A pseudonym, as an expression of the name of a natural person, may be considered as prior rights by P.R.C Trademark Law and enforced by the interested party as such, in certain circumstances.
Mr. Francisco Rabanne Cuervo, a famous Spanish fashion designer, has been using the pseudonym PACO RABANNE for many years, and such pseudonym is extremely well-known around the world in the fashion circle. Mr. Francisco Rabanne Cuervo was awarded the title of “Knight of the Legion d’Honneur” by the French Ministry of Culture and Communication.
In September 2009, a company named Shaoxing Modeng Tie & Garment Co., Ltd. filed an application for the registration of the trademark “PACO RABANNE” in Class 25, covering the goods “necktie; suspenders; socks; gloves; etc.”.
The French company PACO RABANNE filed an opposition against this trademark, mainly based on its prior registered mark in class 25 and the prior rights of name owned by Mr. Francisco Rabanne Cuervo. The CTMO rejected this opposition considering that there was insufficient evidence to prove the opposition claims. In the review application that followed, the TRAB found that PACO RABANNE is a very distinctive name, and that it could not be a coincidence for a Chinese individual/company to chose such an identical mark; besides, PACO RABANNE, as the pseudonym of Mr. Francisco Rabanne Cuervo, was known to the related public. The TRAB ruled that the mark would easily cause prejudice to the prior right of name and disapproved the registration according to Article 31 of the Trademark Law.
Comparing with ordinary people, celebrities, no doubt, are socially distinguished due to their influence. Then, when a celebrity uses his/her name as a trademark, the consumers will easily connect such branded products with the celebrity and have a positive impression on the goods bearing such mark, which is good for marketing the brand and the goods bearing such mark. For this reason, some trademark squatters attempt to take advantage of celebrities’ names by commercially using such name, or pseudonyms or slightly modified names, and even seeking the trademark registrations.
Article 99 of the General Principles of the Civil Law stipulates that, “citizens shall enjoy the right of personal names and shall be entitled to determine, use or change their personal names in accordance with relevant provisions. Interference with, usurpation of and false representation of personal names shall be prohibited”. Article 31 of P.R.C Trademark Law that sets out the general principle that trademark applications must not harm prior rights is also a legal ground for protecting the prior right of (celebrity’s) names.
This case is good example in particular as it applies to an alias or pseudonym. The points below are worth mentioning.
- The name to be protected extends to pen name, stage name, pseudonym, alias and other informal names of a natural person. When protecting such informal name, one has to prove that such name is connected to the specific subject through actual use. In this case, ample evidence was produced that PACO RABANNE has been well known in the fashion circle as the pseudonym of Mr. Francisco Rabanne Cuervo for many years, and the trademark applicant knows or should know this fact. Therefore, its conduct constituted the usurpation of Mr. Rabanne’s name and such unauthorized use would obviously damage Mr. Rabanne’s private rights.
- Still, it was necessary to justify a particular situation, in order to be able to enforce the rights of name. In this case, Mr. Rabanne used his own pseudonym to create a brand and build up a company, which was the interested party, authorized to enforce the rights of name. This has been recognized and affirmed by the Courts in one prior similar case, namely, Appellant JIN Shengqiang v.s Appellees TRAB & KATE MOSS (2011 Gao Xing Zhong Zi No.723). In that case, the Courts of first instance and second instance both affirmed the qualification of STORM MODEL MANAGEMENT LIMITED, the brokerage agency of English model KATE MOSS, to enforce the rights of name on behalf of KATE MOSS.