Amitabh Bachchan, a well-known Indian actor, recently received an interim injunction from the Delhi High Court that forbade anyone from violating his publicity and personality rights. The court issued an ex-parte ad-interim decree prohibiting third parties from using his name, voice, face and other personal characteristics in any way without his permission. It was believed that his reputation would suffer an irreversible loss as a result. His lawyer, Harish Salve, a senior advocate at the Indian bar, argued in a 900-page brief that Bachchan’s name, image and voice are being used by websites, instant messaging apps and T-shirt manufacturers, among others.

Marking celebrity poses and signatures

“A signature trademark of a pose or body movement can be protected as a trademark if it has acquired a level of distinctiveness that enables people to associate that pose or movement with a particular public figure or business,” explained Jonathan Feder, a partner and practice area leader of intellectual property at K&L Gates in Melbourne. “A signature trademark of a pose or body movement must be something more than mere body postures, which are common to all people. The movement must be capable of distinguishing the goods or services of the celebrity or business in trade or commerce.”

He also noted that with celebrities spending significant time and effort in acquiring reputation and distinctiveness in their poses, registration of such poses as trademarks prevents third parties from using the same or a similar trademark. This is to protect them from parties “seeking to bolster their businesses through the unauthorized use of the celebrity’s personality and signature pose in relation to their goods or services.”

Feder added: “An action trademark infringement also has a much less burdensome evidentiary requirement than other causes of action, such as misleading and deceptive conduct under the Australian Consumer Law or passing off.” 

In Thailand, no current laws nor any regulations provide a formal description of the term “signature trademark.” However, if considering the principles of trademark law, any photograph, drawing, invented device, logo, name, word, phrase, letter, numeral, signature, combination of colours, figurative element, sound or combination thereof – which is used or proposed to be used on or in connection with goods or services to distinguish the goods or services of the trademark owner from goods or services of others – can be registered as a trademark, according to Tatchaporn Natprasertkul, a partner at WE Intellectual Property in Bangkok.

In this regard, a signature trademark could be any personal signature, including but not limited to famous poses or unique body movements, of a person, which is a symbol used in connection with goods or services to indicate that these are the goods or services of the owner of the trademark.

“As celebrities, they are considered public figures, and people get attracted to their personalities. Thus, their personal signatures, such as looks, styles, voices, poses and body movements, can give commercial value for promoting themselves, such as a famous pose of the Turkish chef sprinkling salt in his iconic pose, and branding proposes such as Nike’s famous Jumping-man trademark of Michael Jordan’s slam dunk,” added Natprasertkul.

Challenges in signature poses and movements

There are also challenges in registering body movements as trademarks. Vikrant Rana, a managing partner at S.S. Rana & Co. in Delhi, said that a body movement would be registered as a motion mark in India, with the following as the two categorical challenges that a motion mark faces in India.

“First is the issue of representing the motion mark graphically,” he said. “A motion mark in India can only be represented through a series of sequence images showing the movement or change of position forming the sequence for which the applicant is seeking registration. However, this might not always be feasible because, in certain circumstances, the pictorial representation may not exactly portray the movement for which the applicant seeks to register the trademark. Many trademarks might even be rejected on this ground.”

To overcome this constraint, he said India may start adopting the laws of other jurisdictions, such as the European Union or United States, where they have removed the requirement of graphical representation and started accepting even video files of the marks. This would enable the examiner and other third parties to understand exactly the motion of the trademark for which registration is sought and raise objections or oppositions.

“Second is the difficulty during the determination of similarity between the marks,” he said. “In certain cases, it may not be possible to establish the precise movement from the description provided along with the representation, and therefore, determining the distinctiveness of the mark would become difficult. Also, in the case of raising objections or proving the infringement, it might be difficult to establish the similarity between the motions.”

He added: “In this context, it would be relevant to mention that during the UKIPO-INTA Brand Protection Strategies Conference 2023, held in New Delhi on February 24, 2023, Shri Karan Thapar, deputy secretary of the Department for Promotion of Industry and Internal Trade (DPIIT), mentioned that India is actively looking into the further development of the present system of registrations for non-conventional trademarks.”

“Third is the acquired distinctiveness in connection with the celebrity,” he said. “Another issue is that, like other marks, signature poses and movements need to have distinctiveness, which must be dealt with by way of submitting substantial evidence of use and resultant association and connection with the celebrity.”

This is echoed by Theresa Mak, principal and trademarks head at Rouse in Hong Kong, who says that a trademark must be capable of identifying the goods or services as originating from a particular undertaking, thus distinguishing it from other undertakings. The mark must also be distinctive.

According to Mak, using celebrities’ images that show signature poses or movements is common in advertising or promotional campaigns. Consumers are generally not accustomed to perceiving the poses or movements as a “badge of origin” and are rather more likely to perceive them as a “commercial or remembered for entertainment values.” Similarly, when a celebrity’s image is applied to products, the image would more likely function as an indication that the products are about the celebrity rather than an indication of the trade source.