HongFangLaw ~ Chinese IP Law Updates ~ n’ 44
22 January 2018
TM Law Protection on Deceased Celebrity’s Name
How TM Law Protects Deceased Celebrity’s Name from MICHAEL JACKSON to MONET
(2017)SBYZ No. 0000041130 Decision on Disapproval of Trademark Registration of No.16677034 “MONET GARDEN”
Opponent: Académie des Beaux-Arts
Case Handled by:
Kayla Sun, HongFangLaw
被异议商标/ Opposed Trademark
异议人引证商标/ Cited Trademark
Issues over how rights to the names of famous people, especially of the ones who already passed away, should be protected by the Trademark Law in administrative procedures have been dealt with in the opposition against the “MICHAEL JACKSON” trademark. The Trademark Office blocked its registration, citing Article 10 of the Trademark Law that provides for an absolutely prohibitive scenario: signs that are likely to cause public confusion or have other ill effects shall not be used as trademarks. However in the “MONET” case, the Trademark Office instead resorted to Article 30 of the Law in its disapproving decision, showing a more cautious approach towards the absolute provision. Similar, but more direct elaboration on applying Article 10 to protect the name of a deceased famous person can also be seen in the Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases on Granting and Affirming Trademark Rights.
During the opposition procedure, our IP consulting company under HFL has succeeded in winning over the Trademark Office and blocking the opposed trademark MONET GARDEN registration for Académie des Beaux-Arts.
According to the official decision, the opposed trademark and the cited trademark constitute similar trademarks on similar goods on the grounds that, “MONET” is perceived by the public to be the renowned painter Oscar-Claude Monet in both of the trademarks, especially when the element is highly noticeable in the opposed one. Besides, they are designated on goods sharing similar use and functions, sales channels and target consumers, therefore likely to cause confusion and mistake when they are both present in the market. Despite the favorable decision, the opponent’s other reason went unsupported. It challenged the opposed trademark on its infringement of the respondent’s right to the name and to its commercialization based on the aforementioned Article 10.
However in the “MICHAEL JACKSON” case in 2015 where Article 10.1.7 and 10.1.8 were cited, the Trademark Office held that the trademark in question should not be registered because it was possible to mislead consumers to relate the designated goods “backpacks” to the legend singer Michael Jackson who had been widely known in China before the trademark filing and thus could cause undesirable impacts (Decision on Disapproval of Trademark Registration of No.11777656 “MICHAEL JACKSON”).
- It is not difficult to figure out from the above two cases that the Trademark Office has grown more prudent on the application of Article 10 of the Trademark Law despite the similarity of the two cases. Once supportive of opposition for inappropriate relevance to household names, it now turned against the opponent’s argument that “the opposed trademark is possible to mislead consumers to relate the designated goods under ‘MONET GARDEN’ to the famous painter Oscar-Claude Monet”. The shift in the Trademark Office’s attitude was contributed by another fact: In yet another opposition review case involving “WEI XIN”, which means WeChat, the Beijing Supreme People’s Court further clarified the “ill effects” in Article 10.8 as “passive and negative impacts on social interests and order concerning politics, economy, culture, religion and ethnicity”. The narrower interpretation has limited the application of Article 10. As a result, the Trademark Office eschewed the article but resorted to confirmation of trademark similarity based on possible confusion when faced again with relevance between the opposed trademark and the name of the famous deceased.Note-worthily, there is still an open window in Article 5 of the Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases on Granting and Affirming Trademark Rights that, “Where a trademark sign or its constituent elements may cause passive and negative impacts on the social and public interests and public order of China, the people’s court may determine that it falls under the circumstance of “having other ill effects” as prescribed in Article 10.1.8 of the Trademark Law. Applying for registration of a name of a public figure in the political, economic, cultural, religious, ethnic and other areas as a trademark falls under the circumstance of “having other ill effects” as prescribed in the preceding paragraph.” Highlighting the names of public figures, the provisions have been effective since March 1, 2017. Given such guidance, the Trademark Office and the Trademark Review and Adjudication Board might as well cite Article 10 when dealing with infringement on names of deceased public figures in a more proactive spirit so as to render ever more sufficient and powerful protection in this regard.
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