Social media has significantly increased the influence of celebrities. Celebrities are no longer just people who act or sing, they are now influencers who have extensively developed personal brands. Compare a lipstick with the name ‘Kylie Jenner’ on it to a lipstick with the supermarket name ‘Aldi’ on it. Despite being the same product, the market perception is very different. This is because Kylie Jenner’s personal branding is distinct from Aldi’s branding. In this article, we discuss the legal issues that may arise when you name your products after celebrities.
- linked to goods or services; and
- distinctive enough to associate with a specific brand.
When someone trade marks a name, they have the exclusive right to use that name on specific products. If ‘Alphie the Book Worm’ is trade marked in relation to educational services and books, the trade mark owner has the exclusive right to use the name across this category of products.
Most celebrities have trade marked their name across several products. Naming your product after that celebrity would infringe upon their exclusive right to name products after themselves. For example, David Beckham has trade marked ‘Beckham’ across various categories in Australia, including games, cuff links and sporting events. Therefore, for example, if you named your video game ‘Beckham’, you would be infringing David Beckham’s trade mark rights.
The Tort of Passing Off
Even if the celebrity name is not trade marked under the category of goods and services you are looking to sell, you may be liable under the tort of passing off if you use a celebrity name on your product.
Passing off occurs when a business suggests a connection between their products and another brand. Using a celebrity’s name on your product falsely associates your product with the celebrity’s brand.
You will be liable for the tort of passing off if:
- the celebrity name that you use has sufficient goodwill. If the public associates a celebrity’s name with their personal brand, it will have sufficient goodwill. For example, using the name ‘Beyonce’ on your product would make a consumer think of Beyonce Knowles, therefore associating your product with her brand; and
- its use will, or is likely to, cause the celebrity damage. Here, the damage is likely to be in the form of brand reputation or potential revenue. For example, using Emma Watson’s name on low quality or offensive products could cause her loss by damaging her reputation.
Misleading and Deceptive Conduct
Naming your product after a celebrity may also be misleading and deceptive conduct under the Australian Consumer Law (ACL), which prohibits misleading and deceptive portrayals of goods and services. If you name your product after a celebrity, this could make your target market think that the celebrity created or endorsed the product. This is misleading and deceptive conduct.
For example, using ‘Michelle Bridges’ on your activewear line could make consumers believe that the famous personal trainer made or endorsed the products. This would be untrue, and therefore misleading and deceptive.
In most cases, you cannot name your products after celebrities. Names are part of a celebrity’s brand, and using their name on your products may mean consumers associate your goods with the celebrity. This may result in the celebrity suffering financial loss or damage to their reputation. This could expose you to legal consequences under trade mark law, the tort of passing off, or misleading and deceptive conduct.
If you have any questions, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.
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