The force is with famous trademarks in dispute over name change (updated) 31 Jul 14
(This article has been updated – the new information is italicised below)
A curious story cropped up yesterday about a woman who legally added ‘Skywalker’ as a middle name, but was informed by the UK’s Passport Office that her passport signature, that reads ‘L Skywalker’, infringed a trademark and was therefore rejected. The decision has been labelled ‘absurd’ by one trademark attorney, although HM Passport Office defends the action by saying it has a duty to ensure that the reputation of UK passports is not called into question. It’s certainly an unusual incident, and throws up the issue of how stringently passport examiners check trademarks, and whether famous marks are receiving preferential treatment.
Laura Matthews, of Southend in England, changed her middle name by deed poll in 2008 and her recent application to renew her passport was rejected after changing the signature panel to ‘L Skywalker’. “This is the first time we have come across HM Passport Office refusing an application on the basis of a prior-registered trademark,” observes Sharon Daboul, trademark attorney at EIP. “This is a ridiculous decision because she is not using SKYWALKER as a trademark; she is not associating the name with any particular product or service, nor is she using the mark in the course of trade. She is perfectly within her rights to change her name to incorporate a popular trademark.”
When asked about the decision by WTR, a spokesperson for HM Passport Office said: “We will not recognise a change to a name which is subject to copyright or trademark.” The HM Passport Office’s document outlining acceptable names addresses name changes that could infringe a mark, and reads: “The adoption of a trademark name will not, by itself, breach a registered trademark. It will only do so if the name is used for commercial gain. However, as it would be difficult to know the motives of an applicant or what the name will be used for after the passport has been issued, evidence to show that they have the consent of the trademark owner should be requested. In certain circumstances, the adoption of a registered trademark name will be acceptable without the consent of the trademark owner. These are for registered trademark names which are also recognised as normal names [eg, William Morrison or Paul Smith are registered trademarks and normal names at the same time].”
Daboul, however, notes that “UK trademark law allows for a defence to trademark infringement called the ‘own name’ defence, whereby ‘a registered trademark is not infringed by the use by a person of his own name or address, provided the use is in accordance with honest practices in industrial or commercial matters’. A key aspect of the ‘own name’ defence is that the person is using the name in an honest way, [so] not to usurp the rights of the trademark holder. The policy of HM Passport Office is designed to ensure they are not complicit in creating a situation whereby a natural person could wilfully infringe a registered trademark and then seek to validate that use through the own name defence. Frankly, we find their decision to reject the passport renewal application to be absurd. Is HM Passport Office going to be integrating trademark database searches in their examination of passport applications going forward?”
The spokesperson for HM Passport Office would not give an on-the-record answer when asked whether the passport examination procedure does indeed include trademark database searches. However, WTR spoke with Andre Hill, a deed poll adviser at the UK’s Deed Poll Office, who gave some interesting insights into the process of legal name changes and subsequent passport examinations. He explained that the Deed Poll Office does allow a person to change their name to a trademark, although suggests people strongly consider the difficulty of getting official documents if they choose to do so. Regarding the specific ‘L Skywalker’ case, Hill says: “HM Passport Office do know that just using the name ‘Luke Skywalker’ (let alone ‘L Skywalker’) wouldn't constitute a trademark infringement, and so they wouldn't use that as a reason for rejecting a passport application. What they do say is that, according to their policy, they won't allow any names which are trademarks, unless you first get the trademark holder's permission. The Passport Office obviously don't know if someone would eventually go on to infringe any trademarks but they have a policy, I suppose, of assuming the worst.”
Hill adds: “Because it doesn't happen very often, I presume it would normally (at first) come down to one of the passport examiners recognising it as a (well-known) trademark, or at least a name which is ‘unusual’. I doubt that their own computer system is actually integrated with any trademark database because, to be honest, it's very rare that people adopt trademarks as their name. But of course I suppose they're likely to check it against public trademark databases if there were any doubt.”
Public response to the decision has been largely negative but, unlike the planet of Alderaan, there looks to be a happy ending, as a “compromise is being hashed out” between the Passport Office and Laura ‘Skywalker’ Matthews to allow the passport if the signature is amended. In the meantime – absent confirmation that name-change checks in passport applications are automatically conducted – it would seem that the more famous the mark (and therefore more likely to be recognised by individual examiners), the more likely that HM Passport Office will offer them protection benefits that other mark owners are not receiving.
WTR contacted the Department of State in the US about whether there are similar trademark regulations for passport names and signature panels. A State Department official said that the department “does not have any specific policies restricting the use of trademarked names”, adding: “If an applicant has legally changed their names and has a birth certificate issued in a trademarked name, or if an applicant has a court order changing his/her name to a trademarked name, a passport could be issued in that name. One thing to keep in mind, however, is that the regulations for changing one’s name vary by state. So we could not say whether or not those names are allowed on birth certificates in every state or whether every court would allow such a name change.”
Referring specifically to the ‘L Skywalker’ name, the State Department official simply said: “If a passport holder has a legally-changed name, that is the name that will be used in the passport.”
Register for more free content
- Read more World Trademark Review blogs and articles
- Receive the editor's weekly review by email