Can Persona Triumph Prior Use In Trademark Law? Dissecting Captain Cool Conundrum

A nickname once applied to other cricketers now enjoys trademark protection under Class 41 (sports training, providing sports training facilities, sports coaching services). The Trademark Registry recently granted registration of “Captain Cool”^[1] to M.S. Dhoni, a public-coined name affectionately associated with him due to his calm demeanour under pressure. Notably, the mark was already registered by Prabha Skill Sports Private. Ltd, raising questions about the legitimacy and exclusivity of Dhoni's subsequent registration. Dhoni's application initially claimed “proposed to be used” but was later amended to “prior use since 2008”. This shift, without supporting evidence, contradicts the claim of acquired distinctiveness.

The Registry justified its decision by noting that “Captain Cool” is closely and uniquely linked to Dhoni's persona, has acquired a distinct secondary meaning in the context of sporting and entertainment services, and is supported by media coverage, public use, and consumer recognition. This reasoning, however, poses a fundamental question of whether proof of prior use should be relegated to the back seat when a celebrity's persona drives trademark protection?

Why “Captain Cool” Fails the Trademark Test?

Section 2(zb) of the Trade Marks Act, 1999^[2], provides that a trademark must be able to distinguish one person's goods or services from another's. Moreover, section 18(1)^[3] of the Act adds that registration can be claimed either on the basis of genuine “prior use” in commerce or on a “proposed to be used” basis.

Furthermore, complementing section 18, Rule 25 of the Trade Marks Rules, 2017^[4], provides that any claim of actual use must be supported by concrete evidence, such as advertising records, invoices, sales data of the goods and services, to which the mark is used. However, in the instant case, despite Dhoni's failure to provide such evidence, the registration was granted solely on the basis of media reports; proof of Dhoni's association with the phrase “Captain Cool”, with no connection to trade in goods and services under Class 41.

Prior to the enactment of this Act, section 47 of the Trade and Merchandise Marks Act, 1958^[5], provided a defensive registration mechanism, permitting trademark registration for well-known marks in the absence of actual use. However, this provision was omitted in the Act of 1999, making clear the legislative intent to prohibit monopolising common terms without any intention to use. However, the present case appears to repeat the mischief, the Act of 1999 intended to remove.

Moreover, such registrations are also discouraged by the Indian Jurisprudence. For instance, in the case of N. Ranga Rao & Sons v. Shree Balaji Associates^[6], the Madras High Court held that 'Unless the word is an invented word coined by a person out of his own effort and thought process, he cannot prevent and exclude others from using the generic and common word by holding it within his folds by not putting it to use for a long time from the date of registration of the said trademark”.

Additionally, Section 9(1)(a)^[7] of the Act prohibits the registration of descriptive or generic marks unless “acquired distinctiveness” is proven. Recently, in the Marico^[8] case, the Delhi High Court clarified that acquired distinctiveness is said to arise when a descriptive term is used solely by one person over a long, undisturbed period, without others attempting to use it, such that it comes to be uniquely associated with that person.

In the instant case, “Captain Cool” fails to satisfy this test owing to the non-exclusive association of this term with Dhoni. In the past, the term has been associated with other cricketers as well, such as Sri Lankan captain Arjuna Ranatunga, for his unflappable calm demeanour under pressure. Therefore, granting trade mark protection seems to bypass the mandate of the law.

The limits of Trademark Protection: How far is too Far?

In sports, nicknames often overshadow the athlete's real name in public recognition. MS Dhoni's “Captain Cool” is one such nickname, familiar to cricket fans, yet legally precarious under the Trade Marks Act, 1999. While unauthorised use of a celebrity's persona by a third person can indeed siphon off hard-earned goodwill, trademark registration is not always the most appropriate shield.

The trademark law provides specific safeguards against such unauthorised use. For instance, section 14^[9] of the Act prohibits registration of marks that falsely suggest a link with a living person or someone deceased within the last twenty years, without consent. Additionally, section 9(1)^[10] excludes common or generic expressions unless they have acquired distinctiveness through long, exclusive use. Despite these safeguards, even if a nickname evades the Registry's scrutiny, the Act provides restorative mechanisms under Section 21^[11] and 57^[12], which not only enables opposition after advertisement, but also allows cancellation of the registration for contravention.

In the instant case, no opposition was filed by Dhoni against the registration of the “Captain Cool” mark by Prabha Skill Sports Pvt. Ltd. It was only through rectification, contending bad faith registration, that the cited mark was challenged. It's worth noting that this conduct demonstrates mala fide intent to monopolise a common phrase.

Why Intellectual Property Rights Fall Short?: The Case for Personality Rights

Personality rights, defined as the commercial exploitation of identifiable elements of a person's identity, such as image, name, or likeness, without consent. Indian courts have recognised these rights, whether or not those elements function as trademarks. The difficulty lies in the lack of statutory recognition for personality rights, leading the Courts to provide remedies through Intellectual Property Rights such as trademark, passing off, and copyright principles. However, these protections often fall short of covering the wide range of personality rights.

In the instant case, reliance was placed by Dhoni on the case of Arun Jaitley v. Network Solutions Pvt. Ltd.,^[13] where personality rights were protected in a manner resembling well-known trademark protection. However, it is worth noting that well-known trademark protection fails to be the panacea for protecting far broader personality rights.

Personality rights safeguard the commercialisation of a person's attributes, including name, image, voice, and likeness, without the need to prove the usage of the mark in relation to goods and services, unlike trademark law. Moreover, while trademarks protect only select attributes and depend on the likelihood of consumer confusion, personality rights can cover a wide array of personal identity features, offering a more comprehensive shield against unauthorised exploitation.

Similarly, passing off is no panacea either. It requires the fulfilment of three essentials. Firstly, goodwill or reputation; secondly, a misrepresentation likely to mislead, and thirdly, resulting damage. However, this mechanism is also not free from inadequacy. In other words, it fails to address the cases where, instead of misrepresentation, the wrong lies in misappropriation owing to the unauthorised use, without loss of reputation.

The absence of legislative recognition for personality rights leads the courts to extend the protection via passing off, as observed in the case of DM Entertainment v. Baby Gift House^[14], wherein the court extended passing off actions to deal with cases where personality rights infringement was claimed.

Applying U.S. Principles to the 'Captain Cool' Debate

In the United States, personality rights are governed by state-specific laws rather than a uniform federal statute. A significant case of Hirsch v. S.C. Johnson & Son, Inc. (Wisconsin, 1979)^[15], offers compelling insights into how nicknames and personal identities are protected under commercial law.

In this case, a legendary football player, Elroy Hirsch, popularly known as “Crazylegs,” filed a trademark infringement suit after the moniker was used without authorisation for a shaving gel product. Initially, the trial court dismissed his claim, reasoning that “Crazylegs” served only to identify Hirsch himself, not his association with goods and services, and thus failed to meet the traditional standards for trademark infringement.

However, on appeal, the Wisconsin Supreme Court established a crucial point. It held that while 'Crazylegs' failed to meet trademark standards, the unauthorised use of Hirsch's identity constituted both trade name protection under §§ 716–717 of the Restatement (Second) of Torts and a violation of his inherent personality rights. The trade name doctrine, functionally parallel to India's passing-off remedy, was invoked because the defendant's use of 'Crazylegs' on shaving gel created a likelihood of confusion, falsely implying Hirsch's sponsorship or association with the product. Notably, the court went further by recognising a violation of personality rights, ruling that even absent consumer confusion, the commercial misappropriation of a public figure's identity constitutes unjust enrichment. This layered approach ensured protection against both marketplace deception via trade name and the dignitary injury of unauthorised exploitation via personality rights.

The Hirsch decision turned on the critical fact that 'Crazylegs' had become exclusively associated with the plaintiff through his celebrated football career as the nickname functioned as a distinctive identifier of his persona, not merely as a generic phrase. This exclusivity strengthened both the trade name claim by establishing the likelihood of confusion and the personality rights claim by proving commercial appropriation of identity.

The present case presents a different scenario, where 'Captain Cool,' while associated with M.S. Dhoni, lacks the same exclusivity as 'Crazylegs' due to its generic nature and prior use for other public figures. Therefore, the trademark claim definitely fails. Furthermore, personality rights infringement would have made sense if distinguishable attributes of Dhoni's persona, such as his likeness, signature style, or other unique identifiers, were used along with the phrase, “captain cool”.

This will help maintain a crucial balance by preventing the unauthorised commercial use of a celebrity's persona without privatising words used in the public domain.

Way Forward

The "Captain Cool" saga is a troubling instance where celebrity persona overshadows statutory safeguards in trademark law. By granting exclusive rights to a public-coined nickname without concrete evidence of prior commercial use, the Registry risks privatising common language and setting a dangerous precedent. If mere media association suffices for trademark protection, where do we draw the line? Will every catchphrase, fan chant, or viral hashtag soon become a celebrity's private monopoly?

The law demands distinctiveness and genuine use, not just fame. Yet, in elevating Dhoni's persona above these requirements, the decision undermines the very reforms meant to prevent trademark squatting and anti-competitive fencing.

Perhaps it's time India legislates personality rights instead of stretching trademark law beyond its intent. Until then, must we accept that every cheer in a stadium, every headline pun, is just one bad ruling away from becoming corporate IP?

Author is a 3rd year law student at Rajiv Gandhi National University of Law, Patiala. Views Are Personal. 

1. LiveLaw News Network, “MS Dhoni's Application To Trademark 'Captain Cool' Accepted,” (LiveLaw,1 July 2025)<https://www-livelaw-in.demo.remotlog.com/top-stories/ms-dhonis-application-to-trademark-captain-cool-accepted-296102> accessed 21 August 2025. ↑

2. Trade Marks Act 1999, s 2(zb). ↑

3. Trade Marks Act 1999, s 18(1). ↑

4. Trade Marks Rules 2017, r 25. ↑

5. Trade and Merchandise Marks Act 1958, s 47. ↑

6. N. Ranga Rao & Sons v. Shree Balaji Associates, C.S. No. 310 of 2014, Madras High Court, decided on 12th July 2024. ↑

7. Trade Marks Act 1999, s 9(1)(a). ↑

8. Marico Ltd. v. Agro Tech Foods Ltd, [2022] DHC 004808. ↑

9. Trade Marks Act, 1999, s. 14. ↑

10. Trade Marks Act 1999, s 9(1). ↑

11. Trade Marks Act 1999, s 21. ↑

12. Trade Marks Act 1999, s 57. ↑

13. Arun Jaitley v. Network Solutions Pvt. Ltd., CS(OS) 1745/2009, Delhi High Court, decided on 15th September 2009. ↑

14. D.M. Entertainment (P) Ltd. v. Baby Gift House, CS(OS) 893/2002, Delhi High Court, decided on 29th April 2010. ↑

15. Hirsch v S C Johnson & Son Inc, 280 N.W.2d 129 (1979). ↑