We introduced you to the first instance of Britney Spears’ trademark administrative lawsuit yesterday, and today we will continue that discussion concerning the second instance and provide our comments on the case.
In February 2012, Britney Spears appealed to the Beijing High People’s Court citing her dissatisfaction with the first instance decision. The court of second instance decided that as a first right, the right of publicity and use of one’s name is protected by Trademark Law. Furthermore, any unlicensed registration of the trademark would cause damage to the right of name when the relevant public mistakes the origin of the product or service with the name owner, or when the relevant consuming public believes there is an association between the two parties. Therefore, to determine whether a disputed trademark will harm the right to use one’s name, one must first consider whether the owner of the name is well known or popular. Moreover, to determine whether the relevant right will be regarded as a first right, the relevant date is the registration date of the disputed trademark. The focus of this case is whether Britney Spears was widely known in Mainland China among the relevant consuming public before the registration date of the disputed trademark, in this instance November 20, 2000; also, whether the relevant consuming public would be confused as to the source or origin of “布兰妮” or “Britney” as being substantially similar to the name Britney Spears, and thus inferring a relationship between the two parties.
In viewing the evidence submitted by Britney Spears to the Board, most of them are prepared by her, or originate from somewhere outside of Mainland China, or were created and presented after the registration date of the disputed trademark. In addition, the evidence presented by Britney Spears could not demonstrate that the appellant’s name had become widely known among the public in Mainland China. Despite evidence submitted by Britney before the registration date of the trademark to show her reputation in the region, such evidence had not been filed during the process of the Board’s adjudication, and in further consideration of its weak ability to be considered concrete proof, it is neither adequate to prove that Britney Spears was well known among the relevant public in Mainland China before the registration of the disputed trademark, nor has it been shown that the public has assumed a relationship between the two parties as a result of the trademark. Finally, the Court affirmed the decision of the first instance.
In this case, the Plaintiff advocated that “布兰妮Britney” could not be registered as a trademark for two reasons: 1) the mark constituted an infringement against the first right of using one’s name; and 2) the intentional squatting of a trademark which undoubtedly carried a certain degree of influence. The legal basis for these reasons includes both the first half and second half of Article 31 of the Trademark Law. But only the Trademark Office supported the Plaintiff’s claims, and in this case in the first and second instances, such claims were all denied. Based on the content of the decision, the legal basis for the court’s decision seems to flow from the following:
1. In order to constitute “squatting of a famous mark,” the Plaintiff used an identical or similar wording of “布兰妮Britney” as a trademark before the registration of “布兰妮Britney”, and thereafter cultivated influence and gained secondary meaning. But as stated in the decision, although the plaintiff is a globally known singer and star, she has never registered her name as a trademark in China, nor has she sold or promoted marked products, even once. Therefore, the Court’s decision to refuse the Plaintiff’s claim is reasonable.
2. As to the infringement against the Plaintiff’s name right, due to the fact that the name right is not an exclusive right, and would only be considered an infringement if the trademark matched the name of the plaintiff. According to the Standards of Trademark Examination:
“To determine whether a trademark would damage anothers’ name right, one shall consider the popularity of the name among the relevant public.”
Despite the fact that the Plaintiff has a global reputation, based on the Court’s decision, the Judge believed the Plaintiff did not submit adequate proof. In the meantime, similar to the case of Jordan vs Qiaodan, the trademark “布兰妮Britney” is not the full name of Britney Spears, and Britney is a common family name in the United States. In sum, all of these facts weakened and diluted any alleged relationship between the trademark “布兰妮Britney” and the Plaintiff herself.
3. Actually, this case is really quite similar to the previously mentioned case of Yi Jianlian, which is also a case of a party allegedly free-riding on the popularity of a well-known name. The reason why the two cases may have different results is due to a variety of elements, like “易建联” the person’s full name which was being squatted, whereas “布莱尼” is simply a common given name and part of a name; and furthermore, Yi is a well regarded celebrity in China whose reputation extends to the whole of the country, while on the other hand, Britney is not as well known among the general consuming public as Yi Jianlian. And yet, the right of trademark is a right restricted among regions. After all, the difference between the two cases mainly arises out of the difference of the degree of demonstration of the evidence, but as to the law applied, we can see a slight difference.
In closing, in looking at this case and previous cases, no matter whether it is the Board or the Court, they both hold a conservative attitude toward the name right and first rights, and moreover they tend to put a higher demand on the demonstration of evidence and submission of proof by the plaintiff. On this subject, such decisions have increased the difficulty of foreign people and entities to protect their rights in China, and will also bring more challenges to those attorneys acting in the trademark service for them.