Opinion TRADEMARK TALK Rights in China Time is right for public figures to register in China Erin Hennessy Salsa Ahmed

In February and March 2017, the Chinese consuming public associates the surname with personal names can be used as a prior right Trademark Office (“TMO”) provisionally one particular individual. to invalidate infringing marks.10 These two approved 38 trademark applications filed Since surnames are commonly used recent SPC decisions will result in a proliferation by Donald Trump and published them for to name businesses, the Lanham Act and of trademark applications by foreign public opposition. US President Donald J Trump has common law preclude one individual from figures. Although Article 28 of China’s faced obstacles in obtaining trademark rights retaining exclusive rights to use his or her trademark laws requires the TMO to complete in China. For 10 years, he litigated a trademark surname as a trademark.6 However, full names its examination within nine months of the infringement suit in China against Dong Wei, and surnames are treated differently under the application filing date, the influx of applications who had filed a similar mark for construction Lanham Act. For example, while the US Patent will likely create a backlog. services two weeks prior to Trump.1 On 6 and Trademark Office might approve the When filing applications, prospective September 2016, the TMO finally invalidated registration of the full name “JOHN SMITH” trademark owners must also carve out future Wei’s mark, and Trump’s mark was registered without proof of secondary meaning, it may rights to the family name. Broad trademark on 14 February 2017.2 On 27 February 2017, not approve “SMITH” unless the surname rights over personal names, especially the TMO provisionally approved nine of has acquired secondary meaning in the surnames, raise a key concern regarding Trump’s applications for publication. On 6 marketplace.7 The common law rules are even how to share rights to the name among March 2017, the TMO provisionally approved more restrictive; the common law does not family members. As Annie Tsoi, an attorney 28 applications for publication. award trademark rights to either surnames at Deacons, a Hong Kong based law firm, These approvals followed two recent or first names without proof of secondary stated, “The downside of having the mark Chinese Supreme People’s Court (“SPC”) meaning.8 in an individual name is that the business will decisions to award public figures greater Comparatively, in China, there are fewer always be at risk that the individual may stop trademark protections in China. The first restrictions to registering personal names. the authorisation of the company to continue decision, issued in December 2016, awarded In order to file a trademark for a personal to use the mark. The individual may also retired basketball player Michael Jordan name, individuals need only submit a personal start another line of business outside of the trademark rights over the Chinese characters identification document. Historically, under company’s control. Such split of ownership will equivalent to “Jordan”.3 The second decision, China’s first-to-file system, unrelated third no doubt create a lot of conflicts.” in January 2017, limited trademark rights parties regularly registered names of well- When conflicts arise or when the over names of public figures in an attempt to known figures as trademarks, resulting in trademark owner passes away, fights over who prevent trademark squatters. rampant squatting.9 However, in January 2017, retains rights to the family name are inevitable. Although China’s first-to-file system the SPC decided that trademarks covering Therefore, trademark owners must plan for has historically made it difficult to enforce the names of “public figures in fields such these contingencies at the time of filing. trademark rights against squatters,4 the as politics, economics, culture, religion and SPC’s recent decisions aim to support foreign ethnic affairs” are forbidden under Article Footnotes investments and commercial activities in 10(8) of China’s trademark laws. Article 10(8) 1. http://bit.ly/2osgBkY China through greater trademark protections. states that signs “detrimental to socialist 2. Id. http://nyp.st/2l8tBHD Significantly, these recent decisions award a morals or customs, or having other unhealthy 3. http://nyti.ms/2qwbKQL broader range of protection over names of influences” cannot be used as trademarks. Not 4. Id. public figures in China than the US. The time only does the SPC’s decision signal a shift to 5. 15 USC §1052(e). is ripe for public figures to register and enforce control trademark squatting of names of public 6. Federal registration of surname marks – their trademark rights in China. figures, but it may also be a first step toward Introduction, 2 McCarthy on Trademarks and regulating uncontrolled counterfeiting. Unfair Competition § 13:28 (4th ed). China v US The SPC’s decision was issued shortly after 7. Id. In the US, individuals have limited trademark the SPC awarded Michael Jordan a trademark 8. Secondary meaning for personal name marks rights over their names. The Lanham Act in his name, consequently invalidating a – Rationales for requiring secondary meaning, prohibits the federal registration of a mark Chinese apparel company’s registration for 2 McCarthy on Trademarks and Unfair that is “primarily merely a surname” unless it “Qiaodan”, the Chinese transliteration for Competition § 13:3 (4th ed). has acquired secondary meaning.5 Secondary “Jordan”. The Jordan case and Trump’s recent 9. http://bit.ly/2osgBkY meaning attaches to a surname when the victory against Wei demonstrate that rights to 10. http://bit.ly/2qaVvnO

Erin Hennessy is a partner in Bracewell’s technology group. Salsa Ahmed is an associate in Bracewell’s New York office.

18 Intellectual Property Magazine May 2017 www.intellectualpropertymagazine.com