IILS India



TOPIC: TRADEMARK AND OTHER EMERGING ISSUES- CHARACTER MERCHANDISING SUBJECT: INTELLECTUAL PROPERTY LAWSBATCH: 5 YEAR BA/BBA/BCOM LL.B, SEM IXCHARACTER MERCHANDISINGCharacter merchandising is the adaptation or secondary exploitation of a fictional or real-life character either by the creator or by an authorized party. This exploitation concerns the essential personality features of the character, such as name, image, or appearance, used in particular products/services. The objective is to create an association between the products and the personality features so that the product/service becomes appealing to the customers because of their attachment to the character. Character merchandising has become an effective marketing strategy for many companies to generate profits. Merchandise like shirts, bags, toys, etc. displaying essential personality traits like name, physical features, or tagline of the characters is manufactured and sold.Types of Character MerchandisingFictional/cartoon character merchandisingCartoon character merchandising was first started by Walt Disney Co. when it began licensing the usage of its famous cartoon characters like Mickey Mouse and Donald Duck on consumer products. Fictional/cartoon character merchandising uses the dialogues, images, and names of the characters. An example can be using Mickey Mouse on the wrappers of Cadbury chocolates. These fictional/cartoon characters can be from literary works like Calvin and Hobbes, artistic works like Mona Lisa, and cinematograph films like Harry Potter and Lion King. It can also be mascots of sporting events like FIFA. Whenever a fictional character is created, it automatically receives copyright protection.Personality merchandisingUsing famous persons or celebrities from sports, movies, music, etc. to endorse goods and services is called personality merchandising. These persons are well known to a large section of society. This method is profitable because customers will find these products endorsed by their favorite celebrities to be relatable and will also want to use these products, which are supposedly used by the stars themselves. An example of this can be various beauty products endorsed by Bollywood celebrities like Alia Bhatt and Aishwarya Rai.Image merchandisingImage merchandising is a combination of fictional character merchandising and personality merchandising. This refers to fictional characters, which are played by a real-life actor. Here, the character is identified by the public through both the essential personality features of the real-life person and the fictional character. An example of this can be the character of Iron Man played by Robert Downey Jr and the character of Krissh, played by Hrithik Roshan.Character Merchandising’- A Trademark and Passing off IssueIn recent years, the entities holding the ownership rights over characters register these characters as trademarks or at times when left unregistered seeks passing off action before the Court in case of any infringement. This is due to the fact that characters today are often been commercially exploited by the owners of these characters by associating them with various goods and services.Like other marks, characters also fulfils the purpose of ‘distinctiveness’ thereby, the consumers having affinity towards a particular fictional or real life character often associates the good to the origin of such character. Therefore, any unauthorized use by third party can create a misrepresentation in the minds of customers. Thereby, helps in lowering down the image and reputation of famous characters. This, problem is all the more significant in case of ‘celebrity merchandising’ as in this case the popularity and reputation of a celebrity plays a major role. It is a common tendency among the customers that they associate the goodness of a product to the image of famous celebrities that they are of the belief that if a particular celebrity is endorsing a product then it is sure to be of high quality. But often unauthorized use creates a risk of loss of reputation among the owners of famous characters and among celebrities.An issue arose few years before regarding famous film star Amitabh Bachchan’s baritone voice. The voice is a part of his basic features and it’s a mode of distinctiveness among common mass. Through its use any person will be able to determine that the voice belongs to him therefore any misrepresentation of his voice may hamper his reputation heavily. A tobacco company in order to increase the sell of their product allegedly used the “imitated voice” of the famous actor.The actor in response stated: “Not only is this unethical and wrong, it paints me in bad light as well... For someone that does not smoke or propagate smoking or any kind of intoxicant... it is most disgusting to find someone conflagrating the law of the land.”He further stated: “Caricatured images are used for commercial gain without our permission and this is completely undesirable.”3.3. Protection under Trademark LawUnder the trademark law there are certain conditions which need to be fulfilled before a mark can be registered. The basic characteristics of a fictional character are more towards fulfilment of the conditions for registration than that of the characteristics of real personalities. There are several issues raised in regard to registration of the features of some real person and that is why many personalities have adopted ‘stage names’, ‘personalized logos’, ‘nick names’, etc. to get them registered. Registration must be done without making any delay as in many countries rights can only derive through registration and also because the popularity of any character can be for a certain time limit only.There are different requirements of registration under different countries which are of substantive nature. This must be understood in the context of merchandising of characters. Like in some countries there is a requirement that there should be an existing relationship between the business of the owner or holder of the mark and of the products and services on which the trademark is applied. In case of character merchandising application of such condition becomes quite difficult in this case no such relationship exists. The creator or owner of the character cannot in any manner be indulged in the production or manufacture of goods on which the mark will be applied. Nevertheless, in the modern scenario there has been several instances when are marks are getting registered and applied on different goods even though it bears no such relationship with the person or entity who has applied for the registration of the mark. In some other countries, under the condition for registration of marks it is stated that the marks that are to be registered must have posses the quality of distinctiveness. That is it should be such that it leaves no scope for confusion in the minds of public regarding the mark. Putting up such conditions on characters creates lots of hindrance in the registrability under the trademark law. Because it is said that in some countries distinctiveness alone is not enough it must also possess a secondary meaning. However, the laws of every country are not similar and therefore for fictional characters in some countries the names of those characters are considered fanciful therefore it becomes registrable. In regard to the registrability of names and surnames of real persons, laws of certain countries provide trademark protection but the rights can be limited as there can be other people bearing similar name and in certain situations they might continue using their own names. Only when an attempt will be made to distort the reputation of any famous personality by using his name, the trademark law will look into it.Then there is also another condition for registration of trademark and that is “effective use of a mark”. This rule is prevalent in almost all the countries that the applicant or the trademark holder might at time to time give proof to the respective authorities regarding the use of mark, be it at the time of application or renewal. Non-use of mark may lead to invalidation of right over the particular mark. If this condition is to be understood in the context of character merchandising then the holder of the mark would be considered to be using the mark even if it is used by the authorized users of that particular trademark holder like the licensees or persons involved in merchandising the product because the holder in this case might not be a part of the merchandise at all.So, it can be seen that even though characters do not exactly fits to the criteria of trademark protection like all other marks because of its certain uniqueness. Nevertheless, it can provided trademark protection if there will slight flexibility in the conditions of registration for trademark protection.Case Analysis:D.M. Entertainment Pvt. Ltd. Vs. Baby Gift House and Ors CS(OS) 893/2002: In this case, the plaintiff was a company which was a representative of the famous singer Daler Mehndi. They sought to avert the respondent from marketing dolls that could resonate portions of Mr. Mehndi's songs. The court acknowledged that Mr. Mehndi's identity was inappropriately utilized by the respondents in the above mentioned dolls and that this deceived customers into considering that the dolls were in fact endorsed by Mr. Mehndi. The court further specified that such profit-making manipulation caused substantial losses to the plaintiff and held that the defendant was liable for passing off. This is an example of personality merchandising.Chorion Rights Limited V. Ishan Apparel and Ors. (2010) ILR 5 Delhi 481: The plaintiff, claimed to be the proprietor of the universal trademark and merchandising privileges of the fictitious character named NODDY which was a cartoon character and had a show which was broadcasted many times in a day in the channel Pogo under the time slot of Tiny T V and sought to stop the defendant from marketing apparel in the same trade name NODDY. Although the court accepted the significance of protection from the ill effects of character merchandising, it held that the registration for the mark was established by the defendant successfully sometime in 1995 whereas the plaintiff's claim on the mark was from 1997. Hence, although the plaintiff was the rightful owner of all the merchandising rights in NODDY in most jurisdictions, the defendant was first party to get the registration in India. This is an example of Fictional or cartoon character merchandising. ................
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