In a decision of 1997, a court ruled that 'Elvis Presley' could not be registered as a trade mark for memorabilia products. Elvis fan and businessman Sid Shaw challenged the trade marks registered by a company selling toilet preparations and other products branded as 'Elvis Presley'.
The court ruled that neither the deceased singer nor anyone else exclusively owned the name and that the name was so well known that it was no longer distinctive – therefore not eligible for trade mark protection.
Then, in 2001, a court ruled that the trade mark 'Arsenal' was validly registered, even though it could be and had been used by others in a non-trade mark sense. The judge concluded that this did not automatically make the trade mark non-distinctive for scarves etc.
Although Arsenal is the name of a famous football club rather than the name of an individual or group, the Patent Office says a similar point arises, namely, whether the name of a person or organisation which others wish to use in order to demonstrate their support/allegiance should be registrable as a trade mark for relevant goods. The decision in the Arsenal case indicates that such protection should not be automatically refused or invalidated in these circumstances.
According to the Practice Note, the office will, when faced with an application for a trade mark based on the name of a famous person or group:
"consider whether the famous name put forward for registration is so descriptive in relation to the goods/services for which registration is sought that it could not be perceived by consumers as anything more than a description of the subject matter of the goods/services."
The Patent Office also clarified the position relating to famous names and bad faith applications, stating that the defining question is whether the application relates to goods or services with which the famous person has a connection or an association.
Even if there is no connection, and therefore no obvious attempt to take advantage of that person's reputation, the application may still be rejected on the grounds of passing off.
The practice note adds:
"Care should however be taken where the reputation of a famous individual is not commercial. For example Tony Blair, whose fame stems from politics, should not be accepted for any goods/services without his consent."