Character Merchandising Under Trademark Law

Characters that are highly recognizable are the most valuable assets in the merchandising and advertising industry. Apart from the copyright protection, fictional characters may be eligible for trademark protection if they serve to indicate the source of goods. This chapter argues that trademarks law is another relevant IP law that is capable of protecting the rights of characters. Distinctiveness of the trademark needs to be proved in order to get the character registered as a trademark. In case of unreal characters, the problem often faced, is the establishment of the distinctiveness as required by the trademarks law. While in the case of unregistered trademarks, the character owner may seek protection under the common law remedy of passing off. This chapter examines the scope of passing off action while protecting the names, images or likeness of real characters. The historical application of passing off remedy was confined only to ‘the common field of activity’ and later the courts moved on to part ways with this requirement. This chapter presents an in-depth analysis of the requirement of distinctiveness in names, images, and signatures of celebrities.