Rights obtained by registered trade marks
So what’s in a name?
... Well £28m according to recent reports about a deal done by Muhammad Ali to sell worldwide rights to his name to a US corporation.
But how can you “sell” your name? Especially when it wasn’t yours in the first place – after all, it’s your parents who come up with the idea and in Ali’s case not even them as he changed his name by deed poll in 1965. So what rights does he have to his name and what makes it so valuable?
The answer lies not in his name itself, but in the rights obtained by a registered trade mark. Celebrities have always found endorsement of products to be a lucrative sideline, but equally could often find themselves endorsing a product they knew nothing about, as someone simply took their name in vain. After all, what could they do about it?
In such circumstances, where someone is used unofficially to promote a product their sole remedy is to raise the common law claim of “passing off”, claiming that the manufacturer is trading on their goodwill to which they have no right. But in practice, passing off claims are (a) difficult to establish and (b) expensive to prosecute, requiring expert evidence of the goodwill that has been built up in the celebrity’s name and of a belief in the minds of the public that the celebrity has some connection with the product in question.
The more astute (or perhaps better advised) celebrity has gone down the route of trade marking their name, giving them a monopoly on using their name in connection with the goods for which the trade mark is registered. The advantage of trade mark registration is that it gives an absolute right to use of the trade mark – unlike passing off no expert evidence is required, it either infringes the trade mark or it doesn’t.
It’s now been reported that Muhammad Ali has sold the worldwide rights to his name for £28m, but it’s not the right to his name which is important, rather the registered trade marks which go along with it which have added the value. In the UK “Muhammad Ali” is registered for a wide variety of goods: from audio and video tapes to boxing gloves and head guards (the latter a poignant reminder of the need for protection in the boxing ring). But would you buy “Muhammad Ali” underwear, or jigsaws or baby’s bibs? Believe it or not, all of these items have been selected as worthy of trade mark protection for “Muhammad Ali” in the United Kingdom.
And UK celebrities (or at least their management) are equally aware of the benefit of trade mark registration as a means of generating additional income. Not surprisingly, David (and Victoria) Beckham have registered their names for a wide variety of goods as, to a much more limited extent, has Colin Montgomerie, though choosing to register “Monty” rather than his full name. But other Scottish celebrities are a bit slow off the mark – where, for example, are the trade marks for Andy Murray (something a new coach and mentor might think about?), Stephen Hendry or even Lorraine Kelly? And perhaps the most surprising omission of all, Sir Sean Connery? Perhaps they have decided they don’t need the added protection of trade mark registration, or could it be their advisers haven’t thought through the great benefits trade mark protection can provide to an individual (as indeed to any business) as opposed to relying on common law and the principles of “passing off”? After all, Rudyard Kipling was successful in his own right, but just think of the royalties he could have earned if he had registered his name as a trade mark for cakes!
FOR FURTHER INFORMATION PLEASE CONTACT: SCOTT KERR
Scott Kerr is accredited as a Specialist in Intellectual Property Law by the Law Society of Scotland