Background
Article 32 of the Trademark Law provides as follows:
"An application for trademark registration shall not be allowed to harm another person's prior rights, and no pre-emptive application by any unfair means for a trademark which has been used by another person and has a certain influence shall be allowed for registration."
Taylor Swift is a Grammy Award-winning US singer. The name 'Taylor Swift' and corresponding Chinese name are highly recognisable among the Chinese public.
On January 22 2010 a Mr Li applied to register the trademark TAYLOR SWIFT (depicted below) for "clothing; layettes [clothing]; swimsuits; shoes; hats; hosiery; gloves [clothing]; scarfs; straps; wedding dresses" in Class 25.
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The trademark was preliminarily approved by the China Trademark Office (CTMO) on November 6 2010.
On February 9 2011 Swift filed an opposition against the trademark TAYLOR SWIFT. On March 19 2013 the CTMO rejected the opposition, finding that the evidence provided by Swift was insufficient to prove that the name 'Taylor Swift' was widely known by the relevant public in China.
On April 11 2013 Swift appealed to the Trademark Review and Adjudication Board (TRAB), citing prior personal name rights. In the review procedure, the opponent provided examples of media coverage in newspapers, magazines and online demonstrating the reputation of her name.
On March 12 2015 the TRAB ruled in favour of Swift and rejected the registration of the trademark. The TRAB held that the evidence provided by Swift proved that 'Taylor Swift' is the name of a US singer and that, as a natural person, she had the right to claim protection of her personal name. The opposed trademark was identical to the name 'Taylor Swift'. The evidence also proved that Swift enjoyed a high reputation in the music industry before the filing date of the opposed trademark. 'Taylor Swift' was not an existing word combination and the applicant for the opposed trademark could not provide a reasonable defence of his trademark. The applicant applied for the opposed trademark for goods in Class 25 and attempted to take unfair advantage of the name 'Taylor Swift'. The registration and use of the opposed trademark infringed the opponent's name rights and violated Article 32 of the Trademark Law.
Strictly speaking, the reputation of a natural person's name is not a prerequisite for protection of name rights. In 2014 the Beijing High Court issued the Guide Concerning the Trial of Administrative Cases of Trademark Authorisation and Confirmation, which clarified that:
"fame is not a prerequisite for protection of the name right of a natural person, but fame may be a factor to be considered when determining whether the relevant public regards a certain name as having a corresponding relationship with a specific natural person."
In a previous invalidation case against the trademark NICOL KIDMAN (for further details please see "Nicole Kidman obtains cancellation of trademark almost identical to her name"), Nicole Kidman filed an invalidation action based on her personal name rights, which was upheld by the TRAB. Considering the high reputation of Nicole Kidman, the TRAB held that the registration of a confusingly similar trademark was likely to undermine the relationship between the related symbols and the true holder of the name rights, which might damage the interests of the owner and cause confusion and misidentification among consumers.
In the present case, the TRAB also considered the originality of the name itself. In order to decide whether a trademark infringes personal name rights, it is necessary and reasonable to consider relevant factors, such as:
- the originality and reputation of the name;
- the bad faith of the trademark squatter;
- the correlation between the designated goods or services and the name; and
- the fields in which the parties are involved.
For further information on this topic please contact Yunquan Li at Wan Hui Da Intellectual Property Agency by telephone (+86 10 6892 1000) or email ([email protected]). The Wan Hui Da Intellectual Property Agency website can be accessed at www.wanhuida.com.
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