China: Fame Trumps Third-Party Registrations Of BRUCE LEE In Chinese And NICOL KIDMAN

A. BRUCE LEE in Chinese - "Negative Social Influence" Grounds Rejection of Third-Party Application

Gao Xing Zhong Zi No. 1641 Administrative Judgment (Beijing High Court, August 29, 2014)

While the late Bruce Lee's martial arts skills and appearances in action films are legendary, some fans may not know that he adopted the Chinese screen name 李小龍, which means "Little Dragon Lee." In fact, there are dozens of Chinese trademark applications and registrations for this Chinese-character mark in the name of Bruce Lee Enterprises, LLC, which owns the exclusive rights to the use of Bruce Lee's name, image, and likeness.

In 2004, an individual named Chaoqin Zhang filed a Chinese trademark application for 李小龍 covering automobiles and motorcycles in Class 12. In China, there is no rule against registration of a personal name, and an individual whose name is the subject of an application need not give his or her permission for the name to be registered. Hence, Mr. Zhang's application was approved for registration and published. Shannon Emery Lee, Mr. Lee's daughter, and Bruce Lee Enterprises, LLC opposed. In 2010, the Chinese Trademark Office ("CTMO") rejected the opposition, and the opposers appealed to the Trademark Review and Adjudication Board ("TRAB"). In 2012, the TRAB reversed the CTMO's decision and ordered that the application be refused. The TRAB's decision was based on the reputation evidence submitted by the opposers. The TRAB noted that film performances enjoy high visibility and influence, and that consumers would mistakenly believe that the applied-for mark was authorized by Mr. Lee or designated for use on genuine Bruce Lee merchandise, resulting in "a negative social influence." Apparently, the reputation evidence was not submitted at the CTMO level, and this omission could have contributed to the initial unfavorable decision.

The applicant appealed the TRAB decision to the Beijing No. 1 Intermediate Court, but the appeal failed. The court agreed that the average consumer would mistakenly associate the mark with the late martial arts master and actor, causing "a negative social influence." On further appeal to the Beijing Higher People's Court, the highest court in China, the applicant argued that because Mr. Lee has no particular association with the goods at issue (automobiles and motorcycles), registration of 李小龍 in Class 12 would not cause "a negative social influence." At trial, however, the court recognized Mr. Lee's achievements and notoriety, and noted that while 李小龍 is a relatively common name in China, the average consumer could still associate the applied-for mark with the late martial artist and actor, given Mr. Lee's wide influence. The court reasoned that if the 李小龍 mark were permitted to be registered in China, consumers would associate the automobiles and motorcycles promoted under the mark with Mr. Lee, when in fact the applicant was not authorized by Bruce Lee Enterprises, LLC or Mr. Lee's family to register or use the mark. The court rejected the appeal and upheld the TRAB's refusal to register.

In reaching its decision, the court explained that Article 10(h) of the China Trademark Law provides that a mark that is detrimental to socialist morals or that causes some other adverse influence—political, economic, cultural, religious, or otherwise—cannot be registered. This is what is meant by the "negative social influence" ground that is sometimes invoked in rejecting applications. The name of a political, religious, historical, or other public figure can constitute an asset that the public interest requires be protected from unauthorized trademark registration. The TRAB decision that the court considered and upheld was issued prior to the implementation of the revised China Trademark Law, but the old law and the new law do not differ on this issue.

We are advised that other applications for the same mark by the same applicant in Classes 6, 7, 9, 11, 29, 30, 33 and 34 were also finally rejected by the Higher People's Court on the same grounds. That the applicant filed for the same mark in so many classes may well have influenced the court's decision, as such a filing pattern is an indication of bad faith.

This decision helps to elucidate the "negative social influence" ground on which trademark applications can be refused in China, and demonstrates that reputation evidence is extremely important in attacking third-party applications, including applications for celebrity names.

B. Nicole Kidman Cancels Third-Party Registration for NICOL KIDMAN

[No official case caption] (TRAB November 5, 2014)

In 2006, a Chinese individual named Binfu Wu filed a Chinese trademark application for NICOL KIDMAN in English, covering umbrellas, handbags, and other Class 18 goods. The Chinese Trademark Office ("CTMO") granted the registration in 2009.

Nicole Kidman, the famous award-winning actress who did not own any prior Chinese trademark registrations for her name covering Class 18 or similar goods, subsequently filed an invalidation action before the Trademark Review and Adjudication Board ("TRAB"). Ms. Kidman argued that Mr. Wu's registration infringed her personal name rights and took advantage of her reputation in bad faith, thus violating Article 32 of the Revised China Trademark Law ("an application for trademark registration shall not infringe another person's prior rights"). Cancellation actions of this nature are filed initially before the TRAB rather than before the CTMO.

On November 5, 2014, the TRAB invalidated Mr. Wu's trademark registration, finding that Ms. Kidman had sufficiently proved her fame by submitting copies of movie stills starring Ms. Kidman, videos of ceremonies in which Ms. Kidman was awarded honors, including an Academy Award, and magazine advertisements, media interviews, news articles, and Chinese website reports featuring Ms. Kidman. Together, this extensive evidence proved to the TRAB's satisfaction that Ms. Kidman had achieved a high reputation in China prior to Mr. Wu's filing date. Further, the TRAB held that NICOL KIDMAN was likely to cause confusion among consumers, as the mark is nearly identical to Ms. Kidman's name. The TRAB did not discuss the relevance of the applied-for goods vis-à-vis Ms. Kidman's fame, although it did mention that Ms. Kidman is famous in the fashion industry as well as the film industry. This observation suggests that for a celebrity to enforce his or her personal name rights against third-party marks, it may be important to show that the name is known for, or at least associated with, the goods at issue, and not just famous in general. (We note, however, that the Beijing Higher People's Court did not appear to base its decision in the Bruce Lee case discussed above on such a condition.)

Previous TRAB criteria stated that for a case such as this one to succeed, the applied-for mark had to be identical to the prior right at issue, or had to be a recognized translation of the prior mark/name. However, in 2014, the Beijing Higher People's Court clarified that any sign capable of evoking the prior right or name at issue may be considered as that person's name and may be asserted against an objectionable application, with fame not being a prerequisite for protection of a natural person's name. Fame is certainly a factor, however, in determining whether the public would regard the name as being an identifier of the natural person at issue. Therefore, under current practice, the prior right and the challenged mark need not be identical, as long as the challenged mark can be deemed likely to cause confusion with the prior right/name at issue.

Mr. Wu had also filed an application for NICOLE KIDMAN (with the "E") in Class 25, which the TRAB—in the Class 18 case—deemed to be an indication of his bad faith and his intention to take advantage of Ms. Kidman's reputation. Mr. Wu's bad faith was a factor contributing to the TRAB's invalidation of his Class 18 application. Ms. Kidman successfully opposed the Class 25 application in a separate proceeding before the CTMO.

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