We are often consulted by clients asking what standards are used to determine trademark squatting, and why was malicious squatting found against Sony Ericson and HERMES but denied against COCA COLA or LANDROVER? Furthermore, once a trademark application has damaged anothers’ name right, copyright, or trade name right, what standards do courts use to determine infringement. Under the Trademark Law, what measures can be taken to protect the trademarks of well-known fictional figures, such as 007 or Harry Potter?
As to the above questions, we believe that the best method of resolution is to study the judicial decisions made in relevant cases, and extract the points considered in the dispute verdicts and the reasoning used by the courts in making their decisions. So, using publicly available decisions, this website will successively share the content of relevant decisions, which should help foreign readers research China’s trademark law and experience. Today, we would like to introduce a case involving a dispute between the name right and the trademark right. Specifically, the Beijing High People’s Court’s administrative verdict in the administrative trademark dispute between Yijianlian Sports (China) Co., Ltd. (the “Yijianlian Company”) and the Trademark Review and Adjudication Board (the “Board”).
Summary of the case: Trademark application No. 3562067 for “Yi Jian Lian,” the trademark in dispute, was filed by Mingle Company on May 20, 2003 to the Trademark Office of the State Administration of Industry and Commerce (the “Trademark Office”). The application was approved on September 7, 2005, and with that grant of rights, the exclusive right of the trademark could last till September 6, 2015. The trademark was approved for Class 25, which covers clothing, judogi, soccer shoes, shoes, socks, hats, gloves (clothing), scarves, ties, belts (for clothing). On May 7 2008, upon the approval of the Trademark Office, the trademark in dispute was transferred to Yijianlian Company.
On March 24, 2006, Yi Jianlian filed an opposition with the Board for trademark cancellation. The main reason for this application is that the trademark in dispute is identical to the name Yi Jianlian, and it was only applied for after Yi became famous. Furthermore, the application damaged Yi’s name right and violated Articles 31 and 13 of the Trademark Law, and the application and use of the trademark in dispute would produce a negative influence on the social image of Yi as well as his commercial benefits. Finally, Mingle Company used deceptive methods to apply for the trademark, which violated the principle of good faith.
On November 30 2009, the Board made its No. 33584 adjudication, affirming that Yi is a famous Chinese basketball player who enjoyed a definite social reputation before the trademark application. Additionally, Yijianlian Company applied for an identical trademark using Yi’s name without consent from the player, which would naturally damage Yi’s name right in violation of Article 31 of the Trademark Law. Therefore, the trademark was revoked. Dissatisfied with the adjudication, Yijianlian Company filed an administrative lawsuit to Beijing No.1 Intermediate People’s Court (the “Beijing Intermediate Court”).
By the opinion of the Beijing Intermediate Court, as a statutory right, the name right belongs with the prior rights as regulated by Article 31 of the Trademark Law. Any unlicensed trademark application of anothers’ name, which would or may harm the name right will not be approved for registration or will be revoked. Generally, when the public sees a certain trademark, they naturally associate it with another’s name and believe that there is a relationship between that person and the promoter of the trademark or its products. This can cause the name owner to suffer losses on account of that misunderstanding. So, to judge the possible damage against the name right it is necessary to first consider the reputation of the name. The focus of the case is whether the third party has a definite reputation in the relevant community before the trademark application date.
According to the evidence submitted by during the trademark adjudication process and the lawsuit filed by Yi, Yi held a definite social reputation before the trademark application. Mingle Company, a sporting goods company admitted in Fujian, applied for the disputed trademark, which was fully identical to the name of Yi, on athletic shoes and other products with no license from the basketball player. This created the appearance of a relationship between the disputed trademark and the basketball player and made it easy for consumers to believe that the products came from Yi or had been endorsed by him, which could harm Yi’s reputation and interests. This violated Yi’s name rights and Article 31 of the Trademark Law. Therefore, the trademark must be revoked and the No. 33584 adjudication should be upheld.
Dissatisfied with the decision made by the first instance court, Yijianlian Company appealed to the Beijing High People’s Court. The High People’s Court ruled that according to Article 31 of the Trademark Law, trademark application must not damage the prior rights of others. In addition to the exclusive rights of registered trademarks, these “prior rights” also include those civil rights protected under the General Principle of Civil Law and other laws, including the name right. Because Yi held the name right before application of the disputed trademark, the focus of the second instance court was on whether Yi’s name right was damaged by the company’s trademark application.
To judge the damage to the name right from a trademark application, it is necessary to first show that the name has a definite reputation. In the case, Yi maintained that his right had been harmed, so he must submit evidence for the claimed reputation. According to the investigated facts, although the print out of the SINA webpage submitted by Yi was dated after the application of the disputed trademark, it was still sufficient to solidly support Yi’s social popularity. Therefore, the court denied Yijanlian Company’s claims that this evidence was insufficient proof. As the evidence submitted by Yi in the first instance reinforced those filed in the adjudication process, and Yijianlian Company made no objection to the authenticity, association, or contents of Yi’s evidences, the judgment of the original court was in no way mistaken or improper. Based on this, the unlicensed application of the Yi Jian Lian trademark by Yijianlian Company could easily lead the public to believe there was a relationship between these parties and that Yi was either the source of or related to these products or services and thus damage Yi’s name right. Therefore, the original decision was correct and shall be sustained.
Lawyer comments: the case involves two main legal issues
1. On the substantive contents, whether or not Yi’s name has high recognition in the relevant public for Class 25 before the trademark application was. This is not difficult for Chinese athletes but it fairly difficult for famous foreigners. This is because their names are translated from English or other languages, but the law requires evidence of the reputation at the time of squatting, which is limited to evidence collected inside China. That is the key reason that Britney Spears and Allen Iverson were unable to succeed in their name squatting cases. We certainly believe that a good trademark attorney has to collect the evidence for his/her clients, and when we are entrusted to act in such cases, our evidence retrieval and search ability are the key to success of the lawsuit.
2. In terms of the procedure, whether or not the evidence filed by Yi during the lawsuit would be accepted by the court. Judicial determinations of trademark rights are administrative lawsuits, which mainly concern the legitimacy of the decision made by the Board. Theoretically, the defendant is the Board. It will have solid evidence when making the decision on the opposition review, and in the lawsuit, the Board has no right to submit new evidence. On the other hand, Yi’s new evidence reinforced the evidence of the Board to some extent, and that is obviously against the basic principle of the administrative lawsuit. Because the agent of the Yijianlian Company made no objection on the time limitation, however, the court therefore accepted the probative force of the evidence. Chinese courts interrogate all submitted evidence from the aspect of authenticity, legitimacy, and association. If we were the attorneys of Yijianlian Company, we would concentrate on the legitimacy of the evidence submitted exceeding the time limitation.
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You Yunting：86-21-52134918 youyunting@debund.com/yytbest@gmail.com
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