What more could a famous celebrity with an impressive fortune want – a trade mark registration for their newborn children! Welcome to the world US Trade Mark Application Numbers 87506186 and 87506188 (that's Rumi and Sir Carter to you and me).
On 26 June, fans reportedly uncovered the names of Beyonce's baby twins in an unconventional way when the company run by Beyonce and Jay Z, BGK Trademark Holdings, filed trade mark applications to secure the marks RUMI CARTER and SIR CARTER in the US. The same company owns the trade mark BEYONCE in Australia and the US, having also filed a trade mark application for the name of the couple's first child, Blue Ivy Carter. The new applications claim various goods and services including fragrances, cosmetics, key chains, baby teething rings, strollers, mugs, water bottles, hair ribbons, playing cards, tote bags, sports balls, and rattles through to entertainment services.
It's a savvy move from the Carter empire as merchandising for celebrities becomes increasingly important - filing a trade mark as early as possible helps to protect the name. In today's media saturated world, an early trade mark application can also make a big difference in deterring opportunists from registering domain names using the trade mark. These 'cybersquatters' often then hold the domain name to ransom for a high price or use it to mislead consumers.
Even if Beyonce and Jay Z do not intend to use the names to launch a suite of new products, an early trade mark application is useful in deterring others from making a profit off their reputation or goodwill. If the couple choose to extend their trade mark registrations to Australia, they should be mindful to maintain use of the registrations for the claimed goods and services so as to avoid an application for removal for non-use as discussed in our article last year 'Attacking IP Infringers - Look Before You Leap'. Alternatively they could seek to file for a defensive trade mark, which are designed to minimise consumer confusion and do not require an actual intent to use the mark.
However, let us not forget that isn't the first time the couple has filed a trade mark application for the name of their child. Their first application in 2012 for BLUE IVY was rejected because of its similarity to a wedding planner business. They have since filed a further application in the US for BLUE IVY CARTER as other individuals and companies attempted to register BLUE IVY CARTER NYC for children's clothing and BLUE IVY CARTER GLORY IV for fragrances.
Interestingly, in New South Wales, Beyonce and Jay Z might have failed at the first hurdle in registering their babies' names with the NSW Registry of Births, Deaths and Marriages. Section 21 of the Birth, Deaths and Marriages Registration Act 1995 (NSW) prohibits names that "include or resembles an official title or rank". The Registrar may have instead decided Sir Carter be named Simon, Steve or perhaps even Shane Carter.
Rumi and Sir should remember the intricacies of trading under their own names when there are trade marks involved, something that we discussed in our recent article 'Are You Entitled to Trade Under Your Own Name'.
Ultimately though, in show business, where name means fortune and celebrities have invested time and money in building their brand name, fighting for the rights to their name is worth the fight. Just ask Taylor Swift, Katy Perry or even Australia's very own Kylie (no need for a last name). So, when should you file a trade mark application? When you can't get it out of your head!
For further information please contact:
James Skelton, Associate
Phone: +61 2 9233 5544
Email: jas@swaab.com.au
Esther Khoo, Graduate Solicitor
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.