It is common to see the names of other people, particularly of celebrities, being registered as trademarks owing to the facts that such people attract more social attention than ordinary people. In addition to the attribute of personality right, their names also have the attribute of property right, which can attract consumers for trademark registrant and bring about abundant commercial return and economic benefits. Some may transfer the pre-registered trademark at high price to the owner of name right and acquire illegitimate benefits. As for the cases in which trademark registrant embezzle or counterfeit the name of another person and register it as trademark to get illegitimate benefits, the owner of the name right or the interested party can inhibit such behavior by claiming the name right in trademark opposition or invalidation. With a few concrete cases, this paper mainly illustrates the application of name right in trademark opposition or invalidation. 

In addition, in case that the trademark is composed of the names of public figures in the areas of politics, religion and history and the infringing act will cause negative influence on social public interests in related to politics, economy, culture, religion and nationality, and public order, it is necessary to take into consideration that such act not only impairs the name right of other people, but also violates the regulations of Item 7 and 8 of Clause 1, Article 10 of the Trademark Act of the People’s Republic of China. Nevertheless, such condition is not included in the discussion of this paper. 

According to the regulation of Article 99 of the General Principles of the Civil Law, “Citizens shall enjoy the right of personal name and shall be entitled to determine, use or change their personal names in accordance with relevant provision. Interference with, usurpation of and false representation of personal names shall be prohibited.” The first half part of Article 32 of the Trademark Law stipulates that “An application for trademark registration shall not prejudice any pre-existing right of others.” In terms of the Trademark Examination and Trial Standard, the pre-existing right mentioned above refers to the rights , except for trademark right, have been entitled before the trademark registration application date, including trade name right, copyright, appearance design patent right, name right, portrait right and other legitimate pre-existing rights which shall be protected. Therefore, the name right shall be identified as the “pre-existing right” according to the regulation of Article 32 of the Trademark Law.

The disputed trademark which utilized the name of other person to apply for registration and may prejudice the name right of such person shall not be approved for registration or shall be made invalidation announcement. The applicable elements include the following aspects:

(1) The disputed trademark points to the owner of the name right in the cognition of relevant public;

(2) The registration of the disputed trademark may prejudice the name right of others.

The application elements mentioned above are discussed below in sequence with relevant cases.

(I) The disputed trademark points to the owner of the name right in the cognition of relevant public

In terms of the Trademark Examination and Trail Standard, the name of a person includes the autonym, pseudonym, stage name, alias and so on. According to the regulation of Article 20 of the Legal Interpretation for Several Issues Related to Trial of Trademark Authorization and Ownership Affirmation Administrative Case 〔2017〕No.2 issued by the Supreme People’s Court: in case that the party claims name right with his/her pseudonym, stage name, translated name or other specific names with certain level of popularity, and the name is stably corresponded to such natural person and is utilized by relevant public to refer to the natural person, it shall be supported by the People’s Court.

The regulations mentioned above indicate that the protection object of name right is not limited to the autonym. All the relevant names which have certain level of popularity and have been stably corresponded to specific natural person and utilized by relevant public to refer to such natural person can be protected.

In the well-known “Jordan Case”, the Supreme Court believed that the application of Trademark Law in related to the statement that “the application for trademark registration shall not prejudice any pre-existing right of others” involves in the right conflict of pre-existing right and trademark registration right. When solving the conflict of pre-existing name right and registered trademark right, it is necessary to identify the protection standard of pre-existing name right reasonably and balance the interests of the owner of pre-existing name right and the owner of registered trademark right. It is not appropriate to determine the disputed trademark prejudices the name right of relevant natural person because that such trademark uses or contains the name of the natural person known by some part of the public or temporarily uses such name, or to put forward rigorous standard for the protection of the name right claimed by relevant natural person based on the premise that the “name” claimed by the natural person shall be “exclusively” corresponded to the such person. In terms of the regulation of Clause 1, Article 99 of the General Principles of the Civil Law, natural person shall enjoy the right of personal name and shall be entitled to determine, use or change their personal names. However, the owner of the name right shall not prohibit other people from “determining” to have the same name legally in good faith. Considering that people may have the same names, it is impossible to establish an exclusive correspondence relationship between the name and the natural person. Besides, in addition to the autonym, natural person is entitled to have stage name, pseudonym, translated name or other names. According to historical tradition, the ancients may have courtesy name and pseudonym. Under certain circumstances, relevant public are familiar with other names (such as the style name and pseudonym) except the autonym of natural person and get used to use such names to refer to the natural person. Other names may be more popular than the autonym. In case that “exclusive” correspondence is identified as the premise for claiming name right, the name right of people who have the same name with others or have other names in addition to the autonym cannot be protected irrespective of their popularity or the awareness condition of relevant public. Therefore, when the specific name claimed by the natural person is stably corresponded to such person, his/her name right shall be protected in terms of law even though the correspondence relationship is not “exclusive”. Based on the discussion mentioned above, the Supreme Court affirmed that the registration of trademark “Jordon” violated the name right of Michael Jordan because that according to relevant investigation, relevant public corresponded the Chinese character “Jordan” to Michael Jordan, and the disputed trademark might mislead relevant public to believe that Michael Jordan possibly authorized the trademark of Jordan or was the founder of the brand. On the other hand, in the trademark case of the spelling “qiaodan” and “qiaodan graphic combination”, the Supreme Court didn’t affirm such trademark violated the name right of Michael Jordan, because that current facts and evidence failed to prove relevant public established stable correspondence relationship between “qiaodan” and Michael Jordan, so the latter was not entitled with pre-existing name right.

Coincidentally, there was another similar case, namely the “Bolt” review of opposition. In this case, the applicant applied for registering the trademark “Bolt” to Class 28 “body-training apparatus; rehabilitation apparatus; wrist developer; chest developer; body-building apparatus” commodities. The well-known Jamaican Sprinter Usain St. Leo Bolt applied for review of opposition based on his pre-existing name right. Trademark Review and Adjudication Board indicted that, “according to review and investigation, the applicant is a well-known Jamaican athlete who has maintained several world records in the area of man sprint. In 2004, he got the 200m race champion in the Community Games held in Bermuda. He also acquired several medals in Athens Olympic Games and Osaka World Championships in Athletics. In 2008 Beijing Olympic Games, he got the champion of 100m and 200m man sprints and broke world records. As an Olympic champion, his name “Bolt” had been widely known in the world far before the disputed trademark’s application date. Considering that relevant public in China usually regard the family name of a foreigner as his/her appellation, it can be identify that in the cognition of relevant public in China, the exclusive correspondence relationship between “Bolt” and the applicant has been established and this shall be known by the opposed party. In case that the disputed trademark is used on body-training and fitness apparatus, it may mislead relevant public in China to believe that such goods is from the applicant or certain party related to the applicant, which may prejudice the legal right of the applicant to make commercial development for his name and prejudice his name right.”

In the “Bolt” case mentioned above, though “Bolt” is the family name of Usain St. Leo Bolt, Chinese people get used to call the family name of foreigners instead of the first name. For example, the famous swimmer “Michael Fred Phelps” is called as “Phelps”, football star “David Robert Joseph Beckham” is known as “Beckham”. Such examples indicate that Chinese people are more familiar with the family name of foreigners. According to the evidentiary material such as reports on major newspapers and periodicals submitted by the applicant, relevant public get used to call the applicant “Bolt” rather than the full name. Therefore, it can be affirmed that “Bolt” has formed a stable correspondence relationship with the applicant.

The cases mentioned above indicate that foreigners enjoy name right for some of the Chinese names translated from their foreign names. In “Jordan” case for example, the Supreme Court indicated that “owing to language and cultural differences and the convenience for calling, relevant public in China get used to call some part of the Chinese names of foreigners translated from their foreigner names to refer to them instead of the complete Chinese names. Some people even have no idea or are nor familiar with their complete Chinese names. Therefore, when determining whether a foreigner can claim name right for some part of the Chinese name translated from his/her foreigner name, it is necessary to consider the appellation customs of our relevant public for foreigners.”       For that reason, even though “Jordan” is only the family name of “Michael Jordan”, the Supreme Court supported “Michael Jordan” to enjoy the name right for his family name.

In conclusion, when applying the element of “the disputed trademark points to the owner of name right in the recognition of relevant public”, the detailed manifestation pattern of specific name is not the key issue, instead, the most important thing is to guarantee that the specific name conforms to the following conditions: the specific name has certain level of popularity in China and relevant public use this name to refer to the natural person. In addition, the specific name has formed stable correspondence relationship with such natural person.

(II) The registration of the disputed trademark may prejudice the name right of others

According to the Article 20 of the Legal Interpretation for Several Issues Related to Trial of Trademark Authorization and Ownership Affirmation Administrative Case 〔2017〕No.2 issued by the Supreme People’s Court: in case that the party involved claims that the disputed trademark prejudiced its name right and relevant public believe that the trademark logotype refers to such natural person and may tend to consider that goods with such trademark is probably permitted by or specifically related to such natural person, the People’s Court shall affirm this trademark prejudice the name right of the natural person.

In terms of the Trademark Examination and Trial Standard，the affirmation of name right prejudice related to disputed trademark shall be based on the premise that relevant public tend to refer the goods which registers to use the disputed trademark to the owner of the name right or establish correspondence relationship between the goods mentioned above and the owner of the name right. It includes both the condition that the disputed trademark shares the identical name with another person and the condition that the disputed trademark reflects the major name features of another person even though the trademark is different from the name of such person in character composition, while in the cognition of relevant public, it refers to the owner of the name right. In case that the trademark registered for application utilized the name of public figure without prior permission, or was fully aware the trademark was the name of another person but still aimed at prejudicing the interests of such person, it shall be affirmed as a prejudice to the name right of the person.

According to the regulations mentioned above, it is necessary to take the following two points into consideration when determining whether the registration of disputed trademark may prejudice the name right of another person: first, the disputed trademark is identical with the specific name of another person with name right, or reflects the major name features of another person and is referred to the owner of the name right in the cognition of relevant public; second, whether relevant public tend to consider the goods with the disputed trademark has been permitted by or specifically related to the natural person.

1. The disputed trademark has the identical name with another person with name right, or reflects the major name features of another person, which points to the owner of such name right in the cognition of relevant public

In the case of “JIMMY CHOO COUTURE trademark invalidation”, other people applied to register the trademark “                                               ”for Class 25 “belt” goods.  The J.Choo Co., Ltd. which had interests relation with the well-known shoes designer Mr. Jimmy Choo applied for invalidation against this trademark. As one of the founders of the brand Jimmy Choo, Mr. Jimmy Choo assigned the property right and interest related to his name Jimmy Choo to the J. Choo Co., Ltd., therefore, the latter submitted invalidation application against this trademark as the interested party based on its name right for Jimmy Choo. This further proved the fact put forward at the beginning of this paper, that celebrities attract more social attention then ordinary people, and their name possess the attribute of property right in addition to the intrinsic personality right attribute. Besides, this part of property right and interests can be assigned to other people, who can register trademark for publicity and utilization. The Trademark Review and Adjudication Board held that “according to the evidence submitted by the applicant, it can be proved that Mr. Jimmy Choo has assigned all rights and obligations related to his name to the applicant. And the applicant has interest relation with the name right of “Jimmy Choo”. The on-line search results, brand introduction and reports of various media submitted by the applicant can prove that “Jimmy Choo” has been a well-known shoes designer with relatively high popularity in costume fashion field far before the disputed trademark’s application date. The opposed party should know the name of “Jimmy Choo” and it cannot be regarded as a coincidence that the opposed party registered the disputed trademark containing the name of “Jimmy Choo” for belt goods. Therefore, the registration of disputed trademark may mislead relevant public to believe that it has specific relation with well-known shoes designer “Jimmy Choo” and prejudice his name right. Such behavior has violated the regulations of Article 32 of the Trademark Law, “an application for trademark registration shall not prejudice any pre-existing right of others.”

In the case mentioned above, though the disputed trademark was different from the specific name of “Jimmy Choo” in character composition, it contained the complete name. In addition, the word “couture” implies costume design (designer) or clothing shop. Considering that Mr. Jimmy Choo is a well-known shoes designer, the disputed trademark might mislead relevant public to believe that such trademark pointed to the owner of the name right.

Besides, in the case of “Bear Grylls”, “BG Bear Grylls” and “BG” series trademark opposition and invalidation announcement, other people applied to register the name of a well-known wilderness adventurer “Bear Grylls” (often called as “Bear” by relevant public in China) as trademarks. For example, “Bear Grylls”, “BG Bear Grylls” and “BG” are registered for several classes of goods and service items. As the owner of name right Bear Grylls founded the Bear Grylls Investment Co., Ltd. and brands of “Bear Grylls”, “BG Bear Grylls” and “BG”, Bear Grylls Investment Co., Ltd. submitted opposition and invalidation application as interested party based on its name right for Bear Grylls.  In the trademark opposition cases of “Bear Grylls” and “BG Bear Grylls”, the Trademark Office affirmed that the disputed trademarks “Bear Grylls” and “BG Bear Grylls” prejudiced the name right of Bear Grylls considering that Mr. Bear Grylls has been a famous adventurer known by relevant public in China. Because that the disputed trademark was identical with the name of Bear Grylls or contained the complete name, the application for registration without prior authorization constituted an infringement on the name right of Bear Grylls. While in the invalidation case related to “BG” trademark, the Trademark Review and Adjudication Board didn’t affirm it prejudiced the name right of Bear Grylls. It is because that though the trademark was composed of two designed English letters which were identical with the name abbreviation of the famous adventurer and applicant Bear Grylls, the documented evidence was insufficient to prove that the manifestation pattern of disputed trademark had formed correspondence relationship with Bear Grylls and known by the public.

In the case mentioned above, the disputed trademark “Bear Grylls” is identical with the specific name with name right “ Bear Grylls” and the disputed trademark “BG Bear Grylls”, though different from the specific name with name right “Bear Grylls” in character composition, contained the complete name, therefore, they might mislead relevant public to believe that such disputed trademarks pointed to the owner of the name right.

However, though the disputed trademark “BG” was identical with the name abbreviation of Bear Grylls, the applicant couldn’t prove the popularity of the abbreviation in China or relevant public utilized the specific name to refer to such natural person and a stable correspondence relationship with the natural person had been established. Therefore, it couldn’t been affirmed that Bear Grylls enjoyed name right for this specific name.

2. Whether relevant public tend to believe that the goods with disputed trademark is probably permitted by or specifically related to the natural person

The author thinks that the following three aspects shall be considered when determining whether relevant public tend to believe the goods with disputed trademark is probably permitted by or specifically related to the natural person.

Firstly, the name of the disputed trademark shall be identical with the specific name of another person with name right or reflect his/her major name features which point to the owner of the name right in the cognition of relevant public, and this element shall be regarded as a premise. In case that the disputed trademark is only similar to the specific name of another person with name right or doesn’t reflect his/her major name features, relevant public unlikely believe the goods with this disputed trademark has been permitted by or specifically related to the natural person. In real life, a natural person is unlikely to miswrite his/her name; even when a person’s name is miswritten by someone else, he/she will ask to correct it. Therefore, in case that the name of disputed trademark is only similar to, not identical with, the name of the natural person, or doesn’t reflect the major name features, relevant public may tend to believe that the disputed trademark tries to get illegitimate benefits from the reputation of a famous brand rather than has been permitted or represented by the natural person. If the trademark is composed of the name of another person, particularly of a public figure, without his/her prior permission, it may mislead the public in the source of goods or service.

Secondly, it is necessary to consider the popularity of specific name of the natural person with name right in relevant public. In case that the specific name of the natural person with name right has a long-term and broad popularity in relevant public of China, and the public is familiar with the specific name and usually use it to refer to the natural person. That means a stable correspondence relationship between them has been established, and relevant public may tend to believe that the goods with the specific name has been permitted by or is specifically related to the natural person.

Thirdly, the correlation between the disputed trademark and the goods it registered for, and the personality or skilled filed of the natural person with name right for specific name should be considered. Each brand has its brand DNA, which is both the intangible epitome of the operation principles and enterprise culture and the soul of the brand. It reflects the value of the brand and its products and determines the unique consumer group of the brand. In the same way, a spokesperson has different personality, which reflects various humanistic spirits and individual values. The conformance of the personality of a spokesperson and the features of a brand is the key factor for the optimization of brand communication effects. Only by coordinating and matching these two features can the unique connotation of brand be illustrated and the brand image be improved. Otherwise, in case that the two kinds of features are inharmonious or even opposite, the brand image will be diluted and even damaged, breaking the hearts of brand loyalist. Therefore, if the disputed trademark and the designated goods it registered for is closely related to the personality or skilled field of the natural person with name right for specific name, relevant public may tend to believe the goods with this specific name has been permitted or represented by the natural person. However, the determination standard for correlation shall not be too rigorous. It is only one of the factors which shall be taken into consideration rather than an essential condition. And if the specific name of the natural person with name right is widely known by relevant public, I think it is not necessary to consider the correlation degree between the goods it registered for and the personality or skilled filed of the natural person with name right. It is necessary to consider how to balance the interests of the owner of the pre-existing name right and the owner of the trademark and make detailed analysis in each case.

For example, in the case of “Jordan” mentioned above, Jordan is a famous basketball player widely known by the public in China and a star in sports field. Therefore, the disputed trademark “Jordan” used for goods in sports field, such as “sports apparatus, roller skates” and so on, might mislead relevant public to believe the “sports apparatus, roller skates” with “Jordan” trademark could be represented, permitted or founded by Jordan.

Similarly, in the case of “Jimmy Choo” mentioned above, as Jimmy Choo is a well-known shoes designer and celebrity in fashion field, the registration of disputed trademark containing the name of “Jimmy Choo” for goods “belt”, which also belongs to the fashion field, might mislead relevant public to believe the goods “belt” with the trademark of “Jimmy Choo” could probably be designed, permitted or represented by designer Jimmy Choo.

In all, utilizing the name of the founder or soul designer as the brand name is a common way to establish a brand. In such cases, though massive brand utilization and publicity may indirectly improve the popularity of others’ names in relevant public, the obligee or interested party may as well take use of various media to introduce the source and founder of the brand consciously and actively, so as to properly prepare relevant evidence for future brand protection and effectively assist the owner of the name right or interested party to carry out more powerful and broader brand protection in trademark opposition and invalidation by fully and effectively utilizing his/her name right.

References:

[1] Supreme Court Administrative Judgement No. 27 issued by the Supreme People’s Court (2016)

[2] No.6227274 Ruling of “Bolt” Trademark Review of Opposition – Trademark Review [2013] No. 104792.

[3] No. 9478487 “Jimmy Choo Couture and device” Trademark Invalidation Ruling - Trademark Review [2016] No. 0000080262.

[4] No. 13696743 The Rejection of Registration Application of “BG Bear Grylls” Trademark - （2017）Trademark Opposition No. 0000006311.

     [5] No. 12979687 “BG and Graphic Combination” Trademark Invalidation Ruling – Trademark Review [2018] No. 0000003803.