Registering proper names as trademarks is becoming increasingly common when there is clear public recognition or potential for future commercial use.
Victoria Beckham's registration of the names of the Beckhams' children as trademarks highlights the tensions between the right to a name and trademark law, as well as the legal limits of such strategies.
Based on this case, we spoke with Cristina Velasco, a Senior Associate in the Trademark practice at Elzaburu, about the legal treatment of personal names as trademarks, the scope of trademark protection, and the legal remedies available in the event of a dispute.
Should a proper noun be treated the same as any other trademark?
A personal name cannot be equated with a trademark. While a trademark is a distinctive sign intended to identify a company’s products or services in the marketplace as distinct from those of its competitors, a name is an attribute of personality whose function is to identify a natural person in legal transactions and within society. Consequently, a trademark serves a commercial purpose, unlike a personal name, which serves a strictly identificatory purpose.
In the case of the Beckhams, since this is a European Union trademark, European regulations apply, as well as the national regulations of the member states. The United Kingdom (where the family resides), following its withdrawal from the EU through Brexit, is no longer part of that regulatory framework. Therefore, any protection of the family name against a European Union trademark would have to be provided through the domestic laws of one or more member states. In the case of Spain, such protection is expressly provided for in Articles 9.1.a) and 9.1.b) of Law 17/2001, of December 7, on Trademarks, which prohibit the registration of signs that reproduce or imitate a person’s civil name without proper authorization.
Can the legal owner commercially exploit the trademark without the child's consent once the child reaches the age of majority?
If a trademark consisting of a child’s name has been registered without the child’s express consent and the child has not acquiesced to its use for an uninterrupted period of five years within the European Union, the child may validly request its cancellation before the EUIPO, in accordance with Article 60(2)(a), in conjunction with Article 60(3), of Regulation (EU) 2017/1001.
However, if the child had not given consent but had tolerated the use of the trademark for certain goods (for example, clothing in Class 25) for five consecutive years, then it would be more difficult to seek cancellation for those goods, since the child would have to prove that the trademark application was filed in bad faith.
Finally, it should be noted that trademark law is limited by the principle of specialty; therefore, licenses may only be granted for the goods or services for which the trademark is actually protected. Consequently, if the trademark is not registered for certain categories of goods or services, it would not be possible to license its use in connection with those goods or services.
Is it better to negotiate a transfer or to challenge the registration?
It will all depend on the specific case and, in particular, on whether the child gave express consent at the time of registration or tacit consent, which could be inferred when the trademark has been used continuously for more than five years for certain products, with the child’s knowledge and without any objection on the child’s part during that period.
In fact, a request for the trademark’s cancellation may be filed if more than five years have elapsed since its registration without it having been used for all or part of the goods or services for which it was granted in the relevant territory (in this case, the European Union).
What is the difference between “protecting” a child’s name and registering it as a trademark?
From the moment a name is registered as a trademark, the existence of a commercial interest is presumed, since, as we have indicated, the purpose of a trademark is its use in the course of trade to distinguish a company’s goods or services from those of others. If there is no commercial purpose, it makes no sense to apply for trademark protection since, five years after registration, the trademark becomes vulnerable due to lack of use, and any third party could request its cancellation.
Cases like these illustrate how the strategic management of intangible assets—such as a company’s name, image, and brand—requires a thorough preliminary legal analysis aimed not only at protecting against third parties but also at preventing future conflicts.