No registration for Zeta-Jones trademark

The registrar of trademarks has rejected Cariad Properties Limited's application to register 'Catherine Zeta-Jones' in Class 41 for:

“entertainment services, including personal appearances by an actress; providing entertainment, film information, biographical information and news for entertainment purposes via a website on the internet; fan clubs services.”

The registrar held that the mark consisted exclusively of a sign that designated the characteristics of the services applied for and was devoid of any distinctive character.

The applied-for mark was the name of the actress Catherine Zeta-Jones in plain capital letters. To relevant consumers (ie, the general public of Hong Kong, including moviegoers who are keen followers of foreign films), Zeta-Jones is well known as she has starred in a number of Hollywood movies shown in Hong Kong and won an Oscar for best supporting actress in 2002.

The applied-for services concerned entertainment, which is part of everyday life for people in Hong Kong. If such a mark were to be used for entertainment services, the provision of film information and entertainment news through a website and fan club services, it would imply that:

• such services relate to Zeta-Jones;
• the news is about her; or
• the fan club services offered are for her fans.

As the mark simply consisted of the name of a famous actress, it merely identified the entertainer and conveyed a message about the contents of the entertainment services. Therefore, the mark consisted exclusively of signs that may serve to designate the characteristics of the applied-for services. In line with Linkin Park LLC’s Application ([2005] ETMR 17), in which the name of the band LInkin Park was refused registration in the United Kingdom in relation to “printed matter, posters and poster books” in Class 16, it was similarly considered essential for people providing entertainment services featuring Zeta-Jones to be able to designate the services by using her name.

In considering distinctiveness, applying British Sugar Plc v James Robertson and Sons Ltd ([1996] RPC 281) and Nestle’s SA Trade Mark Application (Have a Break) ([2004] FSR 2), when a mark is applied to services it conveys an origin-neutral message to consumers about the subject matter of the services. Without first being educated, the mark will not be regarded by consumers as a reliable indicator of the commercial origin of the services applied for.

Unlike the cases involving the marks ELVIS PRESLEY and JANE AUSTEN, which concerned the sale of items in commemoration of deceased persons and where there was no direct link between the individual and the items applied for, the mark at issue in this case was the name of an individual in the field where she attained her fame. Naturally, consumers of entertainment services expect a performance by Zeta-Jones when they see her name applied to the provision of such services, and people joining a fan club under her name expect the services to be for fans of Zeta-Jones. Therefore, consumers would not regard the mark at issue as identifying the commercial origin of such services.