Registration of mark containing name of deceased celebrity allowed

The Board of Appeal has allowed the registration of a mark containing the name of the late Georg Ots, a famous Estonian opera singer (Case 897-o, July 18 2008).
Estonian company AS Norbert applied for the registration of the trademark GO SPA GEORG OTS SPA HOTEL for services in Classes 41, 43 and 44 of the Nice Classification. Norbert provided the Estonian Patent Office with a letter of consent to use the name Georg Ots for hotel and spa services, which was issued by the singer’s widow.
The office refused to register the mark on the grounds that registration would be an offence against good manners. The office found that third parties should demonstrate respect for deceased celebrities and should not use their names in the course of business. The office did not take the widow’s consent into account on the grounds that the right to one’s name is a personal right. The office pointed out that under the Estonian inheritance laws, such right cannot be transferred to heirs. The office admitted that it had previously registered trademarks containing the names of deceased celebrities (including Mozart, Picasso and Georg Lurich, an Estonian athlete), but announced that it had decided to change its registration procedures. Norbert appealed.
The Board of Appeal held as follows:
  • The office had failed to motivate its decision to refuse registration of the mark. A general assumption that the names of deceased celebrities cannot be registered as trademarks was insufficient. The office must provide reasons why a particular name cannot be registered for certain goods and/or services.
  • The office exceeded its discretion in relying on the concept of ‘good manners’. As this term is not defined by law, the office should have demonstrated how registration of the mark would represent an offence to good manners.
  • Registration of a trademark represents an offence to good manners only if it poses an actual and serious risk to moral principles. The registration of GO SPA GEORG OTS SPA HOTEL did not pose such risk.
  • In light of the office’s previous registration procedures, Norbert had a legitimate expectation that its trademark: 

    • would be registered; and
    • would not be rejected based only on general principles.
  • The consent letter provided by the singer’s widow was relevant in this case, while inheritance law was not. If the widow did not object to the use of her late husband’s name, it could be assumed that the trademark did not offend good manners or damage the reputation of the singer.
  • Therefore, the office had infringed the principles of proportionality, equal treatment and legal certainty in reaching its decision.
Consequently, the board reversed the decision of the office to refuse registration of the mark. Once the board’s decision comes into force, the office will have to resume the examination proceedings and allow the registration of the mark.
Almar Sehver, AAA Legal Services, Tallinn

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