The registration of a word mark identical or confusingly similar to the name of a celebrity which causes confusion and misidentification among consumers, corresponds to the circumstance described in the Trademark Law by the terms “the application for trademark registration shall not infringe other person’s prior rights”.
Nicole Mary Kidman, the winner of worldwide prestigious awards including the Academy Award for Best Actress, Golden Globe Awards and the Silver Bear for Best Actress at the Berlin International Film Festival is aninternationally well-known actress with high reputation in the circles of entertainment, fashion and philanthropy around the world. Her name “NICOLE KIDMAN” and its corresponding Chinese name “妮可·基德曼” are highly recognisable among the Chinese public.
On April 30, 2006, a person named WU filed an application for registration of the trademark “NICOL KIDMAN” (Registration No.5327996) (hereinafter referred to as the Disputed Trademark) with the China Trademark Office (CTMO). On August 7, 2009, the CTMO approved the registration of this trademark for “umbrella, frames for umbrellas or parasols, artificial leather, purses, school satchels, handbags, briefcases, travelling bags, leather straps, fur” in Class 18.
NICOLE KIDMAN (the Applicant) filed an invalidation application against the Disputed Trademark with the Trademark Review and Adjudication Board (TRAB), claiming that the registration of the Disputed Trademark infringes her prior personal name right and that WU’s intent in registering such mark is to seek illegitimate interests by taking advantage of her reputation, which is in violation of the good faith principle and constitutes an act of unfair competition.
On November 5, 2014, the TRAB ruled in favor of the Applicant and declared the Disputed Trademark invalid. The TRAB found that the evidence adduced by the Applicant such as copies of the movie stills, video of Oscar Ceremony, magazine advertisement and exclusive interview material, news about the Applicant taking up a position in the United Nations and being awarded medal of honour, together with the materials of Chinese website reports of the Applicant, had proven that the Applicant’s name "NICOLE KIDMAN” had a high reputation in China before the filing date of the Disputed Trademark. The TRAB considered that the registration of the Disputed Trademark, which is almost identical to the Applicant’s name, is likely to cause confusion and misidentification among consumers. Therefore, the TRAB found that the registration of the Disputed Trademark constitutes the circumstance described in Article 31 of the Trademark Law of 2001 (Article 32 of the Trademark Law of 2013) that “the application for trademark registration shall not infringe other person’s prior rights” and decided to invalidate the trademark.
WAN HUI DA represents NICOLE KIDMAN in the invalidation procedure.
In previous practice, according to Trademark Review and Adjudication Criteria (2005) (hereinafter referred to as the 2005 Criteria), in order to be considered as a "prior right", and obtain protection against a trademark application or registration, a name had to be identical with the trademark, or the trademark had to be considered, by the relevant public, as the translation of the name.
In 2014, the Beijing High People's Court issued a Guide concerning the Trial of Administration Cases of Trademark Authorization and Confirmation which clarifies that “An identifying sign that is capable of being used in a corresponding relationship with a specific natural person may be considered as that person’s name” and “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”.
Thus, the Beijing High Court placed the emphasis on the identifying function of the name and of the trademark: identifier of that person (for the name) and of the origin of goods or services (for the trademark). Therefore, it was not any more considered as a pre-requisite that the name and the trademark be identical, as long as, due to the circumstances, the risk of confusion exists.
In this case, it is worth noting that WU also filed an application for “NICOLE KIDMAN” which is identical with the Applicant’s name, in Class 25, which clearly demonstrates his bad faith and his intention in taking advantage of the reputation of the Applicant in the field of clothing, bag etc. The TRAB took the bad faith of the applicant into consideration.