“Did you know Santa was invented by Coca-Cola? He’s actually a trademark of Coca-Cola, that’s why he’s always dressed in red and white, it’s the corporate colour,” I was told by a teenager recently. Naturally, my first reaction was to shrug it off as the wild imaginings of a precocious anti-establishment pubescent boy whose parents had told him when he was 3 that Santa did not exist. However, when I decided to look it up on the internet, I found that it is actually a very popular urban legend still believed by many to be true. Myth or fact, the episode did raise a good question – can you trademark a person?
Well the answer is yes and no. All of us look different every day, we change our clothes, our hair, our appearance, we grow fatter, skinnier, darker, fairer, older, saggier; our looks are not constant. While it is unthinkable that people can be a subject of trademark registrations, there are many things about a person that can be trademarked.
A Rose by Any Other Name Would Not Sell as Sweet
“A good name is more desirable than great riches,” as the old saying goes. Nowadays, a good name could lead to great riches; think Jimmy Choo, Yves St Lauren, Tommy Hilfiger, Coco Chanel, and McDonald’s. Although we are no strangers to trademarks which bear the names of the founder or owner of a business, some of us may not know these trademarks are worth billions (McDonald’s trademarks being valued at about USD24 billion). These marks are so valuable because they are the driving force which brings in the customs. The trademarks are the reason why consumers would buy the companies’ products.
However, if you are thinking that since Beyonce and Jay-Z had registered the name of their baby daughter, Blue Ivy Carter, as a trademark, why can’t you? Well, the trademark law in Malaysia is such that you may only register your name as a trademark if you can prove that it is well known and you have used it to conduct business for a long time in Malaysia (e.g. Madam Kwan) or if you have invented a name which is uncommon (e.g. Lewré). The trademark office is unlikely to register a single worded name like “Tom”, “Dick”, and “Mary” is as it would prevent other Toms, Dicks, and Marys from legitimately using their name on their businesses.
Hands Off My Face!
With plastic surgery and facial reconstruction becoming more pervasive by the day, you may be anxious to prevent others from becoming your clone. Can you trademark your likeness for that extra level of protection? Well you can, if you are a cartoon character. Mickey Mouse, Johnny Bravo and The Simpsons are all registered trademarks in Malaysia.
But what if you are flesh, skin and bone? Could you trademark your image or your likeness? The answer is no, at least not in Malaysia. The courts in Australia however, have been more generous. In the case of Hogan v Koala Dundee, the Australian Court found in favour of revered “national treasure” Crocodile Dundee, thwarting the attempts by a similarly dressed Koala (complete with the sleeveless shirt, a bush hat with teeth in the band, and a knife) to “sully” it. The Court found that Koala Dundee had misappropriated the reputation of Crocodile Dundee and wrongfully associated the stores’ goods to him. So if you are a famous fictional character in Malaysia, you may bring an action for copyright infringement against another party who is using the photos or footage of your character without your consent. On the other hand, historical figures who are long dead and without an estate to carry out legal actions in their stead (i.e. Julius Caesar, Cleopatra and Napoleon, etc.) can be used as a trademark and registered as such in Malaysia.
This is Sparta!
Catchphrases are, well… catchy. What would the film 300 be without Leonidas’ spit-filled cry of “This is Sparta”, or Jerry Maguire without “Show me the money”, or Star Trek without “Live long and prosper”? Some famous catchphrases are in fact registered trademarks, for instance the “D’oh!” uttered by Homer Simpson every time something bad happens to him, “Let’s Get Ready to Rumble” was registered by Michael Buffer, a famous boxing ring announcer, and “Linsanity” by NBA’s newest heartthrob Jeremy Lin.
However, not every phrase is registrable as a trademark, especially if the phrase is common in the local tongue, as the registration of those phrases would deprive the public from using them. So don’t play play! (Sorry, I just had to quote Phua Chu Kang). As such, phrases like “You’re fired”, made famous by Donald Trump in the TV series “The Apprentice” and Paris Hilton’s “That’s hot” have been refused registration. So, the next time you are fired from your job, you can at least take solace in the fact that Donald is not profiting from your misfortune.
Now, having busted the myth of the origin of Santa Claus, thus restoring the faith of millions of children around the world in the existence of a Santa free from the hegemony of the giant global conglomerate Coca-Cola, and having cleared up some issues on the trademark law surrounding it, I would like to wish everyone a Merry Christmas and a Happy New Year. May the force be with you.