(By Luo Yanjie) In past posts, we have introduced you to the trademark squatting of Yi Jian Lian, which is the name of a well-known basketball player in China. Today, we are going to show you another similar decision:
On 20th November 2000, Suzhou Yisheng Fashion Co., Ltd. (the “Yisheng Company”) applied for the trademark “布兰妮Britney” in Class 25, covering clothing articles, such as shirts, suits, coats, overcoats, skirts, t-shirts, wind coats and down jackets. The Trademark Office of the State Administration of Industry and Commerce (the “Trademark Office”), after conducting a preliminary examination, published the application on its No. 807 Trademark Announcement. Britney Spears filed an opposition to the Trademark Office within the statutory period.
On 27th February of 2006, the Trademark Office heard its case file No. 00116, basing its decision on Articles 31 and 33 of the Trademark Law that the objected to trademark shall not be approved for registration, based primarily on the reasoning that any such trademark would or will cause damage to Britney Spears’ right to publicity and name.
On 16th March of 2006, Yisheng Company applied for a review of the decision in opposition, the main reason being that Yisheng had filed the application in its own name, and therefore fulfills the requirements for trademark rights granted by law. Thus, Yisheng claimed it was not guilty of any misconduct in claiming itself as being representative of Britney Spears, nor had it caused any interference with Britney’s ability to exercise her rights associated with the user of her name.
In 2009, the Board released its “Decision on the Opposition Review of No. 1713409 “布兰妮Britney” Trademark,” which is numbered 18096 (the “18096 adjudication”). According to the decision:
1. The several applications filed by Britney Spears for the trademark “BRITNEY SPEARS” were all later than the application date of the opposed trademark; therefore, we do not need to consider any obstacles regarding first rights.
2. The evidence provided by Britney Spears is not adequate to prove she was well-known among the relevant public in China through long term use and wide publication before the registration of the opposed trademark, and did not constitute a well-known trademark. Therefore, the opposed trademark was not be included in the situations regulated in Article 13 of the Trademark Law.
3. Britney Spears owns the rights to her name, but in order to determine whether any damage has been caused by the opposed trademark to Britney’s right to first use and publicity in her name, we shall evaluate whether the trademark is identical to the name and whether it could cause or has caused damage to her rights in her name. The evidence filed by Britney Spears was considered inadequate to prove that either her name “BRITNEY SPEARS” or its Chinese translated name “布兰妮·斯比尔斯” had been widely known among the relevant public in Mainland China before the registration of the opposed trademark, and that in the opinion of the Chinese public, the opposed trademark had been closely linked with the name of the applicant, and could be considered similar. For this reason, the evidence presented could not be adopted to confirm that Britney’s rights in her name had been damaged by the registration of the allegedly infringing trademark. Moreover, Britney Spears claims she made first use of the mark and had already gained a certain amount of notoriety and produced a certain amount of influence, but when examining the evidence available, it could not be determined that “布兰妮Britney” had been used as a mark on similar or the same type of products, and in the process cultivated influence. According to Articles 33 and 34, the Board decided to approve the application of the trademark in dispute.
In 2010, Britney Spears filed an administrative lawsuit expressing her dissatisfaction with the Court’s decision. In the first instance, the Beijing No.1 Intermediate People’s Court established the finding that any unlicensed registration of another’s name as a trademark which would or may cause damage to the owner’s name rights shall not be approved and will be revoked. Generally, when the public sees a certain mark, they will associate it with the name of that particular person, and take the mark or the provider of the marked product as having a relationship with the name owner, and thus it would cause the damage to one’s name rights. For this reason, to judge whether a trademark would harm one’s name rights, it shall first consider the reputation or popularity of the name owner, and shall be subject to the registration date of the trademark in dispute.
The current evidence submitted by Britney Spears is not adequate to prove “BRITNEY SPEARS” or “布兰尼·斯比尔斯”, her name’s Chinese translation, has been widely known among the public in Mainland China before the registration of the trademark in dispute, or to the awareness of the public, that “布兰妮” or “Britney” is similar to Britney Spears’ name. Based on this reasoning, the court of first instance decided to sustain the No. 18096 decision.
In tomorrow’s post, we will introduce you to the second instance of this case, and our comments on the decision by the judges.
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