On 5 November 2015 Beijing Intellectual Property Court made a decision to render protection of the name of the late pop star Michael Jackson on an invalidation action filed by the trustees of Michael Jackson’s estate against “MICHAEL JACKSON” trademark registration in Class 25 owned by a Chinese company “Fujian Fengshang Fashion Co., Ltd.” .
On 14 March 2013, the trademark “MICHAEL JACKSON” was registered in China under Registration No.8647078 in Class 25 on such goods as clothing, footwear, headgear, neckties and gloves by a Hong Kong company “DUO Fashion International Group Limited”, and the registration was transferred to its current owner Fujian Fengshang Fashion Co., Ltd. on 13 January 2015. On 2 July 2014, the trustees of Michael Jackson’s estate filed an application for invalidation against this registration with Trademark Review and Adjudication Board (“TRAB”). However, TRAB decides to maintain the petitioned trademark registration by finding that a deceased person does not enjoy rights to his/her name under current Chinese legal framework. The trustees of Michael Jackson’s estate (“plaintiff”) filed an appeal, via a third party, against the TRAB decision to Beijing Intellectual Property Court.
The repersentative of trustees of Michael Jackson’s estate (“plaintiff”) claims that the registration of the petitioned trademark “Michael Jackson” is an infringement on the property rights associated with the name of the late pop star Michael Jacskon, and the plaintiff’s rights regarding the domain names related to “Michael Jackson”. The plaintiff further claims that registration of the petitioned mark will injure its merchandising rights related to the name of Michael Jackson, and will be disturbing the market order because it misleads the public to believe that the goods sold under the petitioned mark are associated with the late pop star Michael Jackson.
Beijing Intellectual Property Court (“The Court”) holds that the plaintiff’s claims of protection of Michael Jackson’s rights to his name, the related domain name rights and merchandising rights are groundless. The Court assserts that a deceased person is no longer subject to protection of his/her name. However, the Court still overturned the TRAB decision by finding that Fujian Fengshang’s registration of the trademark will likely to cause confusion among the public and thus is of negative impact on the society, because the name Michael Jackson is an estate of great monetary value to his heirs, and the owner of the disputed trademark is not related to Michael Jackson in any way. The Court thus renders virtual protection to Michael Jackson’s name, not from the perspective of protection of a private right, but from the perspective of protection of public interest.
The Court calls for TRAB to adopt relative consistent criteria when examining cases with the same or similar nature.
Actually it is not the first time that a Chinese court found that unauthorized trademark registration of names of deceased famous person should be recognized as being of “other negative influence” under Article 10.1.8 of China Trademark Law. In October 2014，Beijing High Court also made a notable decision to find that unauthroized registration of the late kungfu star Bruce Lee’s Chinese name“李小龍” is of “other negative influence” under Article 10.1.8 of China Trademark Law.