The Appointed Person, overturning an Intellectual Property Office hearing officer’s decision, has held that an application to register the name of a recently deceased famous person by one of his former business associates had been made in bad faith, under section 3(6) of the Trade Marks Act 1994. Ian Adam, a famous voice training teacher, had died in 2007. A few months later, one of his former business associates, Catherine Hughes, applied to register the name IAN ADAM as a trade mark for various services in class 41, including the provision of voice training and voice lessons. The Appointed Person concluded that Ms Hughes was, for her own benefit, seeking to exclude the surviving goodwill and reputation attaching to the name IAN ADAM from the estate she was purporting to administer when she filed the application. Consequently, the application had been made for an improper purpose and was objectionable on the ground of bad faith under section 3(6). In reaching his decision, the Appointed Person said that there was no “wooden” rule that any application to register the name of a deceased celebrity must always or necessarily be objectionable on the ground of bad faith; it depended on the facts of each case. (In the matter of application no 2463230 in the name of Catherine Hughes and opposition no 96672 by Annette Campbell and Bente Zaber, BL O-094-11, 7 March 2011.)

Practical Law Update 18.3.11