Taylor Swift successfully prevents registration of mark identical to her name
Article 32 of the Trademark Law provides as follows:
“An application for trademark registration shall not be allowed to harm another person’s prior rights, and no pre-emptive application by any unfair means for a trademark which has been used by another person and has a certain influence shall be allowed for registration.”
Taylor Alison Swift, born in 1989 in Pennsylvania, United States, is a famous American singer. She won four Grammy Awards in 2010, including album of the year, best country album, best country song and best female country vocal performance, from a total of eight nominations. The name Taylor Swift and the corresponding Chinese name are highly recognisable among the Chinese public.
On January 22 2010 a Chinese individual, Mr Li, applied for the registration of the trademark TAYLOR SWIFT (depicted below) for “clothing; layettes [clothing]; swimsuits; shoes; hats; hosiery; gloves [clothing]; scarfs; straps; wedding dresses” in Class 25.
The trademark was preliminarily approved by the China Trademark Office (CTMO) on November 6 2010.
On February 9 2011 Taylor Swift (the opponent) filed an opposition against the trademark TAYLOR SWIFT.
On March 19 2013 the CTMO rejected the opposition, finding that the evidence provided by the opponent was insufficient to prove that the name Taylor Swift was known by the relevant public in China.
On April 11 2013 the opponent appealed to the Trademark Review and Adjudication Board (TRAB), citing prior personal name rights. In the review procedure, the opponent provided examples of media coverage in newspapers, magazines and on the Internet demonstrating the reputation of her name.
On March 12 2015 the TRAB ruled in favour of the opponent and rejected the registration of the trademark. The TRAB held that the evidence provided by the opponent proved that 'Taylor Swift' was the name of an American singer and, as a natural person, she had the right to claim protection for her personal name right. The opposed trademark was identical to the name Taylor Swift. The evidence also proved that Taylor Swift enjoyed a high reputation in the music industry before the filing date of the opposed trademark. 'Taylor Swift' is not an existing word combination and the applicant for the opposed trademark did not adduce evidence to provide a reasonable explanation for his trademark. The applicant applied for the opposed trademark for goods in Class 25 and attempted to take unfair advantage of the name of Taylor Swift. The registration and use of the opposed trademark infringed the opponent's name right and violated Article 32 of the Trademark Law.
Strictly speaking, the reputation of a natural person’s name is not a prerequisite for protection of a name right. In 2014 the Beijing High Court issued a "Guide concerning the Trial of Administrative Cases of Trademark Authorisation and Confirmation", which clarified that:
“fame is not a prerequisite for protection of the name right of a natural person, but fame 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.”
In a previous invalidation case against the trademark NICOL KIDMAN, Nicole Kidman filed an invalidation action based on her personal name right, which was upheld by the TRAB. In that case, considering the high reputation of Nicole Kidman, the TRAB held that the registration of a confusingly similar trademark was likely to undermine the relationship between the related symbols and the true owner of the name right, which might damage the interests of the owner and cause confusion and misidentification among consumers.
In the present case, the TRAB also took into consideration the originality of the name itself. In order to decide whether a trademark infringes a personal name right, it is necessary and reasonable to consider relevant factors, such as:
- the originality and reputation of the name;
- the bad faith of the trademark squatter;
- the correlation between the designated goods/services and the name; and
- the fields in which the parties are involved.
Li Yunquan, Wan Hui Da Intellectual Property Agency, Beijing
Wan Hui Da represented Taylor Swift in the opposition and review proceedings
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