Kangxin Partners PC - China
A series of high-profile cases has seen publicity and image rights in the spotlight in recent years. Although the laws protecting these rights can be broad, a well-thought-out strategy with evidence of reputation will see celebrities triumph over bad-faith filers.
With a history of bad-faith trademark filings and a number of well-known cases involving celebrities trying to prevent others from using their name and image without their consent, it is understandable that China is a concern for many when it comes to publicity and image rights. The good news is that the country’s IP protection system has grown significantly over recent years, especially in the area of bad-faith filings, and with that, much progress has been made in protecting publicity and image rights. Recent highly publicised cases involving celebrities remind us of the threats to individuals, but also highlight a trend towards improvement. That said, these well-known cases are often long-fought battles, so while various options are out there to protect names and images, there is still some way to go. As such, the best protection when it comes to trademarks is always to file as early and as broadly as possible.
Publicity rights and the law
The right of publicity generally refers to a person’s right to control the commercial use of their name, image and other aspects of their identity. In China, publicity rights are protected under the Trademark Law, as well as other non-IP regulations. When it comes to rights over names, protections may be afforded not only to legal names but also to stage names, nicknames and even well-established translations of such names. However, image rights are viewed more strictly, as the portrait in question must clearly identify the subject claiming prior rights.
Where disputes over publicity rights overlap with trademark cases, it is usually due to issues relating to bad-faith trademark filers and trademark squatters. In these cases, the most important regulation is the Trademark Law. This states that: “No trademark application shall infringe upon another party’s existing prior rights. Nor shall an applicant rush to register in an unfair manner a mark that is already in use by another party and enjoys substantial influence.” ‘Prior rights’ includes publicity rights and the Supreme People’s Court has clarified that a prior existing right includes rights protected by other laws, including the Civil Law, which specifically references name and image rights. Moreover, the Trademark Law refers to a “rush to register”, which can be used to combat trademark squatters if the claimant can demonstrate prior use that has resulted in a substantial influence among the relevant public in China.
The Trademark Law further states that: “Any natural person, legal person, or other organization desirous of acquiring the exclusive right to use a trademark for the goods produced, or services and activities offered by it or him shall file an application for the registration of the goods or service mark with the Trademark Office. The mark which is not registered for use and in bad faith should be rejected.” This updated regulation explicitly restricts bad-faith filings and targets trademark squatters of any type of mark, including names and images – particularly helpful in publicity cases.
As mentioned above, the rights afforded by the Civil Law have also been protected in trademark cases by the Supreme People’s Court. Thus, it is important to consider the Civil Law, which codifies an individual’s rights over their personal name and portrait, prohibiting use for profit without their consent. Where infringement occurs, the law specifies that an injunction, compensation, rehabilitation of reputation and even an apology may be due to the individual whose publicity rights have been infringed.
Further, in 2017 China implemented the new Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of the Administration of Trademark Examination, which state that signs containing the names of public political, economical, cultural or religious figures could be seen to have an unhealthy influence, which goes against the law. The Supreme People’s Court further clarifies that where the relevant public recognises a trademark as referring to a natural person and use of the mark easily misleads consumers into believing that a product bearing that mark has been authorised by the person in question or has a connection with them, the trademark infringes that natural person’s name right. Moreover, the court specifies that name rights can also apply to a pen name, stage name or translation or transliteration of a name, provided that the name enjoys a certain reputation and has a stable link to a natural person in the eyes of the public.
Finally, the Advertising Law also specifically mentions names and images, stating that where an advertiser or advertising agent uses the name or image of another person for advertising purposes, it must obtain prior written consent from that person.
Trademark examiners at the China National IP Administration (CNIPA) will not separately consider whether a trademark infringes a personal name right during examination unless the trademark relates to a living political figure. Therefore, celebrities and related brand owners should carefully monitor filings in China and consider filing an opposition or invalidation request against any published or existing trademarks that infringe their name rights.
However, the authorities are much stricter when it comes to examining trademarks containing images of people. While applications must include authorisation to use the subject’s image or face rejection, it can be difficult to prove that the image filed is identical or similar to the portrait of the individual in question. As such, careful monitoring is once again crucial. From there, an opposition or invalidation action may be necessary.
Tips on arguments and corresponding evidence
When it comes to trademark disputes, the authorities will attribute significant weight to traditional trademark arguments (eg, similarity of marks and/or goods and services). Therefore, early registrations will be vital. While the hope is that the subject will have broad registrations in China, issues often arise before anything has been filed.
Similarity of marks
Rights holders should keep in mind that China follows the Chinese Classification of Goods and Services, which includes sub-classes specific to China; the general rule is that goods and services in different classes and sub-classes are considered dissimilar. As such, having earlier registered marks in the same sub-classes is the best situation for rights holders to be in. That said, if an individual has numerous registrations in other classes, it may still be possible to connect the dots and argue confusion. As for similarity of the trademarks themselves, there may be cases where an additional word has been added to a natural person’s name. In this case, similarity may be more difficult to argue, but it is quite likely that the distinctive part of the mark will continue to be the name at issue.
After arguing on the grounds of similarity, the next step for the individual is to make arguments related to prior use and prior rights (including name or image rights). For both names and images, showing a direct relationship between the disputed trademark and the subject, before then showing that the registration of the disputed mark damages the subject’s rights is key.
For name rights, claimants should prepare to demonstrate the following:
- The name enjoys a reputation in China and is known to the relevant public.
- The relevant public associates the name with the subject.
- There is a stable link between the name and the subject.
Evidence should primarily be obtained from mainland China in order to demonstrate influence among Chinese consumers. While many celebrities can show that they enjoy a high reputation in their home country (or elsewhere outside China), it may be more difficult to find evidence of this in mainland China. Online searches through Baidu, Chinese social media sites and Chinese publications, among others, are helpful in this regard. Claimants should also conduct a search of the China national library.
Once again, image rights can be more difficult to argue depending on the image being used. The disputed trademark must be identical or similar to the subject’s portrait – in other words, the claimant must be able to show that the trademark image clearly identifies the subject.
Publicity rights are designed to protect not only the reputation of the individual, but also their economic interests. The Supreme People’s Court has recognised that the use and registration of a trademark that is similar or identical to a person’s name could mislead consumers into believing that there is a direct relationship between that person and the trademark applicant (eg, ownership of the company, a licensing deal, endorsement or other types of permissive use). Therefore, damage to reputation is a crucial argument against the infringement of publicity rights.
Lastly, a bad-faith argument should be made. It is encouraging to see that bad faith in trademarks has been a major focus of Chinese reform recently, although it remains a fairly common issue. While bad faith is assumed in an argument of prior use, high reputation and damage to that reputation, there are now additional ways to demonstrate the bad faith of a trademark applicant.
One of the first things to consider is the applicant’s existing trademark portfolio. Has the applicant filed a large number of trademarks? This may show clear evidence that it has no intention to use the marks – especially where there is a large number, as well as a variety, of marks. Has the applicant filed any other famous trademarks or trademarks related to famous brands? This may demonstrate that the applicant has a history of trademark squatting. Finally, is the claimant familiar with the applicant? It is not uncommon for a bad-faith applicant to be a known party (eg, a previous or existing partner, or a party with which the claimant was once negotiating a deal). Showing that an applicant is a related party paves the way to proving bad faith in trademark cases.
After considering all the available arguments, individuals can proceed with the strongest case. Often, there will be multiple cases against an infringer, so be sure to establish an overall strategy. By pressing forward with the strongest case(s) first, any successful decisions (and the evidence collected in those cases) may be used to support subsequent cases, thereby saving time and money, as well as making difficult cases slightly easier by demonstrating a history of recognised bad faith. This strategy may even provide leverage to negotiate a settlement, thereby avoiding court or administrative action where preferable.
Celebrity case highlights
There have been a number of well-publicised cases in China dealing with publicity rights. Disputes involving celebrities often garner significant attention; therefore, many of these cases have been published by the authorities or otherwise been made publicly available. While Chinese courts and administrative offices do not officially rely on precedent, in practice, it can still be helpful for IP practitioners to cite similar cases or, at a minimum, familiarise themselves with such cases in order to use the information to strengthen their own. Moreover, Supreme People’s Court decisions are particularly useful, as these establish standards that are implemented across the country. Previous rulings from the high court in the province of the relevant dispute, the specific court in which the case is being heard or the specific administrative authority overseeing an administrative action can also serve you well. Using precedent from courts or offices in different provinces is generally less reliable.
Jordan v Qiaodan
Michael Jordan was party to one of the most well-known cases involving publicity rights in China. Jordan filed numerous actions against a large Chinese sportwear company, Qiaodan Sports, in relation to trademarks that utilised his name, his brand and even the names of members of his family.
Reviewing two of those cases, the Supreme People’s Court ruled to support Jordan’s claim to name rights over ‘乔丹’, the Chinese transliteration of ‘Jordan’. In both cases, the court issued several important points of law to better guide courts across the country on publicity rights issues and strengthen name rights overall, making it a vital reference for future cases.
As a high-level summary, the Supreme People’s Court opined that part of a full name or nickname, as well as a translation or transliteration of a name, can be protected by name rights, provided that a stable link can be proven between the individual and the name – as Jordan was able to do with ‘乔丹’. However, the court did not recognise a name right over the trademark QIAODAN, which is the pinyin or Romanisation of ‘乔丹’, because there are other Chinese characters that could be used to produce the same ‘qiaodan’ sound and a stable link was not properly established. Finally, when it came to the image below, Jordan was unable to invalidate the trademark based on his portrait rights as the Supreme People’s Court reasoned that the figure was only a silhouette and held no clear or specific facial characteristics associated with Jordan; therefore, the public would not recognise the image to be that of Jordan.
Xiang magazine case
In contrast, Chinese Olympian and track star Liu Xiang won his claim of infringement of image rights when a publisher printed his image on the cover of and throughout a shopping magazine. While the publisher argued fair use, the court rejected this defence, holding that the public could not distinguish the photo of Xiang from the magazine advertisements and could therefore mistake Xiang to be endorsing the goods in the ads and the related local department store.
Bolt victory pose
Another important case involved Olympic star Usain Bolt and his opposition of the image below.
In this case, the Trademark Office found that not only was Bolt well known in China, his famous lightning bolt victory pose was as well. The disputed mark was held to be similar to Bolt’s famous pose and similar to his identity through its depiction of a yellow shirt and similar facial features, thereby guaranteeing Bolt’s victory against the bad-faith filers.
Watson and Swift Class 25 oppositions
In two separate opposition cases involving name rights, actor and Burberry spokesperson Emma Watson and singer Taylor Swift were both able to successfully oppose trademarks that were identical to their names in Class 25. In both cases, the CNIPA agreed that the celebrities had provided sufficient evidence to prove their fame (high reputation) in China and that the disputed marks would mislead consumers as to the relationship between the mark and the celebrity, thereby damaging their name rights.
Publicity and image rights have frequently been in the spotlight in China in recent years, with protection over names and images subsequently becoming stronger. While the laws covering these rights can be fairly broad, clarifying regulations have been issued over time, with more likely in the pipeline as future cases are decided. Overall, claimants should develop a smart strategy to attack bad-faith trademark filers, including a variety of arguments and legal grounds, while carefully collecting evidence – especially relating to prior use and reputation. With a well-thought-out strategy, success in defending publicity and image rights in China is entirely attainable.