Editorial credit: LiveMedia / Shutterstock.com
“Don’t listen to anyone who tells you you can’t achieve something. Dream the impossible. Speak it into existence. You’ve got to work for it, chase it, and never give up!” – Lewis Hamilton after clinching his 7th World Championship earlier this month.
Unfortunately for the soon to be ‘Sir Lewis Hamilton’, one thing which he could not simply ‘speak into existence’ is a monopoly on the use of a word, even when the word is part of his name.
In 2017, the F1 World Champion’s company ‘44IP’, which handles his image rights, trade marks, royalties and copyrights, applied to obtain a declaration of invalidity against a trade mark filed by watchmakers ‘Hamilton’. 44IP did so on the basis the application was made in ‘bad faith’ and it went against ‘fair competition’ in relation to their registered trade mark ‘LEWIS HAMILTON’.
After numerous appeals, the case has now reached the finish line with the fourth board of appeal of the European Union Intellectual Property Office ruling that 44IP’s application fails. The argument based on Lewis Hamilton’s IP rights was deemed inadequate as ‘Hamilton’ was considered a common surname in English speaking countries and ‘there is no ‘natural right’ for a person to have his or her own name registered as a trade mark, when that would infringe third parties’ rights’.
This case is a useful reminder never to assume you can automatically register one’s own name as a trade mark. It further highlights the importance of receiving commercially-astute legal advice on the best approach for the protection of your personal brand. Whilst a common name might lack the requisite distinctive character for successful trade mark protection, there are oftentimes solutions which can be implemented such as:
- applying with a full name;
- utilising initials;
- incorporation of signatures or other distinctive elements;
- giving the name unique stylisation; or
- limiting the scope of the application.
Hamlins combine commercial, corporate, regulatory and drafting expertise to help our clients protect and add IP asset value to their brands with commercially-astute advice. If you are considering applying for a trade mark including elements of your name or would like broader advice on how best to protect your brand, please contact Matthew Pryke.