Richard Penford is a solicitor at Harbottle & Lewis.
Now that the Court of Appeal has upheld the High Court's decision in re Elvis Presley trade marks it will be much more difficult to protect as a trade mark the name of a well-known person or character.
The estate of Elvis Presley applied in 1989 to register 'Elvis', 'Elvis Presley' and the signature 'Elvis Presley' as UK trade marks. The applications, after initial acceptance by the Trade Marks Registry, were opposed by Sid Shaw, who had been trading under the name 'Elvisly Yours' since the early 1980s.
Shaw claimed the marks were confusingly similar to his own trade mark registrations for Elvisly Yours, devoid of any distinctive character since Elvis had been dead for more than 10 years by the time the estate filed the trade mark applications, and the name Elvis Presley had become a name which no one would associate with a particular source.
Numerous different parties had produced items of Elvis memorabilia in the UK since his death.
After the opposition was rejected by the registry, Shaw appealed to the High Court which upheld the opposition. The estate appealed to the Court of Appeal which upheld the High Court's ruling.
Clearly it is extremely difficult to register the name of a famous individual or group of individuals (or a fictitious character) as a trade mark or prevent unauthorised use of a famous name or image without evidence that the public, or at least a significant percentage of the buying public, consider the unauthorised products to be from an official source.
Before an artist, actor, pop group, sports personality or team becomes generally well-known it will be easier to register their name as a trade mark.
If the person, or fictitious character, is already famous, then to achieve a trade mark registration, there will need to be good evidence that the public associate products bearing that name with an official source. Good-quality official merchandise, use of the words "official", "authorised", or "officially licensed" together with a distinctive hallmark logo, will help give the impression in people's minds that there is a source of official products.
While it is not possible to protect the image as a whole through trade mark registration, it is worth considering registering one or two particularly distinctive images of an individual, or fictitious character as a trade mark.
Consistent use of these images on products is necessary to ensure that public identification of them as trade marks is retained.