Two recent cases that involved two of the biggest names in combat sports have highlighted how complicated it can be to register a Trademark for a personal name.
Partners surely know the name of Muhammad Ali, perhaps the biggest name in all of sports. His daughter, Laila Ali, was a successful boxer in her own right. She won world titles in two weight divisions and retired without a single defeat, but her biggest achievement is perhaps being the first female star in combat sports—paving the way for the likes of Ronda Rousey and Holly Holm.
Recently, she encountered an opponent that she couldn’t defeat with her left hook.
Muhammad Ali Enterprises is the company that owns the likeness of its namesake. This means that they own all IP and publicity rights related to Muhammad Ali. In October, they filed a trademark opposition against Laila Ali, on the grounds that her names on goods and services would cause confusion to consumers. In the complaint, Muhammad Ali Enterprises stated that they believe merchandise with the name “Laila Ali” could potentially mislead people into believing that they were their products.
Meanwhile, MMA star Conor McGregor is also facing similar obstacles. His name might not be as prestigious as Ali, but it still holds high value.
Last November, it was reported that Dutch firm McGregor IP B.V. had again opposed Conor McGregor’s attempt to trademark his own name. This time for clothing, footwear and sportswear in the EU.
McGregor (the company) was previously successful in its opposition of an earlier application after a four-year battle. Moreover, they have owned the ‘McGregor’ trademark portfolio and all other McGregor IP rights since October 2017.
Similar to the Ali case, the Dutch company believes that the public could likely be confused between the ‘McGregor’ and the ‘Conor McGregor’ trademarks. However, Conor McGregor’s legal representative, FR Kelly states the respective trademarks can be readily distinguished and consumers will not believe that the goods of ‘Conor McGregor’ originate from ‘McGregor’. They believe that the individual components, not just the whole, should be considered when judging whether two marks are indistinguishable.
In Indonesia
Superstar athletes such as Ali and McGregor are widely renowned, thus they could instill high market value and consumer attraction to products they are attached to. Athletes are perhaps the most famous of all celebrities, thus it’s no surprise that they are known to market huge franchises based on their names and likeness, as seen below:
The trademarking of celebrity names is anticipated by Indonesian Trademark law. Article 21 of Law No. 20 of 2016 on Trademark regulate Marks that would not be registered, which includes Marks that “constitutes or is similar to the name or initials of a well-known individual”. This stipulation is an acknowledgement in the economic power of famous names, and that the famous individuals themselves are the ones who deserve ownership over it. In some ways, this can be considered to be a form of Image Rights. Moreover, Indonesian Trademark Law also stipulates that the name and likeness of a famous individual can be passed over. As stated in Article 21, with a written consent from its proprietary, Marks of famous individuals can be registered by third parties.
For high quality IP related services and consultation, contact us now at Ambadar@ambadar.co.id. We will provide the best according to your needs.
Sources:
