Article 32 of the Trademark Law specifies that “an application for the registration of a trademark may not prejudice any pre-existing right of others…” Prior rights include the right to one’s name, which is provided in the Trademark Examination and Adjudication Standards, the Beijing High People’s Court Guidelines for the Trial of Trademark Right Granting and Verification Cases, and the Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving the Grant and Verification of Trademark Rights.
In practice, there is no dispute where the right to one’s name falls within the prior rights specified in article 32, and where both administrative examination and judicial adjudication accord it protection as such. But under the overall environment of cracking down on malicious registrations in recent years, the relevant determination criteria in a conflict between a trademark and a personal name have been trending towards greater relaxation, thereby achieving the protection of the holders of rights in their names to the greatest extent possible.
On 26 April 2007, Jordan Sports applied for the “乔丹 and device” trademark No. 6020578, for goods in class 25, and was granted registration. On 31 October 2012, Michael Jordan (MJ) submitted a request to the China National Intellectual Property Administration (CNIPA) for invalidation of this trademark. Following a trial at first instance, at appeal and a retrial, he finally prevailed on 4 March 2020, after eight years.
One focus of controversy in this case is whether the registration of the disputed trademark infringed Jordan’s prior right to his name.
The CNIPA, and the courts of first and second instance, held that the Chinese name “乔丹” (the Chinese transliteration of the name “Jordan”) was a common English surname, and it was difficult to determine that there was an intrinsic correspondence between this name and Michael Jordan, and also that the relevant evidence was insufficient to show that “乔丹” expressly referred to “Michael Jordan”, or referred to “Michael Jordan” or “迈克尔 “乔丹” (Jordan’s full name transliterated into Chinese) in a determinative fashion.
In contrast, the Supreme People’s Court (SPC) held that “乔丹” has a high degree of popularity in China, that the relevant public was familiar with and commonly used “乔丹” to refer to Jordan, and that a stable correspondence between the two had arisen. Accordingly, Jordan had the rights in the name “乔丹”.
Prior to the application date for the disputed trademark in the case, Jordan had always enjoyed a high degree of popularity in China, the scope of such popularity not solely confined to basketball. Despite this, the Jordan company still used “乔丹” to apply for registration of the disputed trademark, likely to result in the relevant public mistakenly believing that there existed a specific connection, such as an endorsement, licence, etc., between the goods bearing the disputed trademark and Jordan, thereby infringing his prior right to his name.
The SPC thought that a natural person lawfully enjoys the right with his or her name, pursuant to the General Provisions of the Civil Code (article 99) and the Tort Liability Law (article 2). It pointed out that registering without a licence the name in which another has prior rights as a trademark is likely to result in the relevant public mistakenly believing that there exists a specific connection, such as an endorsement, licence, etc., between the goods or services bearing the trademark in dispute and the natural person. Accordingly, as such, the registration of such a trademark should be deemed as infringing another’s prior right to his or her name, and as violating the Trademark Law (article 32).
In this case, the SPC held that when a natural person requests protection of his or her rights in a specific name, such a name is required to satisfy the following conditions: (1) the name has a certain degree of popularity in China, and is familiar to the relevant public; (2) the relevant public uses the name to refer to the natural person; and (3) a stable correspondence has been established between the name and the natural person.
From these points, we can see that the protection of the name of a natural person is no longer solely limited to a situation where the disputed trademark and the name are completely identical. Secondly, when claiming protection of the right in a specific name, protection of the right in such a name may be secured according to law so long as a stable correspondence has been established between the specific name and the natural person, even if the degree of such correspondence is not “unique” or consistent “one-to-one”.
As the authors have mentioned, from the judgment it can be seen that, first, the registration of a disputed trademark need not cause the natural person to incur actual and objective harm. If the potential exists, a finding of infringement may be made. Second, the protection of the right to one’s name not only involves the protection of the dignity of a natural person, but also involves the protection of a natural person’s name, particularly the economic interests inherent in the name of a well-known personality.
The protection of the property nature of, and economic interests in, a name is no longer simply an issue of the personality protection of the right in one’s name, but has transformed into an issue of the protection of the rights and interests in the merchandising of the name. Although China still does not have legal provisions on the protection of the rights and interests in the merchandising of names, the protection of such property interests on the basis of the right to one’s name demonstrates fairness.
Model for protection
This case not only provides a model for the protection of the right to one’s name, as claimed by natural persons, and establishes clear criteria and the conditions for their application, but it should also give relevant rights holders greater confidence in protecting their own rights. At present, when a disputed trademark comes into conflict with a natural person’s name, the inflexible determination criteria no longer apply, thereby not only according protection to the personality interests in the right to one’s name, but also protection to the economic interests inherent in the right to one’s name.
Dorris Hu is an attorney-at-law and trademark attorney, and Shi Yakai is an attorney-at-law and partner at Sanyou Intellectual Property Agency
Sanyou Intellectual Property Agency
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