Stephen Hawking™: Intellectual Property’s Theory of Branding

Professor Stephen Hawking once said “Intelligence is the ability to adapt to change.” Now it looks as though he is embracing the growing trend amongst celebrities to protect and potentially exploit their name and image.

He recently applied to register his name as a trade mark at the UK Intellectual Property Office (“IPO”). The two applications made were published on 20 March 2015 and reveal the goods and services for which he seeks protection. They include use of his name in relation to education, computer software, mobility vehicles, charitable fundraising and information services, scientific and technical research and medical services.

Trade marking one’s name is nothing new for the famous. The entertainment industry is rife with examples such as Robbie Williams or Taylor Swift. It is also common in the design industry where designers like Giorgio Armani or Jimmy Choo have registered trade mark protection over their names (generally owned by their corporate vehicles). However, it is much less common in the scientific community – although the popular television presenter and scientist Professor Brian Cox also obtained registered trade mark protection over his name via applications made to the UK IPO in 2011.

A registered trade mark will enable Professor Hawking to prevent others from registering the same or a similar mark (although he would also have had other grounds for doing that based on his existing rights in the name) and will provide a simple route to Court to prevent use by third parties of his name in certain circumstances. It may also bolster any of his own efforts to exploit his name through commercial use in those protected areas and provide a right that can be enforced by his heirs (upon the payment of renewal fees) potentially forever.

Complexities arise in this area when people assign registered trade marks over their own name to corporate entities which they then sell. In such circumstances, the original owner may find him or herself limited (usually through contractual terms entered into upon the disposition of an original business) in the uses he or she can make of their own name in other business ventures. Take Jo Malone, whose new scent business trades under the brand ‘Jo Loves’.

The most famous example of these complexities in trade mark circles is that of the designer of Diana, the Princess of Wales’ wedding dress, Elizabeth Emmanuel (see Case C 259/04 Emanuel v Continental Shelf [2006]). Elizabeth Emmanuel sold her original design business, including an application to trade mark her own name, to a third party who then sold it to Continental Shelf. She then sought to oppose the trade mark application. The problem was whether the trade mark application should be refused, on the grounds that it was deceptive (where the goodwill associated with that mark had been assigned, together with the business making the goods to which the mark related.) The European Court of Justice (as it then was) held that such a registration was not inherently deceptive but left it to the national court to decide whether the mark was being registered in order to deceive the public that Elizabeth Emmanuel was still designing the dresses.

Celebrity merchandising is big business and celebrities including Rhianna often use the English common law of ‘passing off’ in ways to prevent un-licensed use of their name or image because of the absence of a separate intellectual property right in one’s own image (see Rihanna’s recent success against Top Shop selling t-shirts emblazoned with her picture). Copyright and breach of confidence law can also be used to prevent unauthorised use of personal imagery, such as in the 2001 Douglas v Hello case over photos of Michael Douglas’ wedding to Catherine Zeta-Jones.

In the case of Professor Stephen Hawking, these trade mark applications may simply be a defensive move, providing a quicker route to prevent others from using his name – rather than having to rely on a laborious ‘passing off’ claim which is, for the most part, dependent on establishing confusion amongst the relevant consumers purchasing the products or services offered under the name.

If Professor Hawking has plans to exploit the trade marks via endorsed products and services, he would be wise to retain full control over his name rather than letting it tumble into the black hole of corporate takeovers.