Clearly short of a bob or two after paying those divorce lawyers’ bills, national icon and famous vegetarian Sir Paul has taken the plunge and filed blanket applications to register MCCARTNEY as a trade mark for just about anything you can think of. But meat products?
Topic: Ex-Beatle seeks trade mark registration for meat products shock
Who: Sir Paul McCartney
Where: UK and CTM Trade Marks Registries
When: November 2006
What happened:
It has recently been publicised that Sir Paul McCartney, a well-known vegetarian, has applied through his company MPL Communications Limited to register his surname as a UK and a Community Trade Mark in respect of a variety goods and services, including meat, fish and poultry products. Does this mean that McCartney is planning to sell meat products under his name?
No, according to a spokesman for McCartney the inclusion of meat products in the applications was purely defensive, to protect against his name being used on products that he does not approve of. Er, so that's fine then… or is it?
Under UK trade mark rules an applicant must sign a declaration that he has a bona fide intention that the mark will be used in respect of the goods and services applied for. Applying to register a trade mark in respect of certain goods and services without having any intention of using the mark in respect of those goods/services can therefore amount to 'bad faith', which is an absolute ground to refuse registration (or to subsequently render a registration invalid). So far, however, this point does not appear to have been raised by the Trade Marks Registry.
Readers may also be concerned that a celebrity could potentially obtain a monopoly over the use of what is a fairly common surname in relation to a number of diverse products. The rules are the same as in any other trade mark application, namely that the surname must be distinctive of McCartney's company's products only and must not have been used by other traders in respect of the categories of goods and services which the application covers.
Sometimes a celebrity may find it difficult to satisfy this requirement, particularly if others have already begun to sell merchandise using the name of the celebrity (such as in the Elvis Presley case a few years ago). It remains to be seen whether McCartney's applications are challenged on this basis, particularly since he has been in the public eye for well over 40 years, although in relation to the food products he is presumably on safer ground bearing in mind the fact that the Linda McCartney food brand has been used for a number of years.
Separately it is interesting to note that these new applications also cover clothing, footwear and headgear, although presumably McCartney does not intend to compete with his daughter Stella in respect of fashion items (Stella McCartney Limited owns various trade mark registrations for STELLA MCCARTNEY), whilst since the applications also cover various vegetarian food products there is an obvious overlap with the Linda McCartney food brand and business (which owns various LINDA MCCARTNEY trade mark registrations, and has itself recently applied for further marks such as MCCARTNEY FAMILY FOODS and MCCARTNEY FOODS). Query perhaps whether such overlap between the trade mark registrations of various separate McCartney businesses may lead to a dispute in the future?
Why this matters:
Despite the question mark over whether McCartney will be successful in trying to register his surname, the fact that these applications have been made is a timely reminder that celebrities often seek to rely on registered trade marks as an additional way of trying to prevent third parties from using their names to sell unconnected products and services.
If his applications reach registration (which, of course, is never guaranteed), then McCartney will obtain a monopoly over use of his surname in relation to a variety of diverse goods and services such as computer games, jeans, dog biscuits and education and training services in the UK and Europe.
Any advertiser planning on referring to or using a celebrity's name in a campaign would be advised to carry out thorough trade mark searches to ensure that such use does not result in a trade mark infringement action being threatened or brought against them.
