The Intellectual Property Laws in India do not define the term ‘celebrity’. Celebrities can be defined as people who enjoy public recognition by a large share of a certain group of people. Attributes like attractiveness, extraordinary lifestyle or special skills are observed in celebrities generally. Since they are famous and having significant influence among the people, they are asked to lend their name for promoting a wide range of products and services. The use of the celebrity’s name captures the public’s attention and creates interest in the products and services.
Emergence of Celebrity Trademark in India
With the incessant celebrity worship that is prevalent in India, there has been a growing practice of using the name of a celebrity for unscrupulous businesses. The reason behind such dishonest practices is that usage of a celebrity name increases visibility of the goods or services as well as creates an impression in the minds of customers that the said celebrity has endorsed these goods or services. Many companies are using celebrity names without their consent to promote their products.
Actress Kajol Twitter Controversy of 2010
In 2010, a twitter handle named “kajolnysa” twitted derogatory remarks against the one political party. Many news channels reported this story depicting that tweet believing that it was posted by actress herself due to name of twitter handle. Having seen news, Kajol clarified that she does not have any account with twitter. So, the someone created a fake ID and behaving as if Kajol has made those statements. After this incident, Kajol has made a number of applications to trademark authority in her name in various business categories so as to check the misuse of her name.
Sanjeev Kapoor story
On one day, Sanjeev Kapoor – a famous chef show a boy in a traffic signal selling recipe books called Khazana of Chinese Recipes with Kapoor’s picture on the cover. At that time he had written only one book, which was called Khazana of Indian Recipes. The book cover and his picture were the same. His face was used to sell something that was not his creature. He was shocked. In case he decides to protest against the people misusing the name, he could have been asked as what right he have over name ‘Sanjeev Kapoor’ as there are many people whose names can be Sanjeev Kapoor. So, to protect the right, one also need to have the legal ownership. Thereafter, he has filled many trademark applications of his name so as to protect his names from misuse.
This unjustifiable practice has created awareness amongst celebrities regarding their rights, in particular assessing their IP rights. To prevent misuse of celebrity names, it is advisable to register the celebrity’s name as a trade-mark. It also prohibits use for commercial purposes, including films, TV, advertisements. Celebrities in India like Shah Rukh Khan, Ajay Devgan, Kajol, Sunny Leone etc. also registered their names as trademarks. Getting a trademark registration allows celebrities to prevent others from using their name for dishonest commercial purposes. It provides them with a mechanism to preserve the financial integrity of their name as well as provide their estate with better means to protect the economic value of the celebrity’s name after death.
Consequences of an unauthorized use of name or image of Celebrity
An unauthorized use of a celebrity’s name or image to a product amounts to an act of passing off, unfair competition, misrepresentation and can cause damage to their reputation. It can also amount to a breach of confidence or a violation of privacy. The unauthorized use of the attributes of a celebrity can adversely impact both their economic as well as non-economic interests. While economic interests are capable of being adequately compensated in monetary terms, non-economic interests such as the violation of privacy, damage to reputation, mental distress may not be entirely capable of satisfaction in terms of money. Such affected rights are personality rights which are not mere financial rights but rather a personal intellectual property right which is not inheritable or assignable.
Provisions in the Indian Trademark Act
There is no specific provision in Trademarks Act 1999 which allows or disallows registration of names. However, there are many celebrities who got registered their names so it can be assumed that registration of personal names are allowed.
As per Section 2(zb) of the Act, “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors. The definition makes it clear that a trademark cannot be registered in isolation. It is registered to protect the brand value of a person. Therefore if a celebrity is desirous of registering his/her name it should be with respect to a particular class of goods or services.
The idea behind registering the person’s name as a trademark in a class is to prevent misuse of the name in the trade of any item within that class. This not only allows the individual to protect his name and image from being associated arbitrarily with a plethora of products, but also ensures that he is paid every time he lends his name to a product. It also allows the individual to prevent the use of his name in company names.
Trademark Protection based on use and not merely on Registration
It is important to note here that in India, we protect brand name based on actual use and not based on merely registration. The trademark law provides protection only when the mark is being actually used on goods or services and not merely to protect the brand value of a person, thereby meaning that the protection is limited to the goods or services that the said mark is applied for. So, if the registered trademark remains unused for a period of five consecutive years, then the mark may be removed from the trademark register on the application of any aggrieved party.
There are many companies and even celebrities that applied for protection in almost all the 45 classes so as to protect the names from usage in respect to any goods or services. So, it means such names can’t be used by any one in any goods or services? The answer is No. The Trademark law in India expressly prohibits such type of defensive registration except in case of well-known trademarks like TATA, Mahindra & Mahindra, Honda. A mark registered in all classes can still be opposed, cancelled or removed from the register on grounds of non-use, so the right is not free from any kind of legal impediments.
The trend of celebrities in India seeking protecting under the trademark law has seemingly increased and they seem to be taking a cue from celebrities across the globe. However, the trend in India seems to be inclined towards defensive registration aiming to protect the reputation of the celebrity rather than to use it on actual goods or services which is contrary to the practice followed elsewhere. Unless and until, someone oppose the names of the celebrities registered in a particular class, because of non-usage of trademark in respect of goods or services for which it applied for, such names enjoys the trademark protection.