(By Luo Yanjie) The most common trademark squatting is to register celebrity names as trademarks in China. In following post, we will introduce a case regarding where the court rejected the rush-registered trademark via the use of late celebrity names. Bruce Lee, with his Chinese name 李小龍, was a late Hong Kong American martial artist, Hong Kong action film actor, martial instructor, filmmaker and the founder of Jeet Kune Do. The descendants of the late Bruce Lee set up a Bruce Lee Enterprise, LLC in the operation of related matters to the late Bruce Lee.
Introduction to the Case:
Plaintiff: Zhang Chaoqin
Defendant: Trademark Review and Adjudication Board (the “TRAB”)
Third Party: Shannon Emery Lee, Bruce Lee Enterprise, LLC (the “Bruce Lee Enterprise”)
Court of first Instance: Beijing No.1 Intermediate People’s Court
Court of second Instance: Beijing Higher People’s Court
On October 14th, Zhang Chaoqin filed an application of the “李小龍”(the “disputed trademark”) trademark numbered 4309490 under the Class 12 for automobiles and cycle cars. In the statuary period, Shannon Emery Lee and Bruce Lee Enterprise filed trademark opposition but the Trademark Office ruled out to the approval of the registration of the disputed trademark. Bruce Lee Enterprise filed an application for the review of the TRAB. On August 27th 2012, the TRAB decided to the disapproval of the disputed trademark, holding that the registration of the disputed trademark violated the Item 8, Paragraph 1, Article 10 of the Trademark Law.
Dissatisfied with the disapproval of the TRAB, Zhang Chaoqin brought the case to the court. At the trial of the case, the courts held that Bruce Lee, acting as a great master of martial arts, succeeded in acting many films and received a high level of famousness and influences in the field of martial arts and film acting. The disputed trademark was composed of Chinese characters 李小龍 and customers turning common attention may easily regard the disputed trademark as the name of late martial artist and actor Bruce Lee, thus led the public into thinking that the approved goods of the disputed trademark were from the Bruce Lee family or related right holders, and that the approved goods were considered to of certain association with Bruce Lee. This may create passive and negative impacts on public interests and order, taken as the Item 8, Paragraph 1, Article 10 of the Trademark Law stipulating that those detrimental to socialist morals or customs, or having other unhealthy influences shall not be used as trademarks. Therefore, the courts determined to uphold the TRAD’s ruling.
- Are the descendants of the late celebrity names entitled to file trademark opposition against other’s registration of celebrity names?
Firstly, the courts further defined the application scope of unhealthy influence as regulated in the Trademark Law, indicating that those registering the celebrity names may be fallen into the provision of Item 8, Paragraph 1, Article 10 in the Trademark Law, which shall not be used as trademarks.
It is noted that Bruce Lee has passed away. Under the circumstance, should others’ use of the late celebrity names obtain authorization from their descendants, or are their descendants entitled to prohibit others’ use of celebrity names? However, it is unclear in our laws and regulations. The solely reference is the provisions on right of reputation, stipulating that “the citizen shall have right to file lawsuits if his right of reputation is infringed upon; if the dead person’s right of reputation is infringed upon, his close relative may have right to file lawsuit, including spouse, parents, children, brothers and sisters, grandparents, grandsons and granddaughters.”
In this case, trademark right is a property right other than the right of reputation. However, indicative as the judgment is, the courts have already affirmed that their descendants have the rights to institute legal proceedings for the trademark rush-registration of the late celebrity names.
- Could a name same as celebrity name be registered as trademarks?
In this case, the rush registered Zhang Chaoqin has no relationship with the late Bruce Lee, so that his rush registration is to mislead and confuse the public. However, China has the most people, there are a lot names similar to the Chinese name of Bruce Lee. Suppose a same Chinese name of Bruce Lee tried to register the trademark 李小龍, could the descendant of the late Bruce Lee have the right to prohibit other’s use of Chinese name 李小龍? It is unclear in current laws and regulations. However, we tends to think that celebrities’ names and portraits are not the only ones registering trademarks but common person’s name could also register as trademarks. After a common person of the same Chinese name with Bruce Lee registered his name as trademarks, he must not mislead or confuse the public in the use of the said trademark. We are expected to turn up similar cases to establish the rules.