The highly competitive US presidential election eventually came to a conclusion last week. While the new President Donald Trump is intoxicated with the victory over the competition with the candidate Hilary of Domestic Party, however, his commercial business does not seem to go that smooth in recent years. It has been reported that Trump attempted to register his last name “TRUMP” as trademark in Class 37 of “Building construction; repair; installation services” in China in 2006.
Nevertheless, the target mark “TRUMP” has been applied for registration by other applicant in the same class just two week earlier than his application, so that parts of subclass in Class 37 applied for by Trump was rejected. In this regards, Trump applied for trademark review to the Trademark Review and Adjudication Board of PRC (TRAB). However, after examining, TRAB rejected the review of refused trademark, based on the condition that a same trademark has been registered in the same class by other party, where the two same trademarks may confuse the indicator to the source of goods. Soon afterwards, a lawsuit regarding Trump’s trademark application was filed to the people’s court and then appealed to higher court, however, Trump finally lost the lawsuit after two trials.
Actually, TRUMP case is not the first case of preemptive registration of trademark in China. America’s famous basketball star Michael Jordan has just faced a similar embarrassed condition as Trump in 2012. Michael Jordan filed a lawsuit against Qiaodan (Similar pronunciation as Jordan in Chinese) Sports — a Chinese athletic apparel company which appears in the market in violation of his right of name. However, this superstar unexpectedly lost the lawsuit due to his family name in Chinese is considered as a normal American name, although he is widely known worldwide. Eventually, China’s court judged that Qiaodan Sports did not constitute violation of Michel Jordan’s right of name or right of portrait.
Similarly, despite Trump is famous for his position of the new president of the US, his name “TRUMP” is merely regarded as a normal foreign family name in China. Moreover, in consideration of his limited popularity in China during that period, the litigation filed based on violation of right of name and trademark registration in bad faith was dismissed by the court.
In US, the right of publicity is a legal right vesting in celebrities with reputation in order to protect their names, portrait, voice, etc. However, this system is not available in China. Therefore, how can foreigners, especially someone with reputation, prevent others from violating or abusing their relevant rights regarding IP rights and personal rights?
China’s Trademark Law abides by the principle of first-to-file, namely, based on the condition that no other prior rights existed on the registering mark, the ownership of the trademark shall vest in the person who files an application in prior. Given that someone’s own name or trade name has been registered by others in China, whereas, the person may face the risk on violation of other’s legal rights by using his/her name for commercial purpose without awareness of the registered rights on his/her own name.
Generally, the trademark dispute deal with Chinese celebrities’ right of name can be filed a lawsuit by reason of unfair competition, or violation of prior rights (right of name, copyright and so on) in accordance with the Art 31 of Trademark Law. Nevertheless, combined with aforesaid cases, it seems not to be applicable to foreigners in China in this regard, as Chinese people has various understanding on different English words and Mandarin transliteration. In addition, Chinese name consists of the family name and first name, which is different from the foreigners’ names mentioned by people with separate family name or first name. Therefore, it is significant for each foreign investor with intention to register trademark with own names in China. The existing foreign names with famous reputation could not be of course protected by Chinese law.
In order to properly protect foreign investors’ right of name and interests of trade name, we would suggest the investors with intention to invest in China to consult a qualified professional that may pave the way and clear away potential risks for foreign investment by skills of professional retrieval on the marks and put forward rational suggestion.
If you have any query in this regard, we are able to answer and provide the most professional suggestion for you. If you want to read more about Intellectual Property Rights in China, we suggest you to read our new Guide about this topic, a manual which is about to be published in December 2016. If you want to have a copy, write to email@example.com