HongFangLaw ~ Chinese IP Law Updates ~ n’ 47
05 February 2018
“Wesley” should not be mistaken for “Wisely”
Bob Zhang, Eric Su from HongFangLaw
First instance judgment: (2017) J73XC No. 9152 administrative judgment affirmed by Beijing IntellectualProperty Court
Plaintiff: Zhejiang Dongli Real Estate Consulting Agency Co., Ltd.
Defendant: Trademark Review and Adjudication Board (TRAB) of State Administration for Industry and Commerce
Both the plaintiff’s trademark (hereinafter “Wesley”), adopted after a commonly used English name, and the author Mr. Ni Cong’s pen-name (hereinafter “Wisely”), which was also given to an adventure character created by him, have been written as “卫斯理”. What would happen when two 卫斯理s (“Wesley” and “Wisely”) were to be confronted beside each other by the court? As an involved party advocating for the rights to “Wesley” in the trademark dispute, HFL will unveil the whole story for you in this article.
Previously, the defendant (hereinafter TRAB) decided to block the trademark application No. 19194458 “Wesley” from being registered on the services of “Teaching; Tuition” etc. in Class 41. The plaintiff Zhejiang Dongli Real Estate Consulting Agency Co., Ltd., who unsatisfied with the registration refusal, entrusted HFL to file a lawsuit with the Beijing Intellectual Property Court, had filed the above mentioned application. The decision in question was made because the TRAB deemed that the renowned Hong Kong writer Mr. Ni Cong who literarily addressed himself as “Wisely” owned the rights to “Wesley”.
The TRAB held that the registration without Mr. Ni’s consent on “Teaching; Tuition; Practical training [demonstration]; Coaching [training]; Arranging and conducting of workshops [training]; Mobile library services; Publication of electronic books and journals on-line; providing not downloadable on-line electronic publications; providing not downloadable on-line videos,” would mislead consumers as to the origin of the services, which falls foul of Article 10.1.7 of the Trademark Law of the People’s Republic of China (“Trademark Law” in short).
Focus of Dispute
Is the application for the registration of “Wesley” in violation of Article 10.1.7 of the Trademark Law?
As the defendant provided no evident to prove that consumers perceives “Wesley” as identical to Mr. Ni Cong’s pen-name, the application for the registration of “Wesley” does not violate Article 10.1.7 of the Trademark Law. In the event of the Hong Kong author’s civil rights being infringed upon, other provisions should be cited for the remedy instead. Hence, the TRAB erred in its decision in both determination of facts and application of law while the plaintiff’s claims are well established on factual and legal basis. In its judgment, the Court supported the plaintiff by revoking the TRAB’s decision that blocked the registration of “Wesley” (TRAB’s Decision: (2017) No. 124176 Decision of Refusal Review on No. 19194458 “Wesley”).
- As an absolute prohibitive provision, Article 10.1.7 of the Trademark Law can be used to block any registration once it is deemed by trademark examiners to be infringing a right. Therefore, to avoid abusing it when other regulations should be used, examiners should take into consideration the when, where and how Article 10.1.7 should be applied. The TRAB examiners involved in this case were found to have crossed the line when HFL started to work on the case. Not only they did cite a misplaced provision, they also misinterpreted the facts. Although, Mr. Ni Cong enjoys prior rights to his pen-name “Wisely”, registering “Wesley” on goods or services that are not quite relevant with the former will not necessarily make consumers mistake the origin of the goods or services. In addition, rights to pen-names are protected as those to names, which should be regulated by the relative provision of Article 32 of the Trademark Law. In this case, remedy should be sought for by the person concerned based on his or her rights instead of the trademark authorities’ direct intervention.
- In the Supreme People’s Court’s Interpretation on “Certain Issues Concerning Trials of Administrative Cases Involving the Grant and Confirmation of Trademark Rights” that was published in early 2017, it is affirmed that the People’s Courts acknowledges claims for rights to pen-names, stages names and translated names if those names are well-known and stable enough to be used by the relevant public to refer to the specific natural person. Furthermore, prior rights and interests to names of artistic works or characters in those works are also protected by courts if they are highly recognizable, but if used by others as trademarks, which may lead the relevant public to falsely relate them or the products used by them to the right-owners. However, both rights to names and rights to characters’ names are owned by specific individuals as civil rights and interests. Generally, no social or public interests are involved, neither will their use disrupt public order. Therefore, Article 10.1.7 cannot be applied every time when a name is filed for trademark registration.
- When considering whether registering a prominent figure’s pen-name as a trademark will mix up the source of the goods or services for consumers, there are several important factors: the distinctiveness, the visibility etc. of the pen name concerned. While in this case, HFL argued for “Wesley” on the following grounds: Firstly, “卫斯理” is the direct translation of the English name “Wesley” which is a common name in foreign countries. It is not an original and exclusive use of Mr. Ni Cong. As such the Wesley trademark application is justified. Secondly, the word “Wesley” does not directly connects itself to Mr. Ni Cong. The defendant failed to provide evidence that “Wesley” and Ni Cong had a unique association between them and failed to prove that Ni Cong had a high reputation in the education industry and would cause the relevant consumers to misidentify the trademark. Thirdly, the plaintiff applied for “Wesley” trademark not with the purpose of damaging the rights of others and this act did not result in damaging consequences or undermining the rights of others. Finally, seeking protection for pseudonyms is a matter to be dealt with by other provisions and it does not require such a prohibitive and absolute one as Article 10.1.7. Therefore, the plaintiff’s application for “Wesley” in Class 41 is not deceitful or misleading and thus is not in violation of Article 10.1.7 of the Trademark Law.
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