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.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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