Naming a trade mark is relatively easy – think Google®, Kodak®, and Apple®, to name a few.
However, trade marking a name can be a rather more difficult exercise. Paul Hollywood, baker extraordinaire who rose* to prominence on The Great British Bake Off® (GBBO), is one of the latest celebrities to seek and establish trade mark protection for his name in both the UK and Europe.
He currently has EU and UK registered trade marks for “Paul Hollywood”, both registrations covering kitchen and food-related articles, events and services, amongst others. He is currently seeking UK registered trade mark protection for the same mark (his name) to cover various drinks and restaurant-related services. This might point towards his ambitions for the future.
Why protect his name with a registered trade mark?
Trade marks essentially distinguish the goods and/or services of one entity from another. Since becoming more well-known following his role as a judge on the GBBO, it is in his interests to protect his own personal brand with a registered trade mark. This will certainly make it easier for him to enforce his rights, relative to relying on unregistered trade mark rights (passing off).
If Paul Hollywood was less well-known, he may have found it more difficult to persuade the UK IPO to register his name as a trade mark, at least in such a wide range of goods and services. Therefore, if you would like to trade mark your name, or your company’s name, having an existing reputation to rely on may make it easier to obtain registered protection.
If your name happens to be Paul Hollywood, but you are not the eponymous chef, both UK and European trade mark law provide an exception allowing you to personally trade under your own name without infringing a registered trade mark. Incidentally, it seems that Paul Hollywood has not yet applied for a US trade mark, possibly because his reputation hasn’t yet spread to the US, or perhaps so that ‘Hollywood’ doesn’t come to call for the wrong reasons.
The icing on the bake, with a Berry on top
It’s not just Paul Hollywood who has ventured towards obtaining registered trade mark protection. His current GBBO co-presenter Mary Berry has registered “Mary Berry’s” in relation to certain foodstuffs in the UK and Europe, as well as for various printed matters. Unsurprisingly, there are also various trade mark rights surrounding ‘The Great British Bake Off’® itself, as well as equivalent versions of the show around the world.
Overall, the question of whether names and trade mark rights mix well depends on individual circumstances. Acquired distinctiveness and reputation can sometimes make it much easier to prosecute a trade mark application. Given that Paul Hollywood is now widely known as a household name in relation to baking, it’s no surprise that he has been able to acquire corresponding trade mark rights for his name for particular goods and services. The key is to become well-known without your ‘brand’ becoming generic, i.e. a by-word for something customary or well-established in the industry.
If you would like input on how to protect your brand, contact one of our Trade Mark attorneys for further information and advice on strategies to make the most your trade mark(s).
*Strictly with respect to fame