Nicole Kidman obtains cancellation of trademark almost identical to her name
The registration of a word mark that is identical or confusingly similar to the name of a celebrity, and thus causes confusion and misidentification among consumers, falls under Article 32 of the Trademark Law: “an application for trademark registration shall not infringe another person’s prior rights”.
Nicole Mary Kidman, the winner of prestigious awards including the Academy Award, Golden Globe Award and Silver Bear Award for best actress, is an internationally known actress with a high reputation in the circles of entertainment, fashion and philanthropy around the world. The name Nicole Kidman, and the corresponding Chinese name 妮可·基德曼, are highly recognisable among the Chinese public.
On April 30 2006 an individual named Wu filed an application for registration of the trademark NICOL KIDMAN (Registration No 5327996) with the China Trademark Office. On August 7 2009 the Trademark Office approved the registration of the trademark for “umbrellas, frames for umbrellas or parasols, artificial leather, purses, school satchels, handbags, briefcases, travelling bags, leather straps, fur” in Class 18 of the Nice Classification.
Nicole Kidman (the applicant) filed an application for invalidation of the trademark with the Trademark Review and Adjudication Board (TRAB), claiming that the registration infringed her prior personal name rights and that Wu’s intent in registering such mark was to take advantage of her reputation. This was in violation of the good-faith principle and constituted an act of unfair competition.
On November 5 2014 the TRAB ruled in favour of the applicant and declared that the disputed trademark was invalid. The TRAB found that the evidence adduced by the applicant, such as copies of movie stills, videos of Oscar ceremonies, magazine advertisements, exclusive interview material, news items about the applicant taking up a position at the United Nations and being awarded a medal of honour, together with Chinese website reports on the applicant, proved that the name Nicole Kidman had a high reputation in China before the filing date of the disputed trademark. The TRAB considered that the registration of the trademark, which was almost identical to the applicant’s name, was likely to cause confusion and misidentification among consumers. Therefore, the TRAB found that the registration of the trademark fell under Article 31 of the Trademark Law of 2001 (Article 32 of the Trademark Law of 2013).
Under previous practice, according to the Trademark Review and Adjudication Criteria (2005), in order to be considered as a "prior right" and obtain protection against a trademark application or registration, a name had to be identical to the trademark, or the trademark had to be considered as the translation of the name by the relevant public.
However, in 2014 the Beijing High People's Court issued a "Guide Concerning the Trial of Administration Cases of Trademark Authorisation and Confirmation", which clarified that “an identifying sign that is capable of being used in a corresponding relationship with a specific natural person may be considered as that person’s name” and that “fame is not a prerequisite for the protection of the name rights of a natural person, but 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”.
The Beijing High Court thus placed the emphasis on the identifying function of the name and the trademark, as identifiers of that person (the name) and of the origin of the goods or services (the trademark). Therefore, it was no longer considered as a prerequisite that the name and the trademark be identical, as long as there was a risk of confusion due to the circumstances.
In the present case, it is worth noting that Wu had also filed an application for NICOLE KIDMAN, which is identical to the applicant’s name, in Class 25, which clearly demonstrated his bad faith and his intention to take advantage of the reputation of the applicant in the fashion sector. The TRAB took the bad faith of the applicant into consideration.
Li Yunquan, Wan Hui Da Intellectual Property Agency, Beijing
Wan Hui Da represented Nicole Kidman in the invalidation proceedings
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