Celebrity Branding: Famous Names and Pseudonyms as Trademarks
Increasingly, celebrities are beginning to sell various products by announcing their uniqueness and putting their own name on them. This article explains why in such a case it is worth registering the name or pseudonym as a trademark.
Every day, a person uses his or her own name. In informal settings and in business relationships, the name and surname are a visual identity. Pursuant to Article 19 of the Civil Code of the Russian Federation (hereinafter the Civil Code), an individual must use his or her own name when exercising rights and obligations. Using another person’s name or pseudonym is not allowed without the person’s consent.
Evolution of the Internet, social networks, as well as development and popularization of personal brands has led to the fact that many famous and media personalities have begun to use their own names and pseudonyms, as well as virtual names not only as a self-identity, but also as an object of commercial activity. Thus, singers, actors and bloggers begin to offer for sale clothes, athletes sell sports nutrition and equipment issued under their name, etc.
At the same time, they are usually not directly related to the production of goods. However, the use of their names increases sales and attracts fans of these people to the products. Great demand generates attempts by unscrupulous entrepreneurs to counterfeit such products and use other people’s names and pseudonyms without the consent of the owners.
This quite logically raises questions of how in such a case the name and the rights of the person are protected, and what actions need to be taken to get the fullest scope of rights to protect their own interests.
According to clause 1 of Article 150 of the Civil Code, the name of a citizen is an intangible asset, which belongs to him or her from birth or by virtue of the law. It is inalienable and non-transferable in any way. Pursuant to Article 151 of the Civil Code: “If a citizen suffers moral damage (physical or mental suffering) by actions that violate his or her personal non-property rights or infringe on non-material benefits belonging to the citizen, as well as in other cases stipulated by law, the court may impose on the violator the obligation of monetary compensation for the said harm”. Thus, if someone illegally uses the name of another person in any way, the latter has the right to demand the recovery of pecuniary compensation for the moral damage caused.
If we consider the name and surname as well as the pseudonym in the aspect of intellectual property, it should be noted that, unlike the corporate name of a legal entity, they are not listed among the objects of intellectual property in Article 1225 of the Civil Code. This is due to the fact that it is the name and surname of a person that most often is not the result of a person’s creative activity. Usually, parents choose a name from those already known and available. Thus, it is difficult to claim that a person’s name will be absolutely unique. At the same time, if one person will own the exclusive rights to the name, then others will not be able to use that name, which sounds absurd.
Part 4 of the Civil Code has somehow provisions dedicated to a person’s name. They are located in the section of copyright and related rights. This is due to the fact that it is in this area that the name of the creator of intellectual property has the greatest importance. The results of creative activity after publication become the object of public access and thanks to the name or pseudonym, people can associate the person with his or her works. General analysis of these norms indicates that similarly to the general provisions of the Civil Code, dedicated to the name of a citizen, the right to the name and pseudonym of the author are non-property and inalienable rights.
As for the branch of patent law and visual identity, there are no provisions devoted separately to the name of the creator of the object.
Given the name or pseudonym are not objects of intellectual property, as a general rule, a person who simply uses his or her own name to mark any goods, in the case of illegal use can only claim compensation for moral damages.
However, the current legislation allows the registration of a name or pseudonym as a trademark. In such a case, if the owner takes the necessary actions, and the object will be registered in the Register of Trademarks and Service Marks of the Russian Federation, the right holder will be able to use all the means of protection provided for the field of trademarks. This includes recourse to the court with claims: to prohibit the use on goods, labels, etc., the registered designation, the recovery of compensation and the destruction of goods with an illegally applied trademark. Agree that such sanctions cause more tangible damage to the offender.
Does anyone have the right to register a name or pseudonym as a trademark?
The legislator imposes a number of requirements for designations that can be registered as a trademark. To summarize, it is allowed to register a name or pseudonym as a trademark in the following cases:
- In such a case, the person can prove that he or she really owns the listed objects and their use is not contrary to the ethics standards and morality (in this case it means a pseudonym).
As an example, a trademark completely identical to the name and surname of the famous Russian singer Alla Pugacheva can be mentioned. Trademark No. 213030 “ALLA PUGACHEVA” is registered in Rospatent for use in respect of more than 15 classes of goods of the Nice Classification. The stage name “Дима Билан” is also registered as a trademark. Noticeably, at the time of his birth this famous performer was named Victor Belan, but in 2008 he changed it to Dima Bilan.
At the same time, subclause 2 of clause 9 of Article 1483 of the Russian Civil Code contains a direct indication of the cases when a name or a pseudonym may not be registered as a trademark: if the name or a pseudonym belong to another person and he or she has not given his or permission for registration.
Trademark applications which include names and pseudonyms, do not differ in legal status from applications for other trademarks and also undergo two stages of expert examination after the receipt of documents in Rospatent: formal examination and examination of the designation on the merits.
To increase the probability of registration of a trademark, which includes or consists of a name, we recommend strengthening its distinctiveness and uniqueness at the stage of creation of the designation. To this end, the applicant can add fancy elements, for example, perform the writing of the designation in a special font or add a graphic element.
In this case, even if the name is considered not protectable, and it will be withdrawn from legal protection, the trademark as a whole will be original and can be registered. And then offenders will not be able to use not only this trademark, but also identical and confusingly similar designations. An example of “enhancing” distinctiveness of a trademark, which includes the name and family name of a celebrity can be considered a designation with the name of Anastasia Volochkova, the famous Russian ballerina. Thus, the registered trademark № 270757 (currently legal protection is terminated), contains the name and surname of the ballerina, and a graphic element in the form of a swan with a crown.
In conclusion, it seems important to highlight the following:
- Any person can apply for registration of a trademark consisting of his or her name, surname or pseudonym.
- There are no special requirements for such trademark applications. However, the applicant must submit documents proving that it is his or her name, etc.
- If the applicant wishes to register someone else’s name or pseudonym, it is necessary to attach to the application a written consent of that person.
- In the case of a positive decision of the experts and the registration of the trademark, the right holder may make any requirements to the offenders provided for in cases of illegal use of trademarks. At the same time, the list of possible claims is much wider in comparison with the illegal use of the name and surname of a citizen.
- Possession of a trademark allows the owner to grant others the right to use the designation, which gives an opportunity to generate additional income to the right holder of the trademark.