Recently, there have been further developments in the case in which the “piano prince” Li Yundi, former winner of the Chopin international piano competition, applied for the cancellation of a trademark registered by Shenzhen Futian Yundi Piano Shop, which the Trademark Review and Adjudication Board (TRAB) of the Trademark Office of the State Administration for Industry and Commerce has reheard.
In 2005, Li retained an intellectual property agency to oppose and have the piano shop’s Yundi trademark cancelled. In 2009, TRAB ruled that the grounds for the opposition were untenable and upheld the trademark.
Dissatisfied with the ruling, Li retained Run Ming Law Office to institute an administrative action in the First Intermediate People’s Court of Beijing. Following the trial at first instance and appeal, the Beijing Higher People’s Court ultimately quashed the original ruling of TRAB. Recently, TRAB reheard the case and ruled that the piano shop’s trademark harmed Li’s right to his name and should be cancelled.
Problems in the original ruling
TRAB’s original ruling was characterized by procedural problems, which became the principal reason for the court’s quashing of the original ruling. According to TRAB’s case file and the trademark registrant’s business registration file, the application for registration of the disputed trademark was filed in April 2002, the registrant was Shenzhen Futian Yundi Piano Shop in the nature of individual proprietorship, the owner was surnamed Le and the piano shop was deregistered in February 2004. In 2005, when Li applied for cancellation of the trademark, the relevant rights and obligations of the piano shop should have been assumed by its owner Le and TRAB should have named Le as the respondent.
However, the date of establishment indicated on the individual proprietorship business licence of Shenzhen Futian Yundi Piano Shop was October 2004 and the owner of the Yundi Piano Shop was Zhang, in other words, the Yundi Piano Shop in question was not the same. Zhang was not the trademark rights owner and had no standing in the case and TRAB had failed to carry out its obligation of reviewing the respondent’s qualifications to be a party. Given the procedural problems in TRAB’s original ruling, it should have been quashed. At trial, the First Intermediate People’s Court of Beijing supported the foregoing grounds and evidence and quashed TRAB’s ruling. At appeal, the Beijing Higher People’s Court upheld the judgment at first instance.
Substantive issue in the case
Whether the disputed trademark constituted infringement of Li’s right to his name was the substantive issue in the case. In a trademark administrative action, the court can only render a judgment ordering TRAB to issue a new ruling, and does not have the right to directly alter the ruling. Provided that it corrected the procedural issues, TRAB could render a result that was identical to the original ruling.
To succeed ultimately in cancelling the disputed trademark, it was necessary to provide a more convincing rationale. Through investigation, it was found that Le’s registration of the Yundi Piano Shop and his registration of Yundi as a trademark were not mere coincidence; the piano shop was registered and established in 2000, its original registered trade name being Futian Songtian Christmas Articles Business Office, with a scope of business including Christmas articles, gifts and toys. In July 2001, Le changed the trade name to Shenzhen Futian Yundi Piano Shop and added musical instruments to its scope of business. Immediately prior to this, in October 2000, Li won the prize at the Chopin international piano competition and his name was widely reported in Shenzhen where he had furthered his studies and resided. Due to the fact that the change in the trade name and scope of business of the Yundi Piano Store was made 10 months after Li won his prize and that, in April 2002, an application was made to the Trademark Office for the Yundi trademark for use on such products as pianos, which are closely related to piano performance which Li is engaged in, it is difficult to interpret such a series of actions as a coincidence. Le registered the trademark with the objective of taking advantage of Li’s reputation and this was done with subjective bad faith.
Using a portion of the name
Using a portion of another person’s name as a registered trademark will, under specific circumstances, infringe upon that person’s right to his/her name. The internal reference document of TRAB entitled Trademark Review Criteria specifies that a disputed trademark can be determined to infringe a person’s right to his/her name only if the disputed trademark is completely identical to the surname and given name of the person in question. In this case, the two characters “Yundi” in the disputed trademark constitute only the given name of Li.
In respect of this provision, we argued before the court and TRAB that in determining whether infringement of a person’s right to his/her name was constituted, consideration should be given to whether the use and registration of the disputed trademark would cause the public to associate it with the holder of the rights in the name. If it would, then, even though the registered trademark only used a portion of the person’s name, it nevertheless constituted infringement of such person’s right to his/her name.
Run Ming Law Office additionally suggested that the court and the Trademark Review and Adjudication Board consider the following factors:
- the subjective bad faith of the trademark registrant in registering the disputed trademark;
- “Yundi” was not a common character combination, was relatively distinctive, was easy to distinguish and was very likely to cause people to associate it with the person Li Yundi;
- the fame of the holder of the rights in the name; and
- the closeness of the connection between the goods for which the disputed trademark was designated and the holder of the rights in the name. Given that the Yundi Piano Shop not only dealt in such goods as pianos but also used the characters “Yundi” on its piano products, its intent to deceive was clearly apparent.
Comprehensively taking into consideration the foregoing, the Trademark Review and Adjudication Board ultimately went beyond the provisions of the Trademark Review Criteria and determined that the Yundi trademark harmed Li Yundi’s right to his name and should be cancelled.
Wang Yadong is the executive partner and Lu Lei is an attorney at law of Run Ming Law Office
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