2.5 Suggestion of endorsement or licence

Where a trade mark consists of or contains the name or representation of a famous person⁶ or the name of a well-known organisation, ⁷ the connection may imply sponsorship, patronage, permission or approval of the goods or services to which the trade mark is applied. If the applicant for registration or owner of a registered trade mark is not the appropriate person or controlling organisation, consumers might be misled into purchasing the goods or services because they believe that they have been sponsored, endorsed or licensed by that person or organisation.

Where it is not clear that the goods or services in respect of which the application has been made have been so sponsored, endorsed or licensed, a concern should be raised under section 17(1)(a) of the Act.

For example, connections of this kind would exist between “Peter Jackson” and entertainment services, or “Sir Edmund Hilary” and mountaineering equipment. Where the application is filed by the famous person to which the mark refers, or it is clear from other available information that the applicant has permission to file for the mark, no objection will be raised. However, if the examiner is not satisfied that the relevant relationship exists between the applicant and the famous name referred to, a concern should be raised under section 17(1)(a) of the Act.

Where the person or organisation is only well known in relation to a particular area of activity, the connection between the mark and the person or organisation may be less apparent. In such cases the examiner should carefully consider the relationship between the goods or services in the specification and the area of reputation of the person or organisation that appears in the trade mark. Each case must be considered on its merits.

The name of the person or organisation may be so well known that the ordinary consumer will associate the trade mark with the person or organisation concerned regardless of the goods or services in respect of which the application has been made. In such a case, a concern will be raised under section 17(1)(a) of the Act on the grounds that use of the mark is likely to deceive or cause confusion.

For example, connections of this kind would exist between the “World Trade Organisation” and any goods and/or services.

It should be noted, however, that the inclusion of the name of a well-known person need not always cause deception or confusion. For example, the use of the name “The Wright Brothers” in relation to aircraft transport services would be more likely to be regarded as a reference to a bygone era rather than a suggestion that there is any endorsement of, or input by, the Wright Brothers or their descendants. However, if research indicates that the commercialisation of a deceased person’s name or image is being controlled by their estate or another authorized body, then a concern may be raised under section 17 of the Act.

Footnotes

⁶ See also the Practice Guidelines on Names and Representations of Persons and the Practice Guidelines on Representations of the Royal Family. 

⁷ See also the Practice Guidelines on Flags Armorial Bearings, State Emblems and Similar.