A valid trademark must satisfy the test of distinctiveness and use in commerce. Experts explain to Excel V. Dyquiangco why celebrities must prove real commercial use – and how passing-offand publicity rights can still protect famous nicknames.

When Indian professional cricket legend Mahendra Singh Dhoni moved to trademark his widely recognized moniker “Captain Cool,” many assumed it would be a straightforward victory given his massive popularity.

Yet, the rejection of his application immediately challenged the assumption that global stardom equates to legal ownership. The core of the dispute lies in the legal determination that a name must function as more than just a personal identifier – it must serve as a distinct commercial brand. While millions recognize “Captain Cool” as a reference to Dhoni the individual, trademark law demands that the public recognize it specifically as the source of goods or services. The case highlights that without a direct link to commerce, even a nickname known by millions can be viewed legally as merely descriptive rather than a protectable asset.

As explained by C.A. Brijesh, a partner at Remfry & Sagar in Gurugram, Indian courts draw a distinction between a celebrity nickname that merely identifies a person and one that functions as a trademark capable of distinguishing goods or services in the course of trade.

“This differentiation hinges on the nature and context of use, whether the nickname serves as a personal moniker reflecting identity and reputation, or whether it has been commercially deployed to signify origin and source under the framework of the Trademarks Act, 1999,” he said.

Under the Trademarks Act in India, a valid trademark must satisfy the test of distinctiveness and use in commerce. Pertinently, Section 2(m) of the Trademarks Act, 1999 specifically includes “name” in the definition of “mark”.

“Therefore, for a nickname to qualify as a trademark, it must be used in the course of trade – for instance, on merchandise, entertainment services, endorsements or products,” said Brijesh. “In this context, Section 14 of the Trademarks Act is also relevant here as it prohibits registration of names and representations that falsely suggest a connection with a living or recently deceased individual without consent, thereby ensuring that names or nicknames are not misappropriated in trade.”

“However, when a nickname or name has not been used as a mark in commerce but is nonetheless exploited without authorization, courts have extended protection under the umbrella of personality and publicity rights,” he pointed out.

Some other jurisdictions, such as the courts in Singapore, would only recognize and grant legal rights to a celebrity’s nickname if the celebrity has gained a reputation in the nickname and the public has come to identify and associate that nickname with the celebrity.

“In other words, if you were to mention that nickname to a member of the public, and that person is able to identify the celebrity from that nickname, the celebrity has gained a reputation in that nickname, and he or she can claim that that nickname forms part of his or her identity,” said Jonathan Kok, a partner at Withers KhattarWong in Singapore. “Further, if the celebrity has used his or her nickname in the course of trade, such as endorsing products or services, or in sponsorship deals, or on merchandise in Singapore, the celebrity would have the legal right, and the courts in Singapore would recognize and enforce those rights, against a person who uses the celebrity’s nickname without his or her consent on that person’s goods or services.”

He added: “Such unauthorized use of the celebrity’s nickname misrepresents to the public that the celebrity is endorsing that person’s goods or services when the celebrity did not consent to lend his or her nickname for such use in the first place. It also deprives the celebrity from income from such commercial activities, which he or she would have earned or gained had he or she been formally approached to participate in such commercial activities.”

Achieving use in commerce

In India, the determination of whether a celebrity’s nickname has achieved “use in commerce” is guided by the principle that trademark protection arises not from fame itself but from tangible trade-related use.

Under the Trademarks Act, 1999, “use” refers to the commercial application of a mark in connection with goods or services, which must be demonstrated beyond mere media mentions or fan usage. Section 2(2)(b) of the act stipulates that the “use” of a mark can refer to its printed or visual representation in commerce, such as in advertisements, promotional materials or packaging. Section 2(2)(c) provides that, in the case of goods, the mark must be used physically on or in relation to those goods. For services, the mark must be used in connection with a statement about the availability, provision or performance of the service.

“Therefore, to establish that a celebrity’s nickname has achieved ‘use in commerce,’ there must be evidence of direct association between the nickname and a commercial product or service,” said Brijesh. “This could include, but is not limited to, the use of the nickname in branding, advertising campaigns, promotional materials, merchandise or endorsements, as well as the public’s recognition of the celebrity’s name being linked with specific goods or services. Mere public recognition or media usage does not amount to trademark use.”

For Kok, the evidence required would depend on whether the celebrity has registered their nickname as a trademark. “If the celebrity has registered his or her nickname as a trademark, he or she must put his or her nickname to genuine use in the course of trade in Singapore in relation to the goods or services for which it is registered in order to retain the registration. If not, the registrable will be exposed to revocation for non-use,” he said.

According to Kok, “genuine use in the course of trade in Singapore” has been described in case law to mean bona fide use as a trademark (use of the mark to indicate the origin of the goods or services). “Genuine use of a trademark is proved by furnishing evidence of use of the trademark in the market concerned. Examples of genuine use include: a) applying the trademark to goods or the packaging thereof; b) offering or exposing the goods for sale, putting the goods on the market or stocking them for those purposes under the trademark, or offering or supplying services under the trademark; c) importing or exporting goods under the trademark; d) using the trademark on an invoice, catalogue, business letter, business paper, price list or other commercial document, including any such document in any medium; or e) using the trademark in advertising,” he said.

“As such, media mentions or fan usage alone are not sufficient to be considered as having put the nickname to genuine use in the course of trade in Singapore,” he added.

“If, on the other hand, the celebrity did not register the nickname as a trademark, he or she would then have to prove that there is goodwill in his or her nickname. Goodwill has been defined as ‘the attractive force arising from the business’ name and reputation which brings in custom.’ In other words, it is something that causes customers to be attracted to the business over others. Goodwill can exist in a celebrity’s nickname if it is used as the brand name of the celebrity’s business. Goodwill must be attached to a business. So, if the nickname is not used by the celebrity in his or her business ventures or generally in the course of trade, then there is no goodwill in the nickname and consequently, no trademark rights in the nickname,” he said.

Using a celebrity’s untrademarked nickname

When it comes to using a celebrity’s untrademarked nickname, according to Brijesh, a celebrity can obtain relief primarily through common law rights such as action of passing off and the doctrine of personality or publicity rights.

“Passing off is a common law remedy that safeguards a celebrity’s unregistered rights,” he said. “It prevents third parties from misrepresenting their goods or services as being associated with the celebrity, thereby protecting the goodwill and reputation the celebrity has established. To succeed in a passing off action, the celebrity must demonstrate that there is goodwill, misrepresentation and the likelihood of confusion as to the source or origin of the goods or services.”

“Additionally, personality or publicity rights, rooted in Article 21 of the Constitution and developed through common law, enable celebrities to control the commercial exploitation of their persona, including nicknames,” he added. “As per Indian case laws, a celebrity possesses personality or publicity rights over all facets of his persona, including his nickname. The unauthorized use of uniquely identifiable characteristics of a public figure for commercial purposes infringes upon the exclusive rights he holds over his identity. The very status of being a celebrity inherently grants the person rights over his personality and associated attributes.”

“Traits such as names, image, likeness, voice and other attributes of a celebrity have been consistently recognized by our judicial system, regardless of the date of use of the other side. Nicknames of celebrities have also been specifically protected by courts in India. For instance, the High Court of Delhi has protected the celebrity name Jackie Shroff and other sobriquets including Jackie and Jaggu Dada by granting injunction against infringement of Jackie Shroff’s personality or publicity rights by utilization, exploitation or misappropriation of the same, for any commercial purpose without Jackie Shroff’s consent and/or authorization. Injunction orders have been passed even in respect of domain names comprising a public figure’s name,” he said.

Pertinently, courts in India delicately balance a celebrity’s rights to personality, publicity and moral integrity against another individual’s right to artistic and economic expression. “While the right to free speech concerning public figures is undeniably protected, particularly in the context of information, news, satire, parody and legitimate criticism, it becomes unlawful when such expressions result in defamation, dilution, tarnishment or endangerment of the individual’s reputation or associated attributes. Even the Supreme Court of India has disapproved the misuse or commercial use of a celebrity’s name, voice, persona, likeness without his consent, in the context of right to privacy,” he said.

This is similar in Singapore. Kok added that to succeed in an action for passing off, the celebrity would have to prove the following three elements: a) they had goodwill in their nickname; b) the other person misrepresented their goods or services as those of the celebrity or that their business is associated or connected with the celebrity; and c) the celebrity suffered damage as a result of the misrepresentation.

“Goodwill is the intangible value that represents positive associations and feelings that a trademark creates in consumers,” said Kok. “It is linked to recognition by consumers of a brand and its earning power. Therefore, for there to be goodwill in a celebrity’s nickname, that nickname must be attached to a business. In a passing off action, the celebrity must show not merely that he or she enjoys sufficient reputation in Singapore, but that he or she has a business within Singapore to which goodwill is attached.”

He added: “In addition to establishing goodwill, the celebrity has to show that the other person misrepresented the origins of his or her goods or services by adopting a trademark that is identical or similar to the celebrity’s nickname, and the use of this identical or similar trademark has mislead or confused the public into thinking that his or her goods or services are those of the celebrity or are associated or connected with the celebrity.”

“Finally, the celebrity must show that he or she has suffered damage, or there is a real likelihood of damage, to his or her goodwill. Damage to the celebrity’s goodwill is typically demonstrated by showing loss of sales suffered by the celebrity as a result of the public buying the other person’s goods or services instead of the celebrity’s,” he said.

Proactive steps

“The best form of protection is for the celebrity to register his or her nickname as a trademark,” said Kok. “We would therefore advise the celebrity that if he or she wants to protect his or her rights over his or her nickname, he or she should apply to register his or her nickname as a trademark in the countries or territories where he or she intends to conduct business using his or her nickname. The best protection is to register the nickname as a trademark, especially if the celebrity is using or plans to use his or her nickname for commercial purposes – endorsements, sponsorships, merchandising or the provision of services.”

For Brijesh, as a first step, the nickname could be used as a mark in commerce. “The same can be achieved through introducing product lines, endorsements, social media and branded merchandise bearing the nickname. Maintaining detailed records of this commercial use, such as contracts, invoices and advertisements, is essential to substantiate the claim of brand development,” he said.

“A rising star could also consider filing for trademark protection, ensuring that the nickname is registered under appropriate classes,” he noted. “Both word marks and device marks should be considered to safeguard the brand comprehensively. Further, licensing, endorsement and production agreements should explicitly protect the nickname, with clauses reserving exclusive commercial rights. It may be worthwhile obtaining a domain name registration as well, subject to future commercial plans.”