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Wednesday, 13 August 2014

The Empire Strikes Back: UK passport agency grounds wannabe Skywalker

The Star Wars sequels have generated a lot of enthusiasm throughout the world. Laura Matthews, a great fan of the series, decided to adopt Skywalker as her middle name, and did so by deed poll. A change of name by this method involves a document where the person states that he or she is abandoning the original name, thereafter taking up a specified new one, requesting to be addressed by the new name in future. The document does not require any other formalities in order for it to take effect, but the name change only fully takes place after a person has applied to use the new name for significant documents such as bank accounts and medical records.

Laura Matthews had no trouble with her new name since changing it in 2008. However, when she recently applied to renew her passport, the UK Passport Office said they could not accept her application because ‘Skywalker’, her new middle name, was a registered trade mark and could form part of her passport signature. A spokesperson for the Passport Office said that: “We have a duty to ensure the reputation of the UK passport is not called into question or disrepute.”

The proposition that a person cannot have a middle name which is a registered trade mark is hard to follow since so many names are already registered as trade marks. There are many famous registered trade marks throughout the world which are also people’s names, such as Cartier, Swarovski or Heinz. The problem with classic first names and last names is that, even if a brand is shown to have acquired distinctiveness in regard to a particular product and is eventually registered, its use as the name of a person would be more difficult to oppose.

‘Skywalker’ on the other hand, is a made-up name for the purposes of the Star Wars series. Its use as a middle name by a fan of the series poses a different problem. The name is being used because of its connection with the series and, although this is a speculative point, if the name had not been created, it is unlikely that someone would decide to adopt Skywalker as a new name at all, middle or otherwise. Regardless, in Laura Matthews’ case, she is using the name for personal purposes and not for the commercialisation of a product bearing the registered trade mark word. This is not a trade mark infringement case, as Ms Matthews does not appear to be using the name in the course of trade. Moreover, even if the public at large were aware of her middle-name use, there would not be any likelihood of confusion such that the public would confuse Laura Matthews’ middle name and that of the Star Wars character.

Laura Matthews said that she did not understand the Passport Office’s position since her name-change on all her other documents had not posed her any problem. She has however been offered the possibility to submit her application with her old signature (after her name change, she had changed it to L. Skywalker) but to keep her full name on her passport.


Anonymous said...

This is another classic example of the great need to educate the public (and government officials) about IP rights.

The way this case was reported in the media did not enlighten its readers - e.g. not explaining that the non-commercial use of the name is a defence.

Anthony Google Burberry Smith said...

Thanks so much for this blogpost. Now I know what to expect when I apply for my UK passport.

Anonymous said...

Or the fact that Lucasfilm do not own a registration of SKYWALKER

Coca Cola Samsung said...

Yes, but imagine the chaos if the Passport Office got closed down by Customs. And imagine all the infringement Skywalker would cause if we allowed her to travel around the world.

Anonymous said...

True, Lucasfilm doesn't own the CTM 'SKYWALKER'. However, they do own UK/EU word combinations: 'LUKE SKYWALKER', 'SHMI SKYWALKER', and 'ANAKIN SKYWALKER'.

I guess the Office often receive these sorts of applications and one has to keep a check to prevent ridicule/abuse.

If this individual (who is also said to be a fan) wanted to try something on with Skywalker, she would've failed woefully with own name defence - that's if the most interested party bother to take her on.

She can always consider showcasing her allegiance by using it as a middle name (or even as a combination of whatever) on social media. Again, I doubt if the most interested party would be bothered..

Anonymous said...

Is HM Passport Office going to be integrating trademark database searches in their examination of passport applications going forward?”

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