TRADE MARK - REGISTRATION - DISTINCTIVENESS OF TRADE MARK "DIANA, PRINCESS OF WALES"

S and M, the executrices of the estate of Diana, Princess of Wales, applied to register the words DIANA, PRINCESS OF WALES as a trade mark to control trade in memorabilia and commemorative items bearing Diana's name. They contended that, following her death, use of the name in connection with any product would be taken by the public to be authorised by the memorial fund or the estate.

Held, refusing the application, that (1) as a living person could not own the rights to their own name, Diana, Princess of Wales, had no exclusive right to use her name for commercial purposes when she was alive, ELVIS PRESLEY Trade Marks [1999] R.P.C 567, [1999] C.L.Y. 3574 followed; (2) a name unique to a particular person did not of itself have distinctive character as a trade mark. The essential function of a trade mark was to guarantee that the items bearing it had originated under the control of a single undertaking responsible for their quality. Unless, therefore, such control could be shown, the use of a famous name to endorse a product was not a trade mark use. In the instant case, the average consumer would not have expected all commemorative items bearing Diana's name to be marketed under the control of a single undertaking. The fact that the estate had resorted to additional means of denoting official authorisation, namely the use of logo and hallmark suggested that it was not confident that the use of the name alone would guarantee a trade connection between the goods and the estate. Accordingly, at the date of the application the words DIANA PRINCESS OF WALES did not have the distinctive character required for a trade mark and were excluded from registration by the Trade Marks Act 1994 s.3(1)(b).

DIANA, PRINCESS OF WALES TRADE MARK [2001] E.T.M.R. 25, Judge not specified, TMR

"Current Law" May 2001