Character & personality rights can be protected by trade mark registration when the names and designs in question are used to brand or endorse products and/or services of whatever kind.
Trade mark registration is often the only effective means of obtaining protection and controlling unauthorised use or imitation by others, since:-
- Action against piracy is faster and more persuasive when based on trade mark registration, as effective rights are already in place, and formal litigation may even be avoided as a result.
- Whilst legal action for passing off based on prior use of a trade mark is a possible alternative, this is generally more costly and uncertain.
- Owning a prior trade mark registration or application makes it easier and cheaper to oppose someone else’s application for the same or similar mark, and more likely to be successful.
- It can be an obstacle to anybody registering the same or similar mark in countries such as the UK, USA, Japan and Australia where it would be officially cited against later applications that conflict.
- It has a deterrent effect and can be publicised by use of e.g. ®, which may prevent unauthorised use or imitation in the first place.
Copyright can be valuable, but it cannot protect names or slogans. Moreover, it only protects against deliberate copying and not coincidental similarity. Proving ownership of copyright also tends to be more difficult and expensive than relying on trade mark registration.
Trade mark registration not only provides the protection necessary to safeguard character & personality rights. It is also essential for licensing, and consequently improves revenue generation. It can additionally assist in raising funds through e.g. securitisation.
If trade mark registration is not sought at an early enough date, there is a danger that prior registration by someone else may prevent business expansion or that marketing might even be halted altogether.
Registration can also be refused by the UK Intellectual Property Office if a name has become so famous that the UK Intellectual Property Office view it as merely descriptive of memorabilia associated with the person concerned, as in the Elvis and Alex Ferguson cases.
