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 similar to parasitism: the idea is to unduly benefit from the reputation of the person concerned, in order to develop its own activity. The restriction is also valid for deceased persons: it is up to the heirs to oppose the registration of the name.

Limits to the protection of personality rights

The case law considers that there is only an infringement if the name is rare or famous and, provided that the trademark reproduces this name identically. When a trademark reproduces the name of a person who does not enjoy any particular celebrity, the latter cannot oppose the registration. The INPI considers that the reproduction is fortuitous. Similarly, when the family name 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 (this is not a joke!) should have been rejected by the INPI at the time of filing. So should the BENALLA trademark, filed in the middle of the media turmoil. But the INPI only performs a form control - 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 from the INPI a refusal to register the three trademarks. The opposition was filed on June 20, 2018. It was finally on September 24, 2018 that the INPI rendered its decision, not very favorable to the former wife of the singer.

An opposition deemed inadmissible by the INPI

While Jean-Philippe Smet owns several trademarks featuring his stage name, the oldest of which dates back to 1983, and the David Hallyday trademark was filed in March 2018, until now there has been no trademark featuring 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. In order to file an opposition, Laeticia's representative chose to use one of the trademarks JOHNNY HALLYDAY. However, as the succession is still not settled, Laeticia cannot act as the singer's heir. The opposition was therefore filed in the name of Jean-Philippe Smet - who was deceased at the time, as the INPI rightly points out, attaching an extract from Wikipedia to its decision. As Johnny is dead, Laeticia has no interest to act, so it is quite naturally that the INPI declares the opposition inadmissible. The litigious trademarks are therefore still valid for the moment, although they have not yet been registered. It would have been better if Laetitia Hallyday had presented observations to the INPI, asserting her personality rights. We can hope that the INPI will become aware of the parasitism linked to this registration and will refuse the registration of these trademarks. If these trademarks were to be registered, the HALLYDAY family could only act before the courts. Such an action, which would have all the chances to win regarding the rights of the personality, remains however long and expensive.

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. But the applicant also risks being confronted with a opposition proceedings. While it is not mandatory to be represented in such a procedure, it may be appropriate to use a professional attorney - this also represents costs. Finally, the applicant may have to take legal action before the TGI. 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 this case, the applicant is a repeat offender: he has already registered the trademark EDDY MITCHELL, in violation of the singer's rights. It is likely that the judges will want to make an example of this bad faith applicant by strongly sanctioning him. Article updated on 19/04/2022