We are pleased to bring to you our next guest post co-authored by Ramit Rana and Malvika Aggarwal (Co-Author):
Ramit is the founding Partner at STEP NEXT LEGAL, New Delhi. He is a Practising Advocate at the Delhi High Court, and other lower Courts of Delhi with over five years of experience. He has industry experience in Networking and Testing, as he had done B.Tech in Computer Science.He has worked for cases under IPR (Trademark, Patents & Copyright), RERA, CCI, Arbitrations, DRC, Cyber Laws, Data Protection and Privacy laws, Property, Recovery Suits, 138 NI Act, Custom Matters, Arbitration, L.A, N.C.L.T. and all kind of Civil and Criminal matters.
Malvika Aggarwal is a final year law student pursuing B.A. LL.B. (H) at School of Law, Galgotia University and is at present an Intern with STEP NEXT LEGAL.
Ramit has authored guests posts (co—authored with Aman Sagar) for us earlier which can be viewed here and here
Time and again people try to get trademark on the name of individuals whether living or dead but there is always some ambiguity on whether the trademark will be granted or not. Even though no provision under the Trademark Act, 1999 directly bars the registration of a name identifying with a person. Generally, it depends upon your application. If the application does not include statements of consent from the living person in case the trademark identifies with that living person and the statement that the trademark does not identify with any living person in the case of the dead person then the registration will not be granted.
In this article, we are going to discuss the question that whether we can get a trademark registered which identifies with a deceased person or it uses the name or signature of a deceased person. The article will include the trademark law of India, U.S., and Japan, in relation to the title captioned herein.
Trademark Laws under different statutes:
- As Per U.S. Trademark Law
For registering a living person’s name as a trademark, the written consent of that person is required and statement in regards to that consent has to be published in the official gazette and registration certificate.
If the name does not depict any living person then a statement to that effect must be printed in the official gazette and the registration certificate. The applicant should also mention in the application if the name identifies with any character of literature or with any historical deceased person. As per § 2 (15 U.S.C. § 1052) of the U.S Trademark laws, trademark cannot be registered if the trademark falsely identifies with a dead person. Also, registration of a trademark which consist the name or person or identifies with a living person without his written permission/consent is not allowed. The name, portrait, and signature of the deceased US president cannot be used without the consent of the widow. If the mark contains name, signature, or it identifies with a living person then a written consent from that person is required.
There have been cases in the U.S where the family members have filed a trademark on the name after their death. The two cases are of Caylee Anthony and Trayvon Martin. Both of them were killed and their families tried to get their names registered as a trademark so that no one else can get it trademark and make profit out of it.
So, in the case of Caylee Anthony where her grandparents wanted to get “Caylee Anthony” and “Justice for Caylee” registered as trademark after her death. You can read the other case details here. In the Trayvon Martin case, his mother filed an application to get “Justice for Trayvon” and “I am Trayvon” registered as trademark. You can read the case details here.
- As Per Trademark Law of Japan
In Japan, the Japan Patent office has granted the registration of the names of many deceased famous and historical personalities to the people who were completely unrelated to these personalities. The registered trademark on the name well known person by the Japan Patent Office are ‘Cleopatra’, ‘Napoleon’, ‘Edison’, ‘Kennedy’ ‘Newton’, ‘Mozart’, ‘Picasso’, and some like ‘Mother Teresa’, ‘Chaplin and many more registered as trademark owned by specific organizations.
The revised Trademark Examination Manual (TEM) 42.107.04 of 2009 provides a way to file application for registration of a name of a historical person or name of a well-known deceased personality as a trademark.
While examining the application for registration, the examiners must pay more attention to the applications for registering the names of famous personality, and historical persons as trademark to ensure that the application does not cause any harm and damage to the social and public interest regardless of the generally followed and accepted sense of morality, which falls under the Article 4(1)(vii) of the Trademark Act. So, the examiners have to pay more attention and specifically analyze these applications and check whether they fall under the provision and must also keep the following points in consideration,
- The popularity of the historical famous persons and well-known persons;
- Acceptance of the name of that famous and historical person throughout the nation;
- Availability of the name of historical and famous person for trademark;
- The Relationship between the availability of the name of the historical person and the designated goods or services;
- Circumstance, purpose, or reason of the application; and
- Relationship between the applicant and the historical person.
If while examining the application the examiner finds that an application is filed by an applicant who intends to use and monopolize the interest in the name of a historical or famous deceased person as trademark to earn profits while knowing that this would result in the damage of public interest, such application will fall under Article 4(1)(vii) of the Trademark Act. The basis will be that the filed application will disturb the fairness in competition and it will cause damage to social and public interest.
- As Per Indian Trademark Law
Under the Indian Trademark law a person cannot register as trademark which suggests any connection with a deceased person whose death took place with two years before the date of application. Section 14 of the Trademark Act, 1999 stops any person to register a trademark which falsely identifies with any person who died within the 20 years of the date filing of the application. The registrar may refuse the application to proceed further unless a written consent from the legal heirs and representative of the deceased. It is important to furnish the written consent or else the registrar will deny proceeding further with the application.
THE TRADEMARK REGISTRATION CASE ON THE NAME OF GEORGE FLOYD
Recently, three different trademarks are claimed in U.S. which can be identified with and are related to George Floyd, who was brutally killed by the police after which the global movement of ‘black Lives Matter’ started. One trademark is claimed by his family to register a phrase ‘The George Floyd Foundation’; another is filed by a person called Mushonga for using Floyd’s name in Hollywood Projects, and another filed by Geogious Demetriou who is trying to get trademark on the phrases ‘Black Lives Matter’ and ‘I can’t breathe’. So, there is still time to find out what is the future of these claimed trademarks.
In our opinion, getting a trademark registered on the name of a deceased person to whom the public is emotionally attached or the person was famous among the public makes the people believe that the trademark is related to that person and the owner earns a lot of profit out of it. These people get the trademark registered with the sole intention of profiting out of the death of these personalities using the sentiments of people. In many cases the family members of the deceased files the application for registration of trademark. They claim that they are filing the application of the trademark so that they can defend in case any outsider wrongfully tries to get the trademark with the sole intension to make profits. The acceptance of the registration only depends on the competence of the application i.e. the application must contain properly all the required details.