Celebrity Rights in India: SRK and his trademark move!
Shakespeare’s ‘what’s in a name’ was apt for utopian times when he was of the view that a rose would smell like a rose even if it were called by another name. Today, in the world of competition, when celebrities are trying to out-do each other in the race for fame and endorsements, trademark rights are significantly important. Lately, Shahrukh Khan has been in the news for reasons other than the release of his latest film Happy New Year. A number of newspapers recently reported that the actor’s initial SRK is now a trademark. An internet search with the keywords ‘shahrukh khan’ and ‘trademark’ will throw up several articles from 2012 when he applied for a trademark. I found that all these articles had something in common – misconceptions regarding trademark rights. So the actor has a registration for the initials SRK, what next? Can he stop anyone from using his initials?! In this article, I have discussed a few aspects relating to celebrities trademarking their names/initials, advantages of doing so and what it means for the public in general.
In one of my previous articles, I had written about celebrity rights and raised a question on whether one can register their name as a trademark solely on the ground that they are a celebrity having brand value irrespective of whether they are using it for the purpose of sale of goods and providing any services. The trademark law is amply clear on the point that it provides protection only when the mark is being 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.
There are a number of applications that have been filed for the word mark SRK and one of the marks has been applied for in a number of classes and I noticed that in most of these applications, usage has been claimed since sometime in 2000. The next question is whether usage can be claimed on the basis of his popularity and use of his names in films or television programs. When a trademark is being filed, usage is claimed based on the use of that particular mark with reference to the goods or services it is being applied for.
So, for instance, the mark SRK (Application No. 1737534 – currently opposed) has been applied claiming usage since January 10, 2000 for “insurance; financial affairs; monetary affairs real estate affairs” under class 36. I’m not sure Shahrukh Khan has actually used the initial SRK in relation to these services (if he did, the media would’ve probably reported that too). The question that arises is on what basis has usage been claimed?
A number of news articles also suggested that he can stop anyone from using his initials. I’m certain that the actor cannot stop ‘anyone’ from using his trademark, protection will be limited to the classes under which protection has been sought and will solely be with reference to goods or services. It is pertinent to note that the actor has sought protection in almost all the 45 classes and the Act expressly prohibits such defensive registration and this most certainly extends to celebrities as well. So the question is whether such application or registrations provide blanket protection to SRK under all 45 classes? Not really. A mark 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. Therefore, in my opinion, it is advisable to limit or restrict the applications to the classes in which the mark is actually being used or is proposed to be used in the future.
With reference to well-known marks, the Courts have held that the spectrum of protection for such marks is broader and includes of all classes of goods and services and not just the one under which it is registered. Going by this, SRK will indeed have a field day if he decides to sue those who are in fact infringing his rights or passing off any goods or services using his brand value and that could well include the local hair-dresser or a shop selling garments.
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. For instance, Paris Hilton has her name registered as a trademark for the sale of wide range of goods including clothes and perfumes and David Beckham has a trademark registration for clothing, footwear and headgear. For now, the limelight is on SRK and we are all eager to see his next move!