China: Choosing the right weapon

The names, portraits, voices and other distinctive representations of celebrities – as well as images of fictional characters, individual signatures and live performances – have become increasingly popular and influential. Unfortunately, this also makes them attractive to potential squatters, who would like nothing more than to free ride on this reputation. How best to provide comprehensive protection for publicity and image rights is becoming an increasingly urgent issue for rights holders. While some IP laws (eg, the Trademark Law and the Copyright Law) and common law (eg, the Anti-unfair Competition Law) provide certain protection, this is still limited, suggesting that independent laws or regulations that specifically address publicity and image rights may be needed.

Defining ‘publicity and image rights’

There is no clear concept of ‘publicity and image rights’ in Chinese law, although most agree that the following points should be taken into consideration when arriving at a definition:

• The subject of the publicity and image rights at issue – usually, the subjects of such rights are images with commercial value which can influence the public. As the public is interested in these images, they are likely to pay more attention to products or services bearing such images. Therefore, it could be concluded that the subject of a publicity and image right must have a certain reputation and influence.
• The nature of the publicity and image rights at issue – publicity and image rights are a kind of property. Even if the subject of the right focuses on a particular image, when these particular images are used commercially (eg, in the course of advertising), they will result in profit and create economic value, which is protected under publicity and image rights. The economic value of an image is a kind of property by nature; therefore, publicity and image rights are typical property rights.

Publicity and image rights are thus exclusive rights that a civil subject enjoys in relation to his or her commercially valuable name, portrait, fictional or created character or animal image, personal signature or action style.

Trademark rights and publicity and image rights

Unlike copyright, which requires that fictional characters be original, images of celebrities and fictional characters can also be protected by trademark rights, as they can help to distinguish goods and services on which they appear. Trademark law requires that the subject be distinguishable from other marks provided by other parties; thus, the elements of publicity and image rights that can be protected by trademark rights are those that are distinct. This means that personal names, portraits, names of fictional characters and action styles can potentially be registered and protected as trademarks.

Elements of an image that encompass characteristics of real people or artistic features of fictional characters do not fulfil this function of distinguishability. However, due to the commercialised result, such elements can become gradually associated with particular goods or services, resulting in them acquiring a secondary meaning to distinguish the source of goods or services.

Protection under Trademark Law

Publicity and image rights can be protected by Article 32 of the Trademark Law, which indicates that a trademark application must neither infringe another party’s prior existing rights nor be an improper means to register a mark that is already being used by another party which enjoys substantial influence. According to trademark examination criteria, the ‘prior existing rights’ mentioned in Article 32 refer to other rights (eg, copyright, trade name rights, personal name rights, portrait rights and design patents), excluding trademark rights.

The following case illustrates the situation.

The opposed party filed the mark IVERSON (the opposed mark) in Class 25. The plaintiff filed a cancellation in an attempt to have the mark removed, based on prior rights in the personal name owned by famous basketball player Allen Iverson. The plaintiff is a famous sports products manufacturer and Iverson endorses its products and authorised it to safeguard his personal rights.

The Beijing No 1 Intermediate People’s Court held that ‘Iverson’ is a common foreign surname and is not exclusively associated with Allen Iverson. Thus, the plaintiff’s argument that it had prior rights in the personal name was not supported.

However, the Beijing High People’s Court overruled this decision and held that the prior rights indicated in Article 31 of the (previous) Trademark Law should be interpreted as those rights (excluding trademark rights) protected by civil and other laws and regulations as legal civil rights, including rights in a personal name. When determining whether rights in a personal name are damaged by a filed mark, the name must have a certain prior reputation. In this case, Iverson had authorised the plaintiff to safeguard the rights in his personal name. In addition, the evidence submitted by the plaintiff was sufficient to prove that an association between IVERSON and Allen Iverson had been established among the Chinese public. The application to register the opposed mark had been filed without Iverson’s consent and the public could well connect the opposed mark IVERSON with Allen Iverson, which might cause consumers to believe that the source of products was connected to him. Thus, the application to register the opposed mark damaged Iverson’s rights in his personal name. The IVERSON mark was eventually cancelled.

The Beijing High Court issued another favourable decision in the KATE MOSS trademark invalidation case. The KATE MOSS mark was eventually cancelled by the court based on Kate Moss’s name rights. The court held that the evidence submitted was insufficient to prove the reputation of the name ‘Kate Moss’ in China. However, it held that the disputed mark unfairly used the name ‘Kate Moss’ for commercial purposes and this infringed Moss’s name rights because:

• ‘Kate Moss’ is not an existing fixed term and the registrant did not provide the grounds for using the term as a trademark;
• as an operator in the clothing industry, the registrant should have better knowledge of the industry than the general public; and
• Kate Moss appeared as a model for the Ports Spring/Summer Collection 2002.

Limitation of trademark protection

Even if an image can be protected as trademark, protection is still limited in the following ways:

• Limitation on subject – even though the elements of an image (eg, a personal name or portrait) can be protected by the Trademark Law, other elements of image (eg, a voice or non-distinctive slogan) may not constitute the subject of a ‘prior right’ as defined by Article 32 of the Trademark Law, and may not be protectable by other articles of the law.
• Limitation on party – the applicant claiming the personal right should be the rightful owner or have the authority to safeguard such right on behalf of the rightful owner.
• Limitation on life – personal name and portrait rights are personal rights which expire on death. Thus, protection of these personal rights under the Trademark Law expires if the rightful owner passes away. However, the protection preventing others from registering and using the name or image of a person may be maintained by the law in a different way. For example, an application to the name Mao Zedong or Mao’s image would be rejected by the Trademark Office automatically based on negative influence under Article 10.1.8 of the Trademark Law. However, such protection may be limited to particular people with influence.
• Other limitations – the examination criteria follow the trademark examination, which may be stricter, especially on the similarity comparison.

The following case reflects these limitations.

The opposed party filed a mark (the opposed mark) in Class 25. Plaintiff Nike International Ltd filed a cancellation in an attempt to have the mark removed on the grounds of prior portrait rights belonging to famous basketball player Kobe Bryant. However, both the Beijing No 1 Intermediate People’s Court and the Beijing High People’s Court rejected Nike’s claim for the following reasons:

• Nike claimed that the opposed party infringed the merchandising rights in Bryant’s portrait, but failed to submit any evidence to prove that it was authorised to safeguard such rights on Bryant’s behalf.
• The opposed mark was not confusingly similar to Bryant’s image characteristics, meaning that the public was unlikely to connect the opposed mark with Bryant.

Conclusion

Protection for publicity and image rights may be limited under the Trademark Law. Even if a personal name or portrait falls within the scope of such protection, the following questions shall be considered if the claim of such prior right is being relied on:

• Is the opposed mark the same as or similar to the subject of the prior right, or is the public likely to associate the opposed mark with the name or portrait?
• Does the party which has raised the action have the legal authorisation and basis to claim such prior right (ie, has it been authorised by the person who enjoys the claimed personal rights)?
• Has the subject of the prior right (ie, the personal name and portrait) obtained reputation in mainland China before the opposed mark’s filing date, so that registration or use of the subject may cause damage to the rightful owner?
• Has sufficient solid evidence been submitted to prove the reputation of this person and his or her name and portrait in mainland China?

It seems that while protection is available under the Trademark Law, there are still necessary thresholds which must be met by the rights holder and fulfilling these elements is not always easy or straightforward. Therefore, an application to register a personal name or portrait as a trademark is highly advisable, so that the Trademark Office can reject a later filed identical or similar mark automatically, which could bar registration by a squatter and may save future enforcement time and costs. 

Samiko Sun
Trademark attorney
[email protected]

Samiko Sun joined Kangxin in 2010 and started her career as a trademark attorney. Her main areas of practice are trademarks, copyright, domain names and Customs. Ms Sun has considerable experience of trademark prosecution, including applications, oppositions, recordal of trademark assignments, recordal of trademark licence agreements, customs recordal of registered trademark, domain name registrations and dispute resolutions, as well as copyright recordal.