Pseudonyms may be protected as prior rights under Trademark Law

A recent decision of the Trademark Review and Adjudication Board (TRAB) has shown that a pseudonym, as an expression of the name of a natural person, may, in certain circumstances, be considered as a prior right under the Chinese Trademark Law and enforced as such.

Francisco Rabanne Cuervo, a famous Spanish fashion designer, has been using the pseudonym Paco Rabanne for many years, and this pseudonym is extremely well known around the world in the fashion circles.

In September 2009 a company named Shaoxing Modeng Tie & Garment Co Ltd filed an application for the registration of the trademark PACO RABANNE in Class 25 of the Nice Classification for “neckties; suspenders; socks; gloves; etc”.

French company Paco Rabanne filed an opposition, based mainly on its earlier registered mark in Class 25 and the prior rights of Francisco Rabanne Cuervo in his name. The China Trademark Office rejected the opposition, considering that there was insufficient evidence to substantiate the opponent's claims. In the review that followed, the TRAB found that:

• Paco Rabanne is a very distinctive name, and it could not be a coincidence that a Chinese individual/company chose an identical mark; and
• Paco Rabanne, as the pseudonym of Francisco Rabanne Cuervo, was well known among the relevant public.

The TRAB ruled that the mark would cause prejudice to the prior right of Francisco Rabanne Cuervo in his name and refused the registration under Article 31 of the Trademark Law.

When a celebrity uses his/her name as a trademark, consumers will easily connect the branded products with the celebrity and have a positive impression of the goods bearing the mark; this helps the marketing of the brand and the goods bearing the mark. For this reason, some trademark squatters attempt to take advantage of the status of celebrities by using their names, pseudonyms or slightly modified versions of their names in a commercial manner, and by seeking to obtain trademark registrations for their names.

Article 99 of the General Principles of the Civil Law stipulates that:

“citizens shall enjoy the right to use their personal names and shall be entitled to determine, use or change their personal names in accordance with the relevant provisions. Interference with, or usurpation and false representation of, personal names shall be prohibited.”

Article 31 of the Trademark Law, which sets out the general principle that trademark applications must not harm prior rights, is also a legal ground for protecting prior rights in a (celebrity’s) name.

This case is a good example of how the law will apply to an alias or pseudonym. The points below are worth mentioning:

• The protection afforded to names extends to pen names, stage names, pseudonyms, aliases and other informal names of a natural person. When seeking to protect an informal name, one must prove that such name is connected to a specific person through actual use. In this case, ample evidence was produced that Paco Rabanne had been well known in the fashion circles as the pseudonym of Francisco Rabanne Cuervo for many years, and that the trademark applicant knew or should have known this. Therefore, the applicant's conduct constituted an usurpation of Paco Rabanne’s name and such unauthorised use would damage Paco Rabanne’s private rights.
• However, certain circumstances must be present in order to enforce the right in one's name. In this case, Paco Rabanne used his pseudonym to create a brand and build up a company (the interested party), which was authorised to enforce the rights in Paco Rabanne's name. This had been recognised and affirmed by the courts in a similar case (Jin Shengqiang v TRAB (KATE MOSS) (2011 Gao Xing Zhong Zi No 723)). In that case, the courts of first instance and second instance both found that Storm Model Management Limited, the agency of English model Kate Moss, was entitled to enforce the rights in the name Kate Moss on behalf of the model.

Wu Xiangrong, Wan Hui Da Law Firm & Intellectual Property Agency, Beijing