The intolerable misuse of trademark registration

Editor's note: Sun Yang is an associate professor at China University of Political Science and Law. The article reflects the author's opinions and not necessarily the views of CGTN.

Trademark registration is currently a popular business strategy among Chinese enterprises. With increased awareness about intellectual property protection, Chinese entrepreneurs are looking to exclusively control distinguished commercial marks attached to their products or services in the course of commercial circulation. Some trademark registrations, nevertheless, undermine the administrative process and violate the trademark law.

Two Chinese companies in the provinces of Guangdong and Hunan have recently filed trademark registrations for the full name of deceased doctor Li Wenliang, who was the first to sound the alarm over a SARS-like illness that would later be known as COVID-19. While people in the country were still mourning his death, the behavior of the two enterprises caused outrage among the public. Eventually, both enterprises withdrew their applications and made official apologies.

Although the two companies took back their applications, the focal issue remains whether their endeavors were legitimate and subsequently possibly approved in terms of trademark law and administrative regulations.

The trademark law establishes a comprehensive system to determine valid registration based on its distinctiveness, which is the core of trademark validity. Distinctiveness demands that a valid trademark be distinct from other commercial marks in the same category of goods or services. This is designed to prevent potential consumer confusion.

Accordingly, whether a registered mark could be confused depends on distinctiveness. Simply put, a trademark should be notable or somewhat famous to gain its distinctiveness on the market.

To achieve distinctiveness, entrepreneurs usually focus on advertisement, commercial promotion, good quality and reliable after-sale services. This common practice, however, requires money and time. When entrepreneurs are reluctant to invest in a trademark, they could look for shortcuts.

Unfortunately, one such alternative can be the name of an individual, usually a public figure or celebrity. To be clear, such a trademark registration violates the trademark law and administrative regulations.

Article 32 of Trademark Act states that the trademark registration should not jeopardize prior rights belonging to civilians. Such rights include not only IP rights, but also a host of civil rights like the right to a name. An individual's name should not be directly registered as a trademark without authorization.

The registration of an individual's name as a trademark causes undesirable consequences. The likelihood of consumer confusion is of great concern to the illegitimate trademark registration.

Consumer confusion is a major criterion to measure trademark infringement. In other words, only unauthorized uses that cause the likelihood of consumer confusion should be deemed as trademark infringement.

In the case of Li's trademark registration, there is no evidence that the deceased doctor authorized the use of his name.

The two companies intentionally used his name for the trademark registration. It is likely that the public would have been confused about the relationship between Dr. Li and the two companies had the registration been eventually approved.

People could have wondered why a deceased doctor would still be active on the market, and what would the product or service offered by the enterprises be. Even worse, some may purchase the product or service by believing in doctor Li's virtues without checking the authenticity of the trademark. This is an example for the likelihood of consumer confusion.

Even though consumers are clever, the approval of such trademark registration still jeopardizes the rights of Dr. Li. If the product or service provided by the two enterprises turned out to be of low quality, which would be detrimental to consumers, backlash could be directed at the doctor and his family.

Trademark registration is a common practice by most enterprises, yet the procedure should follow the basic principles of the trademark law.