“The evidence provided by the Opponent proves that Taylor Swift had a high reputation in music circles before the application date of the Opposed Trademark. The applicant of the Opposed Trademark attempted to seek profits by improperly taking advantage of the name of Taylor Swift. The registration and use of the Opposed Trademark infringe the name right of Taylor Swift.”
Legal and Regulatory Background
Article 32 of the “Trademark Law” provides that “The application for trademark registration shall not be allowed to harm other person’s prior rights, and no preemptive application by any unfair means of 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, USA, is a famous American country music 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” (See Image I) and its corresponding Chinese name are highly recognisable among the Chinese public.
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On January 22, 2010, a Chinese individual Mr. LI applied for the registration of the trademark “Taylor Swift” (See Image II) for the goods “Clothing; layettes [clothing]; swimsuits; shoes; hats; hosiery; gloves [clothing]; scarfs; strap; wedding dress” in Class 25.
The trademark was preliminarily approved by the China Trademark Office (CTMO) on November 6, 2010.
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On February 9, 2011, Taylor Swift (the Opponent) filed an opposition application 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 with the Trademark Review and Adjudication Board (TRAB) citing the prior personal name right. In the review procedure, the Opponent further collected and supplemented media coverage of the newspapers, magazines and Internet supporting the reputation of the name.
On March 12, 2015, the TRAB ruled in favor of the Opponent and rejected the registration of the Opposed Trademark. The TRAB held that the evidence provided by the Opponent could prove that “Taylor Swift” was the name of an American singer and as a natural person, who had the right to claim protection of such personal name right. The Opposed Trademark was identical with “Taylor Swift”. The evidence provided could also prove that Taylor Swift enjoyed a high reputation in music industry before the filing date of the
Opposed Trademark. Taylor Swift is not an existing word combination and the applicant of the Opposed Trademark did not reply or adduce evidence to prove the reasonable source of his trademark either. The applicant applied for the Opposed Trademark on the goods in Class 25 and attempted to seek profits by improperly taking advantage of the name of Taylor Swift. The registration and use of the Opposed Trademark infringed the name right of Taylor Swift and violated Article 32 of the China Trademark Law.
WAN HUI DA represented Taylor Swift in the opposition and review procedures.
Strictly speaking, the reputation of a natural person’s name is not a prerequisite for protection of name right. In 2014, the Beijing High Court issued a Guide concerning the Trial of Administration Cases of Trademark Authorization and Confirmation which clarifies that “Fame is not a prerequisite for protection of the name rights 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”, WAN HUI DA was representing Nicole Kidman in filing the invalidation based on 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 is likely to undermine the corresponding relationship between the related symbols and the true name right owner, which may damage the interest of the name right owner and cause confusion and misidentification among consumers.
In this case, the TRAB also takes the originality of name itself into consideration. 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 squatters, the correlation between the designated goods/services and the fields in which the person is involved.