By King & Wood Mallesons’ Trademark Group
Registering a foreign celebrity’s name as a trademark is an occurrence frequently seen in China. From Leonardo da Vinci and Air Jordan in the past to the rising NBA star Jeremy Lin, it has become a shortcut for companies to quickly occupy the market by using the foreign celebrities’ names as their trademarks.
The name right refers to the right of a citizen to decide, use and alternate the name by himself and to require others to respect his name. Article 31 of the PRC Trademark Law (the "Trademark Law") provides that protection on prior rights has covered protection on the name right. In addition, Article 10 of the Trademark Law provides that trademark registration should not be detrimental to social morals or customs, or have other harmful influences. These provisions also reflect the legislative intent to protect name rights. Specifically, the Trademark Examination Criteria provides that, without authorization, if registering another’s name as a trademark has caused or may cause damage to the name right of other, the mark shall be disapproved or cancelled from registration. The following conditions shall be met when applying under the above rule: a) the disputed mark is the same as the name of an individual; b) The registration of the disputed mark has caused or may cause damage to the name right of that individual. The names include legal names, pen names, and nick names. If using a name to register a mark may be detrimental to social morals or customs or cause other harmful influences, it shall be subject to the provisions under Article 10.
However, claims based on name right protection are not easily supported in China where a foreign celebrity’s name is used or registered as a mark for commercial purposes without authorization. Firstly, since the foreign names are made up of Latin letters, in order to be easily recognized by the Chinese public, the registrant would usually apply for the transliteration of the names when registering the foreign name as trademark. Thus, the applied trademark is different from the foreign name in form, making it difficult to prove that the two are identical. Secondly, not all of the names are unique. Where the foreign name is a commonly used name, the claim is less convincing if it is grounded on someone’s name rights only. Thirdly, it is not easy to collect sufficient evidence to prove the prior fame of the foreign name among the relevant public in China. It is difficult to decide whether the use of the mark may cause confusion among the public and thus other harmful influences thereby.
In the trademark dispute case concerning the trademark "BRITNEY 布兰妮" (BRITNEY in Chinese) in class 14, the Court held that the evidence submitted by the famous singer Britney was not sufficient to prove that her name had become well known in China when the mark was filed, and thus the mark had not impaired the prior name right of Britney. The Court maintained the registration of the disputed mark. (Contributed by Kathy Liu, Haiting Liu)
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