CHANG TSI
Insights
The issue of the conflict between name rights and trademark rights has garnered significant attention from many legal professionals in recent years. In response, China has enacted several relevant legal provisions. Since the Supreme People's Court's Guiding Case No. 113, the administrative dispute case over the "乔丹" (Jordan in Chinese) trademark between Michael Jeffrey Jordan, the Trademark Review and Adjudication Board of the National IP Administration of China (CNIPA), and Jordan Sports Co., Ltd., there comes a lot of other related cases for reference. However, the regulations concerning the protection of the name rights of deceased celebrities are still not very clear and comprehensive, leaving many issues to be explored and determined.
Recently, I encountered a thought-provoking case involving the conflict between the name rights of a deceased person and trademark rights. After conducting preliminary research on the related issues, I would like to share out this information, hoping to provide some solutions for who are facing similar problems.
Party A is the grandson of a certain celebrity, B. After B passed away, A discovered that C had applied to register B's name as a trademark (hereinafter referred to as the B trademark) with the CNIPA and that it had been preliminarily approved and published for opposition. A hopes to prevent the registration of the B trademark through an opposition and obtain the exclusive rights to the B trademark.
In this case, B's name had never been formally used as a trademark. Can A claim B's name rights, oppose the registration of the B trademark, and obtain the exclusive rights to the B trademark?
1. First, let's have a look of the current relevant legal provisions in China:
Civil Code of the People's Republic of China:
Trademark Law of the People's Republic of China:
Provisions on Issues in the Trial of Administrative Cases of Trademark Authorization and Right Confirmation Issued by Supreme People's Court:
Trademark Examination and Trial Guidelines of the China National Intellectual Property Administration:
3.4 Name Rights:
3.4.1 Overview: Without permission, applying to register another person's name as a trademark may damage the other person's name rights. The disputed trademark should not be approved for registration or should be declared invalid. Another person's name includes real names, pen names, stage names, translated names, aliases, etc. "Another person" refers to a natural person who is alive when the disputed trademark is applied for registration. If the natural person is deceased when the disputed trademark is approved for registration, this provision does not apply.
3.4.2 Application Requirements:
3.4.3 Other Issues Related to the Protection of Name Rights: If the use of a name for trademark registration does not meet the above application requirements for name rights protection but misleads the public, disrupts public order, or has other adverse effects, it shall be examined and tried according to the provisions of Article 10, Paragraph 1, Items (7) and (8) of the Trademark Law.
3.7 Deceptive Signs That Are Likely to Cause the Public to Misidentify the Quality or Other Characteristics or Place of Origin of Goods: 3.7.2.6 The same or similar to the names or portraits of public figures that are likely to mislead the public: If the sign or its components are the same or similar to the names or portraits of public figures, and it is likely to mislead the public about the source of goods or services without the person's permission, it generally applies to this provision. Names include those used in household registration, as well as aliases, pen names, stage names, courtesy names, and nicknames.
3.8 Detrimental to Socialist Morals or Having Other Adverse Effects:
2. Next, let's see what claims A can make in the above case.
From the above legal provisions, it can be preliminarily seen that in an possible trademark opposition, A can assert rights based on Article 10, Paragraph 1, Items (7) and (8), or Article 32 of the Trademark Law.
(1) A can assert rights based on Article 10, Paragraph 1, Item (7) of the Trademark Law, claiming that the registration of a trademark similar to the name of public figure B without authorization is likely to mislead the public about the source of goods or services, and therefore oppose the B trademark.
In cases where the CNIPA initiates refusal to trademark applications, there are many cases Article 10, Paragraph 1, Item (7) are cited to reject the registration of such trademarks. For example, in the review case of the rejection of the trademark "莫祖喜(Mo Zuxi) &Device" No. 68292201, the applicant argued that Mo Zuxi was a well-known folk doctor and had passed away, and the applicant was his daughter and had the right to use his portrait and name to apply for trademark registration. The applicant claimed that the trademark was her original creation and was her father's real name and image, and its use on the designated goods would not mislead the public about the source of the goods. She submitted copies of evidence such as ID cards, household registration books, notarized statements, and business information. However, the CNIPA still rejected registration of this mark in the Review Decision No. 0000011977 of 2024, stating that "the use of the applied trademark on all the reviewed goods such as medical ointments is likely to mislead consumers about the source of the goods and constitutes the situation mentioned in Article 10, Paragraph 1, Item (7) of the Trademark Law, which prohibits its use as a trademark. The evidence submitted by the applicant is insufficient to prove the usability of the applied trademark." Therefore, the trademark was rejected.
In theory, if the evidence in the case can prove that B is indeed a public figure and C registered the B trademark without authorization, and the registration is likely to mislead the public about the source of goods or services, it can be opposed based on Article 10, Paragraph 1, Item (7). However, in practice, it is rare to see cases wherein this clause is cited to reject or invalidate the registration of a disputed trademark.
(2) Regarding Article 10, Paragraph 1, Item (8) of the Trademark Law, according to the Trademark Examination and Trial Guidelines of the CNIPA, it mainly applies to trademarks with "political adverse effects." Therefore, if B's name falls under the situations listed in 3.8.2 of the Trademark Examination and Trial Guidelines, an opposition application can be filed based on Article 10, Paragraph 1, Item (8) of the Trademark Law.
In existing cases, adjudicating authorities are more inclined to support claims based on Article 10, Paragraph 1, Item (8) than those based on Article 10, Paragraph 1, Item (7). For example, the Beijing Higher People's Court in the dispute over the trademark "第禄光(Di Luguang) &Device" No. 4573957 ruled in the Judgment No. 3621 of 2019 that "if the disputed trademark mark or its components are the same or similar to the names or portraits of deceased public figures in politics, economy, culture, religion, ethnicity, etc., and may have a negative impact on the social public interest and public order of our country, it can be recognized as having 'other adverse effects' as stipulated in Article 10, Paragraph 1, Item (8) of the 2001 Trademark Law. In this case, the figure part of the disputed trademark is the portrait of the famous patriotic industrialist Mr. Zhang Bishi, and the text part '第禄光(Di Luguang)' and 'CHEONGFATTTZEMANSION' are the Chinese and English names of Mr. Zhang Bishi's former residence, respectively. According to the facts found and the effective ruling of the Supreme People's Court, it can be confirmed that Mr. Zhang Bishi was the founder of Zhangyu Brewing Company, the predecessor of China's first industrialized wine production enterprise, and made certain contributions to China's wine industry. Mr. Zhang Bishi has a certain reputation and influence in the Chinese wine industry. Wu Weijun has no association with Mr. Zhang Bishi or Zhangyu Company. Registering Mr. Zhang Bishi's portrait and the Chinese and English names of his former residence as a trademark on 'wine (beverages)' and other goods is likely to mislead the relevant public to associate the quality characteristics of the goods with Mr. Zhang Bishi or Zhangyu Company, thereby misleading the public and causing adverse effects."
(3) Regarding Article 32 of the Trademark Law, according to the Trademark Examination and Trial Guidelines of the CNIPA, 3.4.1, "without permission, applying to register another person's name as a trademark may damage the other person's name rights. The disputed trademark should not be approved for registration or should be declared invalid. ... 'Another person' refers to a natural person who is alive when the disputed trademark is applied for registration. If the natural person is deceased when the disputed trademark is approved for registration, this provision does not apply."
From the above provisions, it can be seen that the prior rights in Article 32 do not include the name rights of deceased persons. This is consistent with the Civil Code's provision that name rights are personal rights that disappear with the death of the owner and cannot be inherited. In related cases, claims based on the name rights of deceased persons are almost always rejected. For example, in the dispute over the trademark "MICHAELJACKSON" No. 8647078, the Beijing Higher People's Court wrote in its Judgment No. 878 of 2016 that "the 'existing prior rights of others' referred to in Article 31 of the 2001 Trademark Law include the name rights of living natural persons. Since Mr. Michael Jackson had already passed away at the time of the trial, the subject of name rights protection no longer exists, and Victory International's claim that the disputed trademark damages Mr. Michael Jackson's name rights and should not be registered is no longer supported due to the loss of the prior rights basis."
Therefore, since B is deceased, A's claim based on B's prior name rights shall not be supported.
However, according to Article 994 of the Civil Code of the People's Republic of China, "if a deceased person's name, portrait, reputation, honor, privacy, remains, etc., are infringed, their spouse, children, and parents have the right to request the infringer to bear civil liability according to the law. If the deceased has no spouse, children, and the parents are also deceased, other close relatives have the right to request the infringer to bear civil liability according to the law." From this, the spouse, children, and parents (or the subsequent close relatives) have civil rights to the deceased's name. According to Article 18 of the Provisions on Issues in the Trial of Administrative Cases of Trademark Authorization and Right Confirmation Issued by Supreme People's Court, "the prior rights referred to in Article 32 of the Trademark Law include civil rights or other legitimate interests enjoyed by the parties before the application date of the disputed trademark." Therefore, the spouse, children, and parents (or subsequent close relatives) should be able to assert civil rights to the deceased's name and file an opposition application against the registration of a trademark that infringes on the deceased's name rights based on Article 32 of the Trademark Law.
In this sense, if B's spouse, children, and parents do not exist or are deceased, A should be able to assert civil rights to B's name and file an opposition application against the B trademark based on Article 32 of the Trademark Law. However, it is regrettable that I have not found any rulings rejecting or invalidating the registration of a disputed trademark based on the civil rights of close relatives to the name of a deceased person according to Article 32 of the Trademark Law, nor have I found related claims and comments. However, with the Civil Code recognizing the rights of relatives to claim rights based on the deceased's name, it is believed that in future trademark dispute cases, parties and adjudicating bodies will give more consideration and recognition to this issue.
3. From the above analysis, it can be concluded that even if B's name has never been formally used as a trademark, A can still file an opposition against the B trademark based on the relevant rights and interests of B's name to prevent the registration of the B trademark.
4. On the other hand, if C's application for the B trademark is rejected due to opposition, can A obtain the exclusive rights to the B trademark? The answer is not necessarily.
In fact, if A wishes to obtain the exclusive rights to the B trademark, A needs to first obtain the registration of the B trademark. Although I have not found any relevant laws explicitly prohibiting the registration and use of names, others' names, or even celebrities' names as trademarks, it can be seen from the above legal provisions and cases that there are still many restrictions on the registration of public figures' names as trademarks:
(1) The situations listed in 3.8.2 of the Trademark Examination and Trial Guidelines of the CNIPA, names "having political adverse effects," are absolutely prohibited from being registered and used as trademarks. Therefore, if B's name is under the aforesaid situation, A will not be able to obtain the trademark rights to B.
(2) According to 3.7.2.6 of the Trademark Examination and Trial Guidelines of the CNIPA, "if the sign or its components are the same or similar to the names or portraits of public figures, and it is likely to mislead the public about the source of goods or services without the person's permission, it cannot be registered." At the same time, Item (8) of Chapter 19 of the Trademark Examination and Trial Guidelines on the scope of application of examination opinions states, "if the trademark contains the name or portrait of a well-known natural person, and it is not the applicant's own name or portrait, and it is likely to mislead consumers about the source of goods or services, if it can be inferred from publicly available information that there is a possibility of an association between the natural person and the applicant, the applicant can be required to provide supplementary evidence or correction documents related to the authorization of the natural person to apply for trademark registration on the designated goods or services." From the above, it can be inferred that if A applies for the registration of the B trademark, he/she still needs to provide proof of obtaining B's authorization. If A cannot provide proof, A may not be able to obtain the registration of the B trademark.
However, in practice, many public figures may not have planned to use their names as trademarks and may not have given their heirs trademark registration authorization documents in advance. Additionally, some public figures may not have been well-known during their lifetime but became known to the public after their death. In such cases, they may not have considered protecting their names as trademarks and thus did not provide their heirs with trademark registration authorization documents in advance. Therefore, in practice, heirs of public figures like A may not be able to provide valid proof documents to assist in obtaining trademark protection for the public figure's name. For example, in the aforementioned review of refusal case of the trademark "莫祖喜(Mo Zuxi and Device)" No. 68292201, whether the applicant had valid authorization proof documents is likely to significantly influence the examiner's judgment.
Name rights, as personality rights, cease to be protected with the death of the person. However, the other property rights attached to the name often do not disappear with the death of the person. If using the name on goods or services or using it in related commercial activities, will provide the signals to consumers that the goods or services are associated with the name's owner. From this perspective, using a deceased person's name on goods or services can still serve as a trademark identifier, indicating the source of the goods or services. Therefore, the Civil Code includes protection clauses allowing relevant heirs to assert their related civil rights. Theoretically, rights holders can also use these civil rights to counter trademark rights. However, asserting civil rights based on the aforementioned clauses is relatively abstract, making it difficult to prove the rights basis and leading to high costs for the legal actions. If these property rights can be converted into trademark rights through trademark registrations, it would be more straightforward and convenient, greatly reducing the costs for enforcing the related rights by the holder and the authorities.
Therefore, in possible scenarios, I opine that during the trademark application examination process, comprehensive considerations should be given, and the burden of proof for authorization documents for heirs should be appropriately relaxed. On the rights holder's side, when the public figure's reputation reaches a certain level and does not negatively impact China's political, economic, cultural, ethnic, or religious public interests and public order, it is recommended to plan ahead, applying for trademark registration protection, or preparing the trademark authorization in advance to ensure that the property rights attached to the name can be better protected.
