Even those who typically pay little attention to celebrity gossip have likely learned of the feud between Brooklyn Beckham and his parents, Sir David and Lady Victoria Beckam. Back in January in an Instagram post, Brooklyn Beckham made it clear he had no interest in reconciling with his family.
Brooklyn also made claims that his family has “repeatedly pressured and attempted to bribe me into signing away the rights to my name“.
The internet has been in a fury since the post, trying to figure out what this means.
While the post was not entirely clear, what is clear is that “Victoria Beckham, as parent and guardian of Brooklyn Beckham” is the owner of EU Trade Mark No. 016191835 and UK Trade Mark No. UK00916191835, both of which give Victoria Beckham the legal right to commercially use her son’s name BROOKLYN BECKHAM with respect to the goods and services covered in classes 3, 9, 16, 18, 25, 28 and 41. The coverage of these registrations is extensive and includes beauty and cosmetic products, sunglasses, sound, music, image, data and video recordings, software, signed photographs, printed material, leather goods, bags, clothing, toys, games, entertainment services and music production services, and much more.
“Victoria Beckham, as parent and guardian” is also the owner of similar EU and UK registrations for her other children, claiming exclusive rights to the names ROMEO BECKHAM, HARPER BECKHAM and CRUZ BECKHAM in the same classes.
These applications were all filed in 2016 when Brooklyn Beckham was about 17, Romeo 14, Cruz 11 and Harper 5.
In Australia, if a trade mark contains the name of a well-known person covering specific goods and services that are in some way connected to that well-known person, IP Australia may raise a section 43 objection, which requires the well-known person to provide their consent to the use and registration of the mark. This consent is recorded as an endorsement on the Trade Marks Register. But what happens if the application is for a trade mark that is the name of a well-known child?
It appears there are only two applications that have been filed in Australia which include an endorsement that a guardian of the relevant child has consented to the use of the child’s name as a trade mark. These applications were ultimately withdrawn following an opposition to registration.
A search of the Register indicates that there are in fact a number of trade mark registrations that cover the name of a well-known child with no reference to the provision of consent, despite the section 43 requirement.
This poses an interesting question - leaving aside fiduciary duties and trusts - once that child comes of age and wants to commercialise their own brand, would use of their own name to provide goods or services covered by the trade mark registration (1) be an infringement of their parent’s or parent’s company’s trade mark rights and (2) if so, would that adult child be able to rely on the own name defence under section 122(1)(a) of the Trade Mark’s Act 1995 (Cth)?
Section 122(1)(a) states that a registered trade mark is not infringed if a person uses in “good faith” the person’s name.
Baume & Co Ltd v Moore (A H) Ltd [1958] RPC 226 stated at [23]: “the mere fact that a trader is using their own name which too closely resembles a registered trade name of which he is aware does not prevent the user from being “bona fide”, provided that the trader honestly thought that no confusion would arise and they had no intention of wrongfully diverting business to himself by using the name”. At [235], the point was made that honest use by the person of his own name must be without any “intention to deceive anybody or without any intention to make use of the “goodwill which has been acquired by another trader”.
Re Parkington & Co (1946) 63 RPC 171 at [182] emphasised the importance of the “circumstances which attend the adoption of a trade mark in the first instance”, and noted that “if the user in its inception was tainted it would be difficult in most cases to purify it subsequently”.
The requirement that the use of the person’s own name must be in “good faith” is a requirement of honesty, as stated in Optical 88 Ltd v Optical 88 Pty Ltd [2011] FCAFC 130 (16 October 2011) at [161]. Australian Postal Corporation v Digital Post Australia (2013) 105 IPR 1 at [73] and [74] confirmed that this requires an honest belief at least at the time of adopting the mark that no confusion would arise by reference to the earlier trade mark’s reputation and that there was no intention to divert trade. A number of more recent cases have also indicated that undertaking searches of the Trade Mark Register is required to establish honesty of adoption.
Based on the above case law, it is clear that Australian courts have emphasised that the “good faith” defence only applies if use of the name is honest and not intended to exploit the goodwill of the trade mark owner. Courts have generally also considered whether the use is likely to cause confusion or indicate an affiliation or association.
But what happens if the goodwill is connected to the actual person who is the subject of the trade mark registration? Does prior knowledge of a trade mark registration owned by a parent or their company for the adult child’s own name mean they do not meet the threshold of honest adoption of the mark/their name? Does the reality that there would be confusion in the market if two people traded under the same individuals name, one being the actual individual, override a person’s understandable desire to use their own name in a commercial context?
In the Australian context, we are not aware of any consideration by the Courts of the validity of trade mark registrations which have been filed by parents who have registered a trade mark for their child’s name (although there is plenty of case law on intent to use and ownership requirements, bad faith and licensing arrangements around people’s names). One presumes that Victoria Beckham filed applications in the EU and UK to register her children’s names as trade marks in anticipation of adopting an efficient tax structure for capitalising on any personality rights obtained, and further with a view to taking action against others who may seek to misuse her child’s name in commerce. This seems more akin to the first to file regime in the EU, as compared with the situation in Australia where intent to use and common law ownership are threshold requirements for filing.
Personality rights are challenging to capitalise in Australia (which provides tax efficiency for licensing and merchandising purposes) which seems part of the reason we often see sport players adopt citizenship in other countries. Moreover, it is hard to see how the control over the name would be effective through the trade mark registration system, noting the potential to challenge registration obtained on grounds of common law ownership, the operation of the own name defence and, in the context of a family dispute, whether the ongoing ownership of the mark may itself be misleading and deceptive. In the Australian context, it seems to us that the ownership value in trade mark registration of a child’s name in the name of the parent is contingent on an ongoing good parent/child relationship.
Perhaps we may see a future trade mark dispute in the EU or UK that could lead the pathway for Australian adult children with trade mark registrations over their name.
