China: How To Protect The Title Of Your Band In China?

Last Updated: 14 June 2017
Article by Mule Li

Suppose you hosted a famous U.S. New Age band called "Two-ß", consisting of five female artists. One is an Asian DJ and the others are Latinos playing the guitar, the violin, the piano and the Chinese lute, respectively. After one successful performance in China, you conclude that the Chinese music market holds significant potential business opportunities for New Age music and so decide to focus more on the Chinese market. Then,you have to consider a question,How do you protect the name of your band in China?

I. File Your Application for Exclusive Trademark Rights in China.

It is obviously unsafe for you to keep using the name "Two-ß " in China without trademark registration. In contrast with the commercial use principle for trademarks in the United States and Canada, the Chinese trademark system requires that any party (whether a natural person, a legal person or another organization) must acquire the formal exclusive right to use a trademark in production and operation activities via filing an application for trademark registration with the Trademark Office1. Hence, before you decide to perform in China or sell products using the band's name, you will need to file a trademark application for the name of your band. At the very least, you should check the status of existing registered trademarks so that you can confirm whether or not your band's name has already been registered by someone else in China.

II. Decide on a Chinese Name for Your Band and Register it as a Trademark

Since the 1980s, as English has become an important subject of study in Chinese classrooms, more and more Chinese are able to speak English every year. Nevertheless, we prefer to use local Chinese names to refer to our beloved bands or pop stars. You might consider a Chinese name useless to you, and you might never use it yourself. Unfortunately, however, it is likely that there is someone out there who would just love to file a trademark registration application in your band's name to use on their product or service, since they will undoubtedly know that your band's local fans will always be keen to purchase anything that seems to be related to your band.

Chinese trademark law does authorize an interested party to enforce "pre-existing rights" against a registered trademark owner. Natural persons, for example, can protect their own name (such as in the "Yao Ming"2 trademark revocation case, the "Michael Jackson"3 trademark revocation case and the "Bao Luo Mai Ka Te Ni (Paul McCartney)4" trademark revocation case),results have not been encouraging when it comes to protecting the Chinese version of the last name of a natural person when it has been registered as a trademark by an opportunistic merchant. In the "Qiao Dan (Michael Jordan)5" trademark case, the judges did not even hold that the Chinese version of the basketball legend's last name was infringed by a trademark that used it to sell merchandise under Class 25 (clothing). A band name, which lacks the personal rights associated with the name of an individual, is even more difficult to protect under the "prior rights" doctrine than the name of a natural person. This reality should serve as an eye-opening lesson in the importance of protecting the Chinese version of the name of your band.

III. How to Select a Chinese Language Name for Your Band

1. Determine the name of the band via transliteration or literal translation.

Some band names are based on the pronunciation of the English translated into Chinese, such as "Pi Tou Shi (Beatles)", while others are formulated based on the meaning of the English translated into Chinese "La Mei(Spice Girls)". This should make it easier for Chinese people to remember the name of your band.

2. Don't forget the Chinese nickname of your band.

If your band had a Chinese nickname before it began operating in China (such as Jia Ke Chong for the Beatles or Qiang Hua for Guns N' Roses (originally registered as Qiang Pao Yu Mei Gui), you should not forget to register the nickname(s) in addition to the band's formal name.

3. Avoid conflict with prior trademarks.

You can ask your Chinese trademark attorney to research related trademarks before you finalize your band's Chinese name, to ensure that the name is unique and unlikely to give rise to a risk of confusion with other trademarks6.

4. Remember that certain names cannot be registered as trademarks.

You may not register a Chinese name trademark that bears any of the following characteristics7:

  1. names that are identical or similar to the name of a government, flag, emblem or other identifier of the People's Republic of China or another country;
  2. marks that lack distinctive characteristics;
  3. names that are identical or similar to an official sign or inspection seal that indicates control and/or guarantee' or
  4. names that are discriminatory against any race of people, or that are deemed detrimental to socialist morals or customs or otherwise represent an unhealthy influence on society.

Footnotes

1. (Trademark Law of the People's Republic of China)(Effective Date:03/01/1983,3rd amended in 2013) Article 4 Any that needs to acquire the exclusive right to use a trademark in the production and operation activities shall Provisions of the Law regarding goods marks apply to service marks.

2. "Yao Ming VS. 'YAOMING ERA'",Beijing No.1 Intermediate People's Court (2010)Yi Zhong Zhi Xing Chu Zi NO.1870 Administrative Judgment.

3. Wang Huilin:" 注册摇滚歌星"MICHAEL JACKSON"商标 企业被判违法(The enterprise can't register a trademark as "Michael Jackson") http://news.xinhuanet.com/overseas/2015-11/09/c_128407953.htm

4. "Paul McCartney VS. '保罗麦卡尼Bao Luo Mai Ka Te Ni(PUAL MC CARTNEY)'", Beijing Higher Peoples Court of the People's Republic of China(2013)Gao Xing Zhong Zi NO.59 Administrative Judgment.

5. "Michael Jordan VS. '小乔丹XIAOQIAODAN '",Beijing Higher Peoples Court of the People's Republic of China(2015)Gao Xing(Zhi)Zhong Zi NO.1577 Administrative Judgment.

6. Mark A. Fox, Protecting Your Band Name, Entertainment Law Review , Ent.L.R. 2015,26(8),277-280

7. (Trademark Law of the People's Republic of China)(Effective Date:03/01/1983,3rd amended in 2013)Article 10 The following signs shall not be used as trademarks: (1) Those identical with or similar to the State name, national flag, national emblem, national anthem, military flag, army emblem, army songs or medals of the People's Republic of China; and those identical with the names or emblems of Central State organs, the names of the specific locations that are the domiciles of the Central State organs, or the names or designs of landmark buildings; (2) Those identical with or similar to the State names, national flags, national emblems or military flags of foreign countries, except with the consent of the governments of the countries involved; (3) Those identical with or similar to the names, flags or emblems of international inter-governmental organizations, except with the consent of the organizations concerned or except where the likelihood of misleading the public is slim; (4) Those identical or similar to official signs or hallmarks indicating control or warranty, except as otherwise authorized; (5) Those identical or similar to the name or sign or mark representing "Red Cross" or "Red Crescent"; (6) Those with a nature of national discrimination; (7) Those that are deceptive and are likely to cause public confusion in terms of the quality, other characteristics or place of production of relevant goods; (8) Those detrimental to socialist morality and custom or having other ill effects.

Article 11 The following signs shall not be registered as trademarks: (1) Those consisting only of generic names, devices, or model numbers of the goods concerned; (2) Those consisting only of a direct representation of the quality, primary raw materials, functions, intended purposes, weight, quantity, or other characteristics of the goods concerned; (3) Those otherwise lacking distinctive features.

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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