems however that their theory may be disproved.

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