Malicious Registration of “渣渣辉” Trademark! Zhang Jiahui VS Game Operator of Legend of Blue Moon

As media reported, Zhang Jiahui, a film star in Hong Kong recently applied for the “渣渣辉” trademark for all items under Class 45. I searched the database of the trademark office and found that Jiangxi Tanwan Information Technology Co., Ltd. (“Jiangxi Tanwan”), the operator of the game “Legend of Blue Moon” had applied for the same trademark before.

All the “渣渣辉” trademark applications filed by Zhang Jiahui would be rejected by the trademark office because of the prior applications. I noticed a big news that Zhang Jiahui and Jiangxi Tanwan were scrambling for “渣渣辉”, a valuable popular brand. Now let’s discuss how the two sides use laws to obtain the trademark.

1.Current status of the “渣渣辉” trademark

The search results showed that the “渣渣辉” trademark application was filed by his trademark agent on 30 May 2019, while Jiangxi Tanwan started to apply for “渣渣辉” trademarks and similar trademarks “”渣渣灰” in April 2018 and had filed altogether over ninety applications, some of which had been approved.

According to the priority rule included in the Trademark Law, if Jiangxi Tanwan applied for registering the name “渣渣辉” earlier, the application filed by Zhang Jiahui would be rejected. His lawyer must have done research before his application. They must have been well prepared for the “Zha Zha Hui” trademark application with a knowledge of the prior application of Jiangxi Tanwan. I think based on my experience that they will take legal actions for the trademark.

Another interesting thing is that the “渣渣辉” and “渣渣灰” trademark applications connected with games under Class 9 and Class 41 were all rejected and failed the re-examination and may be in the administrative proceedings.

The reason for this is that the “渣渣辉” and “渣渣灰” trademarks might be considered as similar to the registered trademark “渣渣” that had existed. Aside from games, the brand is valuable when being used for other derivative items, for example, clothes, shoes, hats, food and other online services.

2.Origin of “渣渣辉” and basis of claims of the two sides

What is the basis of claims of each side for “渣渣辉” trademark? Let’s begin with the origin of “渣渣辉”. According to Baidu, “Zha Zha Hui” is a buzzword referring to Zhang Jiahui, an actor in Hong Kong who speaks Chinese mandarin not well and pronounces “Zhang Jiahui” as “Zha Zha Hui” in the ad for the game Legend of Blue Moon operated by Jiangxi Tanwan and is laughed at by other people for it.

As mentioned in the above paragraph, claims of Zhang Jiahui for the trademark right in “渣渣辉” is based on his name and nickname and claims of Jiangxi Tanwan is based on the game Legend of Blue Moon. “渣渣辉” first appeared in the ad for the game. In my personal opinion, both the sides have reasons for claiming the trademark application right in “渣渣辉”. The basis of claims of Zhang Jiahui for the trademark is more solid, but Jiangxi Tanwan is not hopeless.

3.What were claims of Zhang Jiahui?

His lawyer might claim that “渣渣辉” is a brand deriving from the name of Zhang Jiahui and shows some of his personal qualities as evidenced by the fact that it comes from a wrong pronunciation of his name in Chinese mandarin. The prior application of Jiangxi Tanwan was a malicious application and use of a celebrity’s name as a trademark has adverse effect. They might request the trademark reviewing committee of the national intellectual property office decide the registered trademarks “渣渣辉” and “渣渣辉” are invalid.

The legal basis of the invalidity application is as follows.

First, as for adverse effect of the trademarks, “渣渣辉” and “渣渣灰” are pronounced in a way similar to the name of the famous actor Zhang Jiahui and the trademarks registered without his permission could cause the public to misunderstand that there is a link between products and services marked with “渣渣辉” and “渣渣灰” and Zhang Jiahui. Almost all malicious applications for registering names of Jin Yong and Gu Long as trademarks were rejected by the trademark office for this reason, which can also be a reason for applying for the invalidity of all the approved “渣渣辉” and “渣渣灰” trademark applications of Jiangxi Tanwan.

Second, the trademarks infringe the right to commercialize the name of Zhang Jiahui. “渣渣辉” and “渣渣灰” are nicknames of Zhang Jiahui deriving from an inaccurate pronunciation of the Chinese words Zhang Jiahui, which are symbols connected with the identity of Zhang Jiahui and enable the relevant public to associate the nicknames with Zhang Jiahui. As he has no disagreement over this, the trademarks can be seen as being used by himself.

The “渣渣辉” and “渣渣灰 trademarks of Jiangxi Tanwan damage the prior rights of Zhang Jiahui. The nicknames of Zhang Jiahui, if registered as trademarks, would be very likely to confuse the public in a way that makes them misunderstand that products and services with the “渣渣辉” and “渣渣灰” trademarks are licensed by or connected with Zhang Jiahui.

For this reason there is a link between prior rights and related products or services. Therefore, not all invalidity applications can be filed for this reason. The application for the invalidity of the registered “渣渣辉” and “渣渣灰” trademarks of Jiangxi Tanwan connected with the internet and games can be filed for this reason.

4.What were claims of Jiangxi Tanwan?

To keep the registered trademarks valid Jiangxi Tanwan should cut off the relationship between the names of “渣渣辉” and “渣渣灰” and Zhang Jiahui, prove that the names derived from and are part of the game Legend of Blue Moon and claim that the right to commercialize the names should be owned by the game operator Jiangxi Tanwan.

First, if Jiangx Tanwan gives admissible proof that Zhang Jiahu has a strong dislike of the name “渣渣辉” as he said to Chen Luyu in an interview that he had terminated cooperation in the ad because he was annoyed at the sight of “渣渣辉”, it will be very helpful to prove that Zhang Jiahui doesn’t accept the nickname “渣渣辉”. According to the Trademark Law, a person cannot claim that their name right in a nickname is infringed unless they accept and have actively or passively used the nickname. If they don’t accept the nickname, there will be no use or infringement of it.

Second, Jiangxi Tanwan should give proof of the link between the brand “渣渣辉” and the game Legend of Blue Moon. If they has proof that they have used the name to operate the game and the game players have an association between “渣渣辉” and the game, not the representative of the game, they will gain a great advantage in the legal battle for the brand. To my knowledge it is not easy to obtain such proof, at least more difficult than Zhang Jiahui obtaining proof of the link between “Zha Zha Hui” and his name right.

Finally, in the “渣渣辉” trademark case Jiangxi Tanwan acted more promptly and has applied for and registered a large number of trademarks and on the other side Zhang Jiahui has the advantage of having more solid legal basis and could get back the “渣渣辉” trademark by filing a new trademark application and a trademark invalidity application against Jiangxi Tanwan at the same time. Both the sides have advantages. A legal battle for the brand is bound to take place.

 

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You Yunting

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youyunting@debund.com

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