To deposit the name of a personality: a new fashion?
Before the registration of the trademark " BENALLA ". by a Parisian lawyer in July 2018, an individual had already proceeded to register the trademarks LAETITIA, JOY and JADE HALLYDAY. It is astonishing that the INPI still authorizes this kind of practice, which is tantamount to parasitism. Can we validly register the name of a celebrity without his agreement? What do we risk in case of action?
Principle: no filing possible in the name of personality rights
The protection of public persons
It is perfectly possible to register a name, a first name, a pseudonym or even a portrait as a trademark. However, public persons have stronger personality rights, justified by their notoriety. Article L. 711-3 9° (formerly art. L. 711-4 g) of the Intellectual Property Code (IPC) states that a sign infringing on the personality rights of a third party cannot be adopted.
Therefore, the name of a public person may not be filed without his or her prior consent. Indeed, such a practice is tantamount to parasitism: the idea is to take undue advantage of the reputation of the person concerned, in order to develop one's own activity.
The restriction also applies to missing persons: it is up to the heirs to oppose the filing of the name.
Limits to the protection of personality rights
Case law considers that there is infringement only if the name is rare or famous and provided that the trademark reproduces that name identically.
When a trademark takes the name of a person who does not enjoy any particular celebrity, that person will not be able to oppose the application. The INPI considers that the takeover is fortuitous. Similarly, when the surname is common, it will be more difficult to prove parasitism. Indeed, it seems difficult to prohibit a homonym from using its own name as a trademark.
What about the Hallyday family in all this?
The publication of the contested marks by the INPI and the opening of the opposition period
In application of the above-mentioned principle, the trademarks LAETITIA HALLYDAY, JOY HALLYDAY and JADE HALLYDAY, registered on 1 January 2008, are protected by the trademark law.er April 2018 (no joke!) should have been rejected by the INPI at the time of filing. As well as the BENALLA trademark, filed in the midst of the media turmoil.
However, the INPI only carries out a form check - and in this case did not consider it necessary to reject this registration. The trademarks were thus validly published, opening the opposition period to third parties. Laeticia Hallyday then mandated the late Johnny's industrial property attorney to obtain a refusal of registration of the three trademarks from the INPI. The opposition was filed on June 20, 2018.
It was finally on September 24, 2018 that the INPI made its decision, not very favorable to the former wife of the singer.
An opposition deemed inadmissible by the INPI
While Jean-Philippe Smet is the owner of several trademarks using his stage name, the oldest of which dates back to 1983, and the David Hallyday trademark was registered in March 2018, there has been no trademark to date using the names of Laeticia and her children. Unfortunately, in order to act in opposition, it is necessary to be the owner of an earlier trademark.
Laeticia's representative therefore chose to base his opposition on one of the marks JOHNNY HALLYDAY. However, as the succession has not yet been decided, Laeticia cannot act as the heiress of the singer. The opposition was therefore filed in the name of Jean-Philippe Smet - then deceased, as the INPI rightly points out, by annexing to its decision an excerpt from Wikipedia.
When Johnny died, Laeticia had no interest in acting, so it was quite natural for the INPI to declare the opposition inadmissible. The contested trademarks are therefore still valid for the time being, although they have not yet been registered.
It would have been preferable for Laetitia Hallyday to have submitted observations to the INPI, asserting her personality rights. It is to be hoped that the INPI will become aware of the parasitism linked to this filing and refuse to register these trademarks. If they were to be registered, the HALLYDAY family would only be able to act before the courts. Such an action, which would have every chance of winning in terms of personality rights, remains however long and costly.
Dropping names of personalities: a dangerous practice
For the depositor, such a deposit is not without risk.
The trademarks that he will file, in violation of the rights of a third party, may first be refused by the INPI. In this case, the fees will not be refunded.
However, the depositor may also face a risk of a opposition proceedings. If there is no obligation to be represented in such proceedings, it may be appropriate to use a professional representative - this also involves costs.
Finally, the depositor is liable to take legal action before the High Court. Such an action is very costly. In addition, the judges may declare the trademark invalid. And if they consider that there is a moral prejudice for the bearer of the name, the applicant will be condemned to pay damages.
In the case at hand, the applicant is a repeat offender: he has already registered the EDDY MITCHELL trademark, in violation of the singer's rights. It is highly likely that the judges will want to make an example by strongly sanctioning this applicant in bad faith.
Article updated on 19/04/2022