The CNIPA recently invalidated a copycat trademark for "CONSTANCE GUISSET" registered in China in class 20 on the basis of prior name rights.

Constance Guisset is a French contemporary designer well known in the world of lighting and furniture design. In 2019, a Shenzhen based company, which is mainly engaged in the business of lighting and furniture distribution, filed an application to register the trademark "CONSTANCE GUISSET" designated to furniture goods. After the application is published, Ms. Guisset filed an opposition action but failed. The trademark was approved for registration in 2021.

Ms. Guisset then initiated an invalidation proceeding, submitting evidence to prove that there is a stable relationship between the designer and her name which has gained a certain degree of reputation in the furniture and home furnishing design industry; she also emphasized the facts that the counter party know or should have known the designer's name "Constance Guisset" as it used to sell a lamp that clearly copied the design of Guisset and used her name in the product description.

In the invalidation decision, the CNIPA recognized the designer's prior name rights to the name "Constance Guisset" and deemed that the disputed trademark could mislead the public with regards to the source of goods. The registration of the disputed trademark, therefore, shall be invalidated based on the article 32 of the Trademark Law, i.e. the trademark application shall neither infringe upon another party's prior existing rights, nor be an improper means to register a trademark that is already in use by another party and enjoys substantial influence.

According to the CNIPA's 2021 Trademark Examination and Adjudication Guidelines, when a natural person's name has established a certain degree of reputation and a stable corresponding relationship with the person, and the registration of a disputed trademark is without the authorization of the name owner thus may damage the name right of him/her, a prior name right can be cited to challenge the disputed trademark. The protection scope of a prior name right shall be determined on a case-by-case basis and subject to the degree of reputation as well as the association between the designated goods/services and the domains where the name right owner is known.

Any trademark applicant that knowingly attempts to register someone's name in order to fr

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.