As Shenzhen Futian Yundi Piano Store had registered the trademark Yundi and a related device for such goods as pianos, the famous pianist Li Yundi filed an application with the Trademark Review and Adjudication Board (TRAB) of the State Administration for Industry & Commerce for the cancellation of that trademark on the grounds that it infringed his right to his name.
The TRAB rejected Li Yundi’s request on grounds of a lack of evidence that the registration of the Yundi trademark was carried out in subjective bad faith. Li Yundi then instituted an administrative action in respect of the ruling in the Beijing First Intermediate People’s Court (the court of first instance).
Entity involved in the dispute
In the administrative action, the court ascertained that the owner of a shop called Yundi Piano Store, and the registrant of the trademark Yundi, was a certain Le Beili.
At the same time, the owner of another shop called Yundi Piano Store, who participated as the respondent in the trademark review and in the response in the trial at first instance, was Zhang Jianguo.
The individual proprietorships operated respectively by Le Beili and Zhang Jianguo both had the name Yundi Piano Store, however the two operators were different people, and the two Yundi Piano Stores were different legal entities and were entirely independent of each other.
Following the trial, the court of first instance held that the TRAB’s failure correctly to identify the entity, as it should have done, resulted in Zhang Jianguo participating in the trademark review procedure as the respondent, while the Yundi Piano Store operated by Le Beili, as the holder of the disputed trademark, did not
Accordingly, the court of first instance quashed the TRAB’s ruling on the disputed trademark on the grounds that the review procedure was not properly followed, and required the TRAB to make a new ruling. The Beijing Higher People’s Court, the court of appeal, upheld the judgment at first instance.
The substantive issue
In addition to discovering the confusion surrounding the identity of the two Yundi Piano Stores, the court of first instance also conducted hearings on the substantive issues of the case.
In October 2000, Li Yundi, then only 18 years of age, participated in the 14th Chopin international piano competition held in Warsaw, Poland. He won the gold medal. He was the youngest winner of this prize in 70 years, and the first Chinese to win. His winning of the prize was widely reported in the media, resulting in his name becoming a household name for a period of
At the time of its establishment, the trade name of the Yundi Piano Store operated by Le Beili was Futian Songtian Christmas Article Operations. Its scope of business was Christmas articles, gifts and toys. As such, it clearly had no connection with musical instruments or with Li Yundi. However, in July 2001, nine months after Li Yundi became famous, Le Beili changed the trade name to Futian Yundi Piano Store and added “musical instruments” to the scope of business of the company.
This change in the trade name and scope of business reveals Le Beili’s subjective intention to piggyback on the recognition of the name Li Yundi, and her bad faith.
The Yundi Piano Store operated by Le Beili then applied to register the Yundi trademark on 28 April 2002. “Yundi” is not a generic word, but rather a name that is distinctive and unique. Accordingly, it is obvious that the Yundi Piano Store was copying the name of Li Yundi. After Li Yundi became famous, the two characters that make up “Yundi”, as Li Yundi’s given name, undoubtedly created huge commercial value. Furthermore, given Li Yundi’s fame in the piano world, and the appearance of the Yundi trademark on musical instruments such as pianos, the public was bound to believe that it originated from the pianist Li Yundi and to link the trademark with his name. Even more obviously, the device portion of the disputed trademark, which comprised a piano keyboard and other musical instruments, suggested a close connection with pianos, and hence aimed at confusing and misleading the public.
It is clear that the foregoing acts were centred on the pianist Li Yundi, making the subjective bad faith of the party concerned extremely obvious. Furthermore, it is our understanding that the Yundi Piano Store is no longer in actual operation. Its wish nevertheless to retain the disputed trademark under such circumstances further illustrates that it hoped to make illegal gains by virtue of the disputed trademark.
Many members of the public already mistakenly believed that the Yundi Piano Store was owned by Li Yundi. Furthermore, with respect to the Beijing Yundi Piano Training Centre, with which Li Yundi had no connection whatsoever, some consumers asked Li Yundi why its fees were so high. These things not only caused serious harm to Li Yundi’s name, having an adverse effect on his reputation and his image.
How will it be resolved?
Instances of the registration of famous people’s names as trademarks have become quite common in recent years. In many cases, the TRAB has rejected or cancelled these trademarks on the grounds of infringement of the right to a person’s name. However, the trademark involved in this case is only Li Yundi’s given name (Yundi) and excludes his family name (Li).
Accordingly, when the TRAB renders its new ruling, it remains to be seen whether it will determine that the Yundi trademark infringes Li Yundi’s right to his name and, consequently, cancel the trademark. We are of the opinion that, taking into consideration the obvious subjective bad faith of the Yundi Piano Store at the time of registration of the disputed trademark, the TRAB should make a ruling to cancel the mark. We are awaiting the outcome of the case with bated breath.
Wang Yadong is executive partner, and Helen Wu is a lawyer, at Run Ming Law Office
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