A Family
Law practitioner shared with me a story about a case he handled some time back.
A lady had alleged that her ex-boyfriend was the father of her Son. The
ex-boyfriend denied parentage. The Lawyer called for a meeting between members
of the lady’s family and the man’s family after which it was agreed that a DNA
test would be carried out. A few weeks later, the test results revealed that indeed
there was no biological connection between the boy and the man. Naturally the
conniving lady had known this all along but had apparently tried to use her son
as leverage in getting financial support from the man. She had even given her
son the same surname as her ex-boyfriend. The Man, as well as his siblings, was
furious that the Woman had even gone as far as having her son baptized with a
surname similar to theirs and demanded that she changes the name and abandon
use of “their” name. This story is a typical experience for any Family
law practitioner but in the world of Intellectual Property it becomes even more
intriguing when it comes to discussing the issue of ownership and use of names.
When does one have the right to trademark a name?
The
question would probably be easier to answer in the western world where most
names do not have a cultural significance or origin, but in the African
context, particularly in Uganda where surnames are aligned with culture, addressing
the issue of owning a name would go
as far as that of ownership of culture. As such, I would probably be laughed at
if I dragged someone to court to try and stop such person from naming her child
KAKOOZA. Much as the name is used to identify me, I have no personal hold over
it, so much as to prevent another
from using it.
The
situation is not so different in the U.S where in October 2012, music celebrities
Beyoncé and Jay-Z lost a battle to trademark the name of their daughter Blue Ivy. Further back, in the case of ETW Corp. v. Jireh Publishing, Inc.,
when Tiger Woods sought protection over his image rights and name, the court
decided that as a general rule, a person’s image or likeness could not function
as a trademark. However, in the case of Peaceable
Planet, Inc. v. Ty, Inc., the Court stated that what has to be considered
is when a name is too common to be appropriable without proof of secondary
meaning.
What can
be borrowed out of this and taken up as a lesson is that if the name is too
unique as to acquire distinctiveness, then it would probably attract
protection. This is because it then acquires a secondary meaning in the sense
that it would be associated with a source. In any case, in most respects, to
have something unique means that there is an element of creativity or
innovation, which are strong ingredients in Intellectual property law
protection. Trademark protection, in particular, goes with distinctiveness; the
ability to distinguish a good or service from another and to associate that
good or service with a particular source. Where such distinctiveness has been
established within commerce, then protection is warranted.
As such,
in the context of the Ugandan surname, the names are as old as culture itself
and have no distinctiveness. To call them generic would even be far-fetched. Regardless
of how famous a particular name-holder may be, he or she cannot prevent another
from using the same name. However, this is not to say that you cannot get
protection for use of a name. Ugandan
trademark law, as well as in other jurisdictions, protects signs. So if you were
to structure your name on a business for goods or services in such a unique way
as to generate recognition of source, through say – use of font or other
artistic design of the name, the trademark protection would be justified. This
is in as long as it goes towards the design
of the sign but not the name itself.
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