Asserting that her name was registered as a trademark in bad faith for clock-related products, Britney Spears, the internationally famous pop music diva, filed a lawsuit against the Trademark Review and Adjudication Board of the State Administration for Industry & Commerce of China and commanded for the repeal of its adjudication that granted the registration. Recently, Beijing No. 1 Intermediate Court refused the litigation filed by Britney in the first-instance trial.
Similar case could be observed when the registration of Lin Shuhao, a rising star and basketball player, attracted huge public attention.
Reports indicated that currently the registration of celebrities’ names as trademarks has become a phenomenon in the field of intellectual property that should not be neglected.
The Beginning of the Trend
Britney stated in the litigation that, she was an extremely reputed pop diva of the music industry today. “BRITNEY”, as her first name, was well known among Chinese consumers. Her full name “Britney Spears” had received registration in several categories in the United States and also trademark registration in several in China.
Britney argued that Shenzhen Wanfuda Trading Co., Ltd, aware of its transgression, deliberately applied for the registration of her name as a disputed trademark without the authorization of the plaintiff, made illegal profits using her reputation, and severely infringed her right to name. Moreover, Britney asserted that she had high reputation in the international music industry and “BRITNEY” had become, undoubtedly, a well-known trademark in the international entertainment and fashion industries. The registration and the use of the trademark in dispute would certainly cause confusion and misconception in the market, making the consumers assume that she was related to the products associated with the trademark in dispute. She, therefore, made a claim to the Court of the repeal of the registration adjudication made by the Trademark Review and Adjudication Board.
According to the investigation of the Court, Shen Wanfuda Company applied for the registration of the trademark in dispute “BRITNEY” in August 2001 and received approval on January 28th, 2004. It was designated to be used on clocks.
After the trial, the Court held that the evidence provided by Britney was not sufficient to prove that she was already well known among the Chinese public when Wanfuda applied for the registration of “BRITNEY” trademark. It was not covered by the protection of Well-Known Trademarks outlined Trademark Law of China and therefore the Court ruled against Britney’s litigation.
The reason why Britney Spears filed the litigation was that the trademark “BRITNEY” possessed enormous business value. According to reports, the average annual sale of Britney’s albums is 8.54 millions, and of her singles 60 millions. In total, 60 million singles and 87 million albums of hers were sold worldwide.
At the meantime, Lin Shuhao, the “Harvard Boy”, another world-famous Chinese NBA basketball star after Yao Ming, was also registered as a trademark by a sporting goods company in Wuxi, Jiangsu, due to its huge business value brought by the fame.
The name “Lin Shuhao” was appraised by Forbes magazine to worth about 100 million RMB. However, this business, which was founded in 2002 and mainly manufactured sporting supplies including basketballs, soccer balls and volleyballs, used only 4460 RMB to successfully register the trademark “Lin Shuhao”. As told by the owner of the business, Yu Minjie, it was by a coincidence that she discovered on TV an outstanding Chinese basketball player named Lin Shuhao. Judging from her experiences, she reckoned that Lin Shuhao would very likely become a future Chinese NBA star.
Based on the research on the website of the Trademark Office, the trademark “Jeremy S.H.L Lin Shuhao” has been applied for the registration on two categories, 25 and 28. Type 25 consists of mainly clothes, shoes, hats, etc, and type 28 consists of mainly sneakers, gaming consoles, toys, etc.. The valid period of its exclusive use is from August 7th 2011 to August 6th 2021.
Yu Minjie confessed that it was purely a business action, made out of prediction, to register the trademark “Lin Shuhao”, but not a commercial exploitation made in bad faith.
There is no strictly stated prohibition in laws
In fact, it’s not a new thing for celebrities’ names to be awkwardly displayed on trademarks. Once, when Xie Tingfeng was at the peak of his popularity, an anti-diarrheal that had the same pronunciation as Xie TingFeng, produced by a pharmaceutical in Anshun, Guizhou, suddenly entered the market. It was once the spotlight of the entertainment industry and stirred up public attention for once.
Apart from this, trademarks such as an illuminator named after Osama bin Laden, a toilet seat named after film director Wang Jiawei, and shirts named after actor Zhao Benshan that use celebrities’ names once also drew a lot of attention.
Up to now, the race of trademark registration has become a very promising and profitable industry in the eyes of many. Resources like names of celebrities that have high demands, undoubtedly become the first choice for registration.
According to insiders, driven by profit-making, professions such as “specialized trademark registrants” and “trademark broker” have appeared in the country. Registration race is moving to professionalized functioning and is catalyzing the profit-making industrial chain of registration – publicity – coercion for trading back or reselling.
From a purely legal standpoint, using celebrities’ names to register trademarks is not counted as infringement. The Trademark Law of our country has clarified the situations in which registration and use of trademark are not to be proved. However, there is no specific regulation on whether or not celebrities’ names can be registered as trademarks.
On the basis our current laws, it is almost impossible for famous people to avoid their names from being registered, unless they had registered their names in all categories of trademarks.
Objectively speaking, if a celebrity’s name is used for trademark registration, the public would immediately make a connection to the celebrity. Nonetheless, it is not fair to forbid others from registering the name as a trademark, simply because a celebrity has adopted the name, otherwise the principle of balance of rights will be violated. Everyone has their right to name, not to mention that many share the same names.
Due to the lack of clear definition for “celebrities”, it would actually be an infringement on the rights of the trademark registrants, if celebrities’ right to name were to be overly protected.
Legal specialists reckon that, from a legal perspective, a watershed does exist. In cases similar to Lin Shuhao’s, if he was not famous or known by many when the trademark was registered, the registration would be approved and legally protected. However, if the registration were made on type 25 and type 28 after Lin Shuhao became a celebrity, the action would constitute an infringement on his right to name.
Therefore, during the investigation processes of trademarks, the examiners hold the right of discretion on deciding the “popularity” of “celebrities”. Famous figures such Lin Shuhao might be popular to a certain degree, but his fame in China was only caused by the recent NBA matches. One should not strictly demand that examiners have to be aware of Lin Shuhao’s high reputation.
Registration of celebrities’ names as trademarks should be cogitated
The key motivation for the race of registration was, still, the temptation of enormous economic benefits.
The “Zhao Ben Shan” trademark, having the same pronunciation with the name of the famous comedian, Zhao Benshan, once successfully registered, was introduced to domestic clothing manufacturer with the price of 10 million RMB.
A planning agency in Beijing registered “Zhang Yimo”, a similarly pronounced name with the famous director Zhang Yimou, as trademark of cosmetics, and priced the assignment at 8 million RMB.
Not only celebrities’ names but also certain hot words are becoming the objects of registration race. According to reports, “Chang’e One” was already registered in 2004 and was priced at 300,000 RMB. “Jijiehao” (a famous movie) was registered as a type-12 trademark and was priced at 1 million RMB.
