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29 June 2020
To attract attention, it is not uncommon for celebrities to adopt 'stage names' in relation to their professional activities. Such names may have great commercial value and are often considered an important source of income for celebrities. To piggyback on this fame, other parties might use celebrity stage names to promote their own goods or services. However, this kind of conduct could cause consumer confusion and weaken a stage name's distinctiveness.
The Trademark Act protects celebrity stage names against third-party appropriation. According to Article 30-1(13) of the act, trademarks containing another person's portrait or well-known name, stage name, pseudonym or alternative name should be refused registration unless said person consents to the application. However, the definition of 'stage names' in Article 30-1(13) remains unclear under current practice. The IP Court recently expressed its view on this issue in an administrative litigation regarding trademark opposition.
The trademark at issue was a stylised logo of BLACK MAMBA, with designated goods such as clothing in Class 25. The opponent of the trademark opposition was a US company whose legal representative was the US professional basketball player Kobe Bryant.
The opponent claimed that, as 'black mamba' is the stage name of Kobe Bryant and is widely recognised as such by the pertinent consumers, the trademark at issue should not be registered based on Article 30-1(13) of the Trademark Act. On the other hand, the registrant of the stylised logo BLACK MAMBA argued that the term 'black mamba' is not an exclusive pseudonym of Kobe Bryant. According to the registrant, black mamba is also the name of a species of venomous snake and is commonly used by other parties in various goods and services. In addition, even though Kobe Bryant had used 'black mamba' to describe his basketball skills, the registrant claimed that 'black mamba' was not a well-known nickname for Kobe Bryant in Taiwan.
The IP Court explained that the nature of professional athletes is highly similar to celebrities such as performers or entertainers. When consumers cheer for professional athletes, they often use their nicknames instead of their real names. Therefore, the court concluded that the nicknames of professional athletes should be considered stage names under Article 30-1(13).
The IP Court further held that consumers in Taiwan may directly associate the name 'black mamba' with Kobe Bryant based on the evidence provided by the opponent. In addition, the registrant had also referred to Kobe Bryant as "black mamba on the basketball court" in an interview. Therefore, the registrant had clearly known that 'black mamba' was the stage name of Kobe Bryant before he filed the trademark.
Given the above, the IP Court held that 'black mamba' was Kobe Bryant's well-known stage name and the trademark at issue should be refused registration.
For further information on this topic please contact Ruey-Sen Tsai or Celia Tao at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email (firstname.lastname@example.org or email@example.com). The Lee and Li Attorneys at Law website can be accessed at www.leeandli.com.
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