by Donvay Wegierski, Director

What’s in a name – Trade marks and Brooklyn Beckham

Brooklyn Beckham, son to British born Victoria and Sir David has voiced his grievances with his family on social media, bringing his family’s influence over his public image into the spotlight.  He is concerned at what he views as undue attempts to ruin his marriage by the family with which he wants no part of – what then about the Beckham name?

Trade marks

According to the United Kingdom Intellectual Property Office (“UKIPO”) and European Union Intellectual Property Office (“EUIPO”), as of 2000 Beckham and David Beckham are registered trade marks and Victoria Beckham as of 2002.  As of December 2016, Brooklyn Beckham, Cruz Beckham, Romeo Beckham and Harper Beckham are all registered trade marks in the UK and EU, with Victoria Beckham, as parent and guardian of … as the proprietor of each.

The registrations cover several classes including clothing, beauty, cosmetics and entertainment related goods and services,  the intent behind trade mark registration most likely rooted in the need to protect the children from exploitation and overexposure.  Trade marks are both class and territory specific and one of the benefits of trade mark registration is that it formalises the authority required for commercialisation.  In turn, the ability to negotiate agreements, for example brand endorsements, sponsorships and influencer, and importantly, legislation against unauthorised use.

Since Brooklyn is not the proprietor of these trade mark registrations if he were to attempt to commercialise, and therefore monetise his name, Victoria Beckham in her capacity as the proprietor and owner of the registrations could rely on the UK and EU trade mark registrations and allege trade mark infringement in the territory.

Defences

The question concerning ownership and use of personal names is not new.   In terms of the South African Trade Marks Act 194 of 1993 it may be a defence to use one’s personal name provided that this use is ‘consistent with fair practice’.

In the UK, Brooklyn may consider the ‘own name defence’, should an individual wish to use their own name in business and is in accordance with ‘honest practices’.  This may prove onerous given the commercialisation of the Beckham family name generally and reported “Brand Beckham” restrictions.

A further consideration is cancellation proceedings,  either on the grounds that the trade marks were filed in bad faith or that the marks have not been used for five years or more.

The UK and EU trade mark registrations for Brooklyn Beckham, Cruz Beckham, Romeo Beckham and Harper Beckham are due for renewal December 2026, the renewal term in the UK being ten years from application.  Should Victoria Beckham renew it may further prompt Brooklyn Beckham to formally challenge the validity of the marks.  Instead of a legal battle mom and son may negotiate which could include a co-existence or a licence or even assigning the registrations to Brooklyn.

Celebrities and sports stars

Pop stars Taylor Swift and Kylie Minogue and athlete Mo Farah for example have registered their names as trade marks in an effort to prevent commercial exploitation.  Jo Malone and Bobbi Brown, founders of high-profile cosmetic ranges famously sold and therefore assigned their trade marks to Estée Lauder and with that waiving associated rights to commercialise their names.  Karen Millen, UK fashion designer, lost all title to her name and battled her rights for future expansion when she sold her majority share in Karen Millen Holdings Ltd.

Chelsea FC and José Mourinho had entered a twenty year agreement in 2005, therefore preventing the professional football manager from authorising the use of his name on any merchandise linked to his name or any other football club until the agreement ended in 2025.

Around 2018 when tennis legend Roger Federer ended a twenty-year contract with Nike to contract with Uniqlo, Nike had already registered the mark RF in various territories for clothing and related goods. Federer has requested Nike to transfer the trade mark to himself, because the mark comprises his initials, which would surely be “in accordance with honest practice”.   Complicated by terms in their commercial agreements, it took two years to favourably resolve.

Terms of any agreement will always require careful consideration, and perhaps all too often the long-term consequences and commercial realities associated with intellectual property rights are not thoroughly considered.

Please contact the Werksmans Intellectual Property Team for further assistance.