Pub­li­ca­tions

Halo, it’s Rumi and Sir Carter — Beyonce’s babies set to run the world

What more could a famous celebri­ty with an impres­sive for­tune want – a trade mark reg­is­tra­tion for their new­born chil­dren! Wel­come to the world US Trade Mark Appli­ca­tion Num­bers 87506186 and 87506188 (that’s Rumi and Sir Carter to you and me).

On 26 June, fans report­ed­ly uncov­ered the names of Beyonce’s baby twins in an uncon­ven­tion­al way when the com­pa­ny run by Bey­once and Jay Z, BGK Trade­mark Hold­ings, filed trade mark appli­ca­tions to secure the marks RUMI CARTER and SIR CARTER in the US. The same com­pa­ny owns the trade mark BEY­ONCE in Aus­tralia and the US, hav­ing also filed a trade mark appli­ca­tion for the name of the couple’s first child, Blue Ivy Carter. The new appli­ca­tions claim var­i­ous goods and ser­vices includ­ing fra­grances, cos­met­ics, key chains, baby teething rings, strollers, mugs, water bot­tles, hair rib­bons, play­ing cards, tote bags, sports balls, and rat­tles through to enter­tain­ment services.

It’s a savvy move from the Carter empire as mer­chan­dis­ing for celebri­ties becomes increas­ing­ly impor­tant — fil­ing a trade mark as ear­ly as pos­si­ble helps to pro­tect the name. In today’s media sat­u­rat­ed world, an ear­ly trade mark appli­ca­tion can also make a big dif­fer­ence in deter­ring oppor­tunists from reg­is­ter­ing domain names using the trade mark. These cyber­squat­ters’ often then hold the domain name to ran­som for a high price or use it to mis­lead consumers.

Even if Bey­once and Jay Z do not intend to use the names to launch a suite of new prod­ucts, an ear­ly trade mark appli­ca­tion is use­ful in deter­ring oth­ers from mak­ing a prof­it off their rep­u­ta­tion or good­will. If the cou­ple choose to extend their trade mark reg­is­tra­tions to Aus­tralia, they should be mind­ful to main­tain use of the reg­is­tra­tions for the claimed goods and ser­vices so as to avoid an appli­ca­tion for removal for non-use as dis­cussed in our arti­cle last year Attack­ing IP Infringers — Look Before You Leap’. Alter­na­tive­ly they could seek to file for a defen­sive trade mark, which are designed to min­imise con­sumer con­fu­sion and do not require an actu­al intent to use the mark.

How­ev­er, let us not for­get that isn’t the first time the cou­ple has filed a trade mark appli­ca­tion for the name of their child. Their first appli­ca­tion in 2012 for BLUE IVY was reject­ed because of its sim­i­lar­i­ty to a wed­ding plan­ner busi­ness. They have since filed a fur­ther appli­ca­tion in the US for BLUE IVY CARTER as oth­er indi­vid­u­als and com­pa­nies attempt­ed to reg­is­ter BLUE IVY CARTER NYC for children’s cloth­ing and BLUE IVY CARTER GLO­RY IV for fragrances.

Inter­est­ing­ly, in New South Wales, Bey­once and Jay Z might have failed at the first hur­dle in reg­is­ter­ing their babies’ names with the NSW Reg­istry of Births, Deaths and Mar­riages. Sec­tion 21 of the Birth, Deaths and Mar­riages Reg­is­tra­tion Act 1995 (NSW) pro­hibits names that include or resem­bles an offi­cial title or rank”. The Reg­is­trar may have instead decid­ed Sir Carter be named Simon, Steve or per­haps even Shane Carter.

Rumi and Sir should remem­ber the intri­ca­cies of trad­ing under their own names when there are trade marks involved, some­thing that we dis­cussed in our recent arti­cle Are You Enti­tled to Trade Under Your Own Name’.

Ulti­mate­ly though, in show busi­ness, where name means for­tune and celebri­ties have invest­ed time and mon­ey in build­ing their brand name, fight­ing for the rights to their name is worth the fight. Just ask Tay­lor Swift, Katy Per­ry or even Australia’s very own Kylie (no need for a last name). So, when should you file a trade mark appli­ca­tion? When you can’t get it out of your head!