Names are among the most common trade marks, and the Trade Marks Act (Chapter 385) deals with them in several places. Section 21 is the consent provision.
Section 21 — consent may be required
Where an application is for a trade mark which consists of or includes the name or a representation of a living person, or of a person believed by the Registrar to be living, the Registrar may require the applicant to furnish the consent of that person to the name or representation appearing on the mark before he proceeds with the registration.
Where the mark consists of or includes the name or a representation of a person recently dead, or believed by the Registrar to be recently dead, the Registrar may require the consent of the legal representative of the deceased person.
Four features of the drafting are worth noting.
- “May require”. It is a discretion, not an automatic bar. The Registrar exercises it where the name or image is one the public would associate with an identifiable individual.
- “Name or a representation”. The section covers both the written name and a portrait, photograph, caricature or likeness.
- “Consists of or includes”. A composite mark containing the name is caught.
- “Believed by the Registrar”. The Registrar acts on belief; the applicant who says the person is long dead should be ready to evidence it.
Registering your own name
Two of the section 15 essential particulars are about names, and both concern the applicant’s own:
| Provision | What it allows | Catch |
|---|---|---|
| s 15(1)(a) | The name of a person represented in a special or particular manner is registrable in Part A | The special representation is essential — plain block lettering will not do |
| s 15(1)(b) | The signature of the applicant or of a predecessor in his business | Only those two signatures; anyone else’s needs consent under s 21 |
| s 15(1)(d) | A word not directly referring to the goods | Expressly excludes a surname in its ordinary meaning |
| s 15(2) | A name or signature outside (a) to (d) reaches Part A on evidence of distinctiveness | Requires real evidence of use — see distinctiveness |
| s 16 | A plain surname may go into Part B if capable of becoming distinctive | Carries the section 53(2) limitation on relief |
Other people bear the same surname and may honestly wish to trade under it. Section 55(1)(a) confirms the point from the other direction: the use in good faith by a person of his own name, or the name of his place of business, or those of his predecessors in business, does not infringe a registered trade mark.
So a registration of a surname does not stop an honest namesake. What it stops is a competitor with no such name adopting it.
Using someone else’s name or image
A section 21 requirement stops the application in its tracks until the consent is produced. If the person refuses, the mark is not registered — and if the applicant proceeds to use it anyway, other provisions bite.
Beyond section 21, using a person’s name or image without permission can attract:
- Section 19(a) — the mark may be likely to deceive or cause confusion by suggesting an endorsement that does not exist;
- Section 19(b) — use may be contrary to law, for instance where a photograph is a protected work under the Copyright and Neighbouring Rights Act 2000;
- Section 19(d) — the mark may be not entitled to protection in a court of justice where it was adopted to trade on another person’s reputation;
- Passing off — a well-known individual with commercial reputation may sue in respect of a false suggestion of endorsement; and
- the right to privacy under section 49 of the Constitution, and defamation where the association is damaging.
“Recently dead”
The Act does not define the phrase, and it is deliberately elastic — the concern is with a person still identified in the public mind, and with a family still able to be affected. Where section 21(2) applies, the consent required is that of the legal representative: the executor under a will, or the administrator of the estate. See executors, administrators and trustees.
Where the name is that of a customary leader, a clan or a community, section 21 may not fit exactly — but section 19(c) reaches marks containing scandalous or otherwise offensive matter, and a mark that appropriates communal identity without authority may fall within it. The prudent course is written authority from the group concerned, most conveniently through an incorporated land group or other body able to give it.
Before filing a name mark
- Is the name yours? If so, consider section 15(1)(a) with a distinctive presentation, or 15(1)(b) if it is your signature.
- Is it a surname in ordinary lettering? Expect Part B, or Part A on evidence under section 15(2).
- Does it name or depict someone else? Obtain written consent and lodge it with the application.
- Is that person recently deceased? Obtain the consent of the legal representative, with proof of the grant.
- Is there a copyright in the image? Get a licence or assignment of the photograph or artwork as well.
- Keep the consent on file. It is evidence years later, and it will matter if the registration is ever challenged under section 13.
Sources
- Trade Marks Act (Chapter 385) — ss 13, 15, 16, 19, 21, 53, 55
- Copyright and Neighbouring Rights Act 2000
- Constitution — s 49
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.