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Although not explicitly included in China’s Trademark law when defining what may constitute a trademark, portraits of individuals are also registered as trademarks with consent of given person.
What rights then, if any, exist under trademark law in terms of protection of personal names?
When defining what a trademark is, most legal texts will apply to “any word, name, symbol, or device, or any combination used or intended to be used, in commerce to identify and distinguish goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate source of goods”.
As discussed, in foreign countries, it is common for big celebrities to commercialize their portraits or names, or for companies to use famous names to brand products, such as Napoleon wine and Churchill cigar, but this is not a common practice in China, especially when it comes to names of politicians – these names cannot be registered as trademarks.
A harmful effect for social morality? Article 10.8 establishes that ‘any sign which infringes upon socialist morality or practice or of other harmful effects may not be used nor registered as a trademark’.
Making a connection between Lu Xun and alcohol can definitively be claimed as a negative social influence. However, it can be argued that grape-based wine is only alcohol with proven health benefits and might be considered a health-conscience activity in China, as well as a fashionable trend and a more upper-class activity. The Chinese government is promoting grape-based wines as an alternative to grain-based alcohol, grain that could be used to feed China’s massive population.
Beatrix Potter, also a deceased famous writer, was registered as a Community Trademark in February 2004 by publishing company which owned already expired copyrights for her works. But contrary to Lu Xun case, goods to be marketed do keep a relationship with author’s reputation.
A possibility for Acquired Distinctiveness? Another discussion about personal names within context of this case is whether or not consumers could come to associate deceased writer’s name with said goods, and not really about registering personal names at all since product (wine) is not attached to any actual person seeking to use his or her personal name.
Article 11.3 provides grounds to refuse registration, as opposed to Article 10.8 which prohibits both use and registration, thus leaving room for use of mark in question. Specifically, Article 11.3 prohibits registration of ‘any sign which is devoid of any distinctive character’. Therefore, sign listed in paragraph above may be registered as a trademark if it has acquired a distinctive character following use and is easy to distinguish.
This option would surely leave Lu Xun’s reputation vulnerable to tarnish, for if goods bearing Lu Xun trademark were of a poor quality, consumers would say “Lu Xun wine” is so bad, eventually harming reputation of a name of such a great influence in PRC. But if wine so branded started to be successful among consumers, it might –in practice- acquire distinctiveness through use. On this basis, it can be concluded that if if Lu Xun’s descendants were to operate wine company and grow its reputation, a trademark registration might be successful.
An example of this is Lu Xun Art School, founded in 1938 and enjoying an excellent reputation in educational field. The registration of the鲁迅艺术学院 trademark can only serve as a way to honor deceased author. Of course, that school is conducting a commercial activity on its own, like that of selling goods bearing name, but contrary to Lu Xun’s descendants, Lu Xun is only part of overall trademark. Perhaps, a trademark like鲁迅孙子的酒公司 (Lu Xun’s Descendants’ Wine Co.) could be an alternative.
Thus, while personal names may be registered as trademarks in China, 1.There must be consent from person. 2.There must be a clear connection between name applied and company or product. 3.It must not infringe social morality or practice or of other harmful effects. 4.It must be distinctive.
If Lu Xun were alive today, he would have probably tried to benefit from protection conferred by a trademark registration. Could we still see today a famous writer being denied registration of his name because people have come to associate it with moral values? The Amended Trademark Law of PRC lacks any reference to registration of personal names or portraits, but if harm to social morality is not an issue, then law may not be that different from other legal systems.
From this study case, we can conclude that,
1.Presumably, as long as personal name is not held in such moral, historical, cultural esteem in China to be considered owned by all of society, one should be able to register that name; 2.As suggested above, if descendant’s wine company were to gain a reputation over time, an eventual trademark registration might be successful; and 3.If as for Lu Xun Art School, trademark application was changed to Lu Xun’s Descendants’ Wine Company, application might be successful.
Established in 1992 as one of first private law firms in China, Lehman, Lee & Xu employs a highly-experienced team of over 110 lawyers, patent and trademark agents representing both foreign and Chinese clients throughout China in a variety of enterprises. With branches in various Chinese cities including Beijing, Shanghai, Shenzhen and Hong Kong, Lehman, Lee & Xu is considered a leader of re-established Chinese legal profession. The firm has been recognized by media and Chinese Ministry of Justice as one of best law firms in China. For more information, please visit firm’s website at www.lehmanlaw.com.
Jordi Llopis hails from Spain and works in the Beijing office of Lehman, Lee & Xu.