China Trademarks: The Power of a Full Name

China TrademarksTwo recent court decisions from China have upheld the trademark rights of Donald Trump to the word “TRUMP” and Michael Jordan to the word “乔丹” (the Chinese transliteration of the name “Jordan”). These decisions have been seen as indications that famous people’s names now have more protection in China. Whether this is a trend or just an anomaly remains to be seen, but it’s worth noting that these long-running controversies have been over shortened, arguably ambiguous versions of celebrities’ names. When a disputed trademark registration is for a celebrity’s full name, the dispute is almost always resolved quickly, and in the celebrity’s favor.

Donald Trump, Michael Jordan, and other famous people have already succeeded in numerous such actions. For example, Dong Wei, the same trademark squatter whose “TRUMP” trademark was recently invalidated by Donald Trump, had also filed multiple trademark applications for “DONALD TRUMP” back in 2009. Once the applications proceeded to publication, Donald Trump – @realDonaldTrump, that is – opposed them and was successful the first time. These cases simply don’t get as much publicity because the outcome is not controversial.

China, like many civil law countries, has long given deference to people protecting their full names as trademarks. Formally, the protection is accorded under Article 32 of the Trademark Law, which holds that a “trademark application shall neither infringe upon another party’s prior existing rights, nor be an improper means to register a trademark that is already in use by another party and enjoys substantial influence.” The examination guidelines used by the Chinese Trademark Office (CTMO) and the Trademark Review and Adjudication Board (TRAB) further elaborate that prior existing rights include, among other things, name rights.

These guidelines sound great but in practice are applied with the same degree of subjectivity as everything else at the CTMO. It’s unclear how famous you have to be to be deemed to have “name rights” in China for a given field, or what sort of evidence is sufficient. However, it is clear that the standard of proof is much lower than what is necessary to show that an ordinary mark is well known.

One final point: in practice, a famous person can only invoke his or her name rights during a trademark opposition or invalidation proceeding. The CTMO won’t make these determinations during the examination phase. It’s up to every celebrity to police the use of his or her name in China.

This article was written by Matthew Dresden and published on China Law Blog. Original Post: http://www.chinalawblog.com/2016/12/china-trademarks-the-power-of-a-full-name.html      

View the original article here.

Matthew Dresden

Matthew focuses on international and China law, with a focus on technology and entertainment law and Chinese transactional and IP work. He represents a wide range of companies, from start-ups to NYSE-traded companies. His work has included matters for film studios, cable channels, film and television production companies, video game developers, magazines, restaurants, wineries, international design firms, product manufacturers, outsourcing companies, and computer hardware and software companies.

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