China's highest court gives guidance on trade marks for public figures
Further to my recent blog on the work of the Beijing IP Court, the Supreme People's Court ('SPC') in China (the country's highest court) has recently given further guidance on the ability to register personal names of celebrities and other public figures in China.
This guidance comes after the successful appeal to the SPC by Michael Jordan in relation to trade marks registered for Qiadon ('Jordan' in Chinese) which Michael Jordan argued was in bad faith with the intention of exploiting his brand.
The SPC stated that trade marks covering the name of 'public figures' in politics, economics, culture, religion and ethnic affairs are forbidden under Chinese trade mark law.
Whilst this is positive to some extent, the position as to who qualifies as a 'public figure' has not been clarified and it appears that this continue to be decided on a case-by-case basis. There is clearly scope for the lower courts in China to interpret this issue subjectively and it therefore appears likely that the SPC will have to deal with this issue again.
The approach in China differs from that in many other countries. In the UK, public figures may register trade marks for their own names, providing they fulfil the criteria for a trade mark. For example, the mark must not be purely descriptive or a common-place word. Whilst some celebrities have been successful in registering a trade mark for their name in the UK, often action is taken for passing off of an image or name, rather than relying on trade mark infringement.
Passing off was relied on in the high profile case brought against retail brand Topshop by celebrity Rihanna in relation to the use of her photograph on a t-shirt. The criteria to succeed in these cases is different to trade mark claims, as the celebrity needs to show that there is goodwill or a reputation in the image and/or name which has been misrepresented to the public without their consent and they have suffered damage as a result. For registered trade mark infringement, there is no need for confusion or damage to the individual as a result of the infringing use.
Although the English Court has been clear that it is not possible to protect 'image rights', the importance of celebrities' own personal brands in today's media age means this is very much a live issue and one that the courts of both the UK and China are likely to increasingly be asked to address in the future.