Many of the most famous and valuable trade marks, particularly in fashion and sports and entertainment stem from use of personal names of individuals. Fashion fans can name Alexander Wang, Giorgio Armani, Stella McCartney and Victoria Beckham; in sports and entertainment the names of David Beckham, Leonardo di Caprio and Stephen Spielberg are known to many.
However, many jurisdictions around the world hesitate to automatically grant trade mark registration rights in an individual’s personal name without a combination of established reputation and long-standing continuous use in a commercial context. From a trade marks perspective, the key issue affecting personal names as trade marks is the right of consumers to be free from confusion as to the source of goods or services.
While many may not have seen Bruce Lee’s films, the name Bruce Lee should be familiar to most readers. Bruce Lee, the action film actor, martial arts master, is a pop culture icon of the 20th century. He adopted the screen name 李小龍, which when transliterated/translated into English becomes Little Dragon Lee.
In China, a recent trade mark piracy case brought before the Beijing Higher People’s Court involved the pre-emptive registration of Bruce Lee’s Chinese name as a trade mark for promoting automobiles and cycle cars in Class 12. The applicant was an individual by the name of Chaoqin ZHANG. The application was accepted for registration by the China Trademarks Office (CTO), although it was opposed during the statutory opposition period by Shannon Emery Lee (daughter of the late Bruce Lee) and Bruce Lee Enterprise, LLC. The opposition was initially rejected by the CTO. The opponents then pursued an appeal before the Trademarks Review & Adjudication Board (TRAB) who squarely disapproved of the registration of the disputed China trade mark application.
Dissatisfied with the TRAB decision, Chaoqin ZHANG appealed to the Court of First Instance, Beijing No. 1 Intermediate People’s Court and failed. He persisted with an appeal to the Beijing Higher People’s Court. At the trial of the case, the courts recognised the martial arts achievements of Bruce Lee and its entwinement with his film career in Hollywood and Hong Kong. The notoriety of the celebrity Bruce Lee, while being a relatively common personal name and Lee being a common surname among the population of China, can still be associated with the martial arts master and late actor. If the disputed trade mark was permitted to be registered in China, public confusion would result as the automobiles or cycle cars promoted under the mark Bruce Lee in Chinese would be associated with the late actor. Given that Chaoqin ZHANG had no authorisation by Bruce Lee Enterprises, LLC or Bruce Lee’s family, the appeal was rejected and the TRAB’s decision to refuse registration of the disputed mark was upheld.
Despite Bruce Lee’s sudden death in 1973, his legend and his name clearly live on.