(By Wang Haichuan) With Beijing Winter Olympic Games going on well, some people are planning to take advantage of successful athletes to gain enormous profits. On 14 February 2022 China National Intellectual Property Administration made the Announcement of Legally Fighting Malicious Rush Registration of Bing Dundun, Gu Ailing, Etc. Trademarks, arousing wide concerns. According to the announcement, a few businesses and individuals maliciously applied hot words related to the Winter Olympics such as the mascot for 2022 Beijing Winter Olympic and Paralympic Games and athletes’ names, illegally used reputation of the Olympics and the Olympic Committee and infringed others’ names and legal rights in order to gain illegal profits and therefore China National Intellectual Property Administration refused to approve 429 trademark registration applications, including No.41128524 “Bin Dundun” and No.62453532 “Gu Ailing” trademark applications and used its powers to announce the invalidity of 43 registered trademarks, including No.41126916 “Xue Dundun” and No.38770198 “Gu Ailing” trademarks. This article deals with reasons for and issues related to NIPA’s announcement of the invalidity of “Gu Ailing” trademark.
1. There are a large number of rush registration of trademarks with a famous person’s name.
According to search results shown on 14 February 2022, there were 30 trademark applications identical to the name of the athlete Gu Ailing, in addition to ones similar to her name such as Gu Ailing and Ailing Gu, including “Gu Ailing” trademark applications under different classes filed on 10 June 2019 by a natural individual Zhang, among which applications under classes 8, 9, 11, 12, 18, 20, 21, 22, 24, 35 and 41 were approved.
In addition to “Gu Ailing” trademarks, you can find a large number of trademark applications or registered trademarks similar or identical to famous people’s names on the website of Chinese trademarks. There were 22 trademark applications using the name of Tu Youyou, a Chinese winner of the Nobel prize and about 300 trademark applications using the name of the famous footballer Mbappé. Besides “Gu Ailing” trademarks, “Quan Hongchan”, “Su Bingtian”, “Xu Xin”, “Peter Gade”, “Ovtcharov”, etc. trademarks are included in the appendices of the NIPA Announcement, the Trademark Applications Not Approved and the Registered Trademarks Officially Declared as Invalid.
2. Rush trademark registrations infringe famous people’s names
It is commonly known that using a famous person’s name as a registered trademark is inappropriate. There is a ban on this act in Trademark Law, where Article 9 provides that registered trademarks should have distinct features so that they can be easily identified and cannot conflict with other person’s prior legal rights and Article 32 provides that trademark applications should not damage other person’s prior rights, which include citizens’ basic rights such as names.
In the “Jordan” trademark case between the US NBA star Jodan and China Jordan Sports Co., Ltd., the supreme court of China approved Jordan’s claims on the ground of his name. In No.11033155 “Tu Youyou” trademark invalidity announcement case between Tu Youyou and Suzhou Xia Glasses Ltd., the trademark review committee decided that No.11033155 “Tu Youyou” trademark was invalid on the ground of her name. Despite the fact that trademark documents related to the NIPA refusal or official invalidity announcement are not published, it is very likely that the legal basis may be Article 32 of Trademark Law.
Increasingly more attention is paid to rush trademark registrations with famous people’s names. The provision of “malicious trademark applications without the intention to use the trademark should not be approved” was added to the 2019 trademark law. On 15 March 2021 the National Intellectual Property Administration issued the Notice on Publishing the Action Plan for Fighting Malicious Rush Trademark Registrations, focusing on fighting “malicious rush registrations of names of well-known celebrities, works or roles”. All trademarks in the List of Trademarks Officially Declared as Invalid in the NIPA announcement were approved by NIPA after examination. In few cases NIPA would use its powers to declare a trademark with a famous person’s name as invalid. The announcement reflects change in the severity of law enforcement by NIPA.
3. Not all trademarks with other people’s names are banned by law.
The identity card of a person from Shandong called Zhi Fubao (the same as Alipay in Chinese) was spread widely on the internet. If the identity card is real, can “Zhi Fubao” demand Alibaba and Ant Group stop using “Alipay” trademark on the ground of his name? If yes, “Zhang Xiaoquan Scissors”, “Zhou Dafu Jewellery” and “Zhang Liang Spicy Hot Pot” would not exist. Actually, “Zhi Fubao” cannot demand a ban on using “Alipay” trademark. A big difference between “Zhi Fubao” and “Gu Ailing” is that the former is not but the latter is well-known. According to the Trademark Review and Examination Guidelines, a natural person who has “prior rights” in their name under Article 32 of Trademark Law should meet the following criteria: (1) The person should be well-known and steadily connected with the name; (2) the trademark registration could damage the name; and (3) the trademark is registered without the name owner’s approval. Academically, if you like your neighbor’s name Zhang Sanfeng, you could apply for a “Zhang Sanfeng” trademark.
4. Questionable points in NIPA decision
First, when should the individual be well-known? If the neighbour Zhang Shanfeng becomes famous nationwide over a night 10 years after his name was registered as a trademark, could he demand the registered trademark be declared as invalid on the ground of his name? This is questionable. In logic “prior rights” claimed by the name owner mean rights existing before the trademark application. Take the “MUJI” trademark case for example. In No.1561046 “MUJI” trademark case between Ryohin Keikaku Co.,Ltd. and the trademark review committee of the State Administration for Industry and Commerce and Beijing Cotton Field Textile Product Ltd., Ryohin Keikaku Co.,Ltd., the “MUJI/无印良品” brand holder lost because they could not prove “MUJI” was an influential trademark that had been used for Class 24 products in the Chinese mainland before the date of the trademark application in dispute.
Therefore, the individual should be well-known at the time of the trademark of application. From this aspect, NIPA officially declaring the “Gu Ailing” trademarks filed and approved on 10 June 2019 as invalid seems a mistake. Apparently, NIPA could not cancel the trademark application filed by Zhang in 2019 on the ground of the popularity of Gu Ailing as Winter Olympic gold medal winner. She caught the public attention in 2021. We have news about her participation in lower-level competitions in 2018 and 2019 when she was 15 and 16. Her popularity at that time was as apparent as now. If Zhang does not accept the NIPA decision and brings an action, if Gu Ailing does not appear in court, NIPA might be difficult to prove how well-known she was on 10 June 2019. In addition, her absence in the proceedings involving her personal rights is not correct. Therefore, in this case it is more advisable that Gu Ailing should apply for the invalidity of the trademarks by herself.
In sum, we should protect famous people’s rights and fight “misuse of famous people’s names” in trademark applications. In cases that only involve personal rights and do not involve public interests, I would advise the person with such rights to take active action.
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