I. Introduction to the case of review of the opposition against trademark “EMMA WATSON”

Case No.: [2014] No. 0000092218 by the Trademark Review & Adjudication Board of the State Administration for Industry and Commerce of the P.R.C.

The disputed trademark “EMMA WASTON” was applied for registration on December 6, 2010. Entrusted by foreign actress Emma Watson, the opponent (a company in the Cayman Islands) applied for opposing the trademark on the ground that the disputed trademark violated the earlier name right of Emma Watson. The Trademark Office did not support the ground of opposition. The opponent then submitted an application to the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce of the P.R.C. (TRAB) for a review of its opposition against the trademark.

The main ground supporting the application for reviewing the opposition against the above trademark is that Emma Watson is a famous British actress who once played the heroine in “Harry Potter”, a well-known movie series all over the world. The opposed trademark was a total plagiary of the famous British actress’ full name, so it infringed the right of the name “EMMA WATSON”.

During the review proceeding, the opponent submitted a letter of authorization issued by the name right owner Emma Watson: the introduction to “EMMA WATSON”, the web pages of “EMMA WATSON”’s speaking for BURBERRY clothing and the web pages of LANCOME advertisements, photos of “EMMA WATSON” on covers of some Chinese fashion magazines and thematic introduction to her in those magazines.

Recently, TRAB made a ruling and supported the opponent’s claim, holding that Emma Watson as a famous actress and the spokesperson of BURBERRY, a world-famous clothing brand, enjoys certain popularity; and that the words in the opposed trademark were exactly the same as the name Emma Watson, misleading consumers concerned to associate the opposed trademark with Emma Watson; and that the registration of the opposed trademark “EMMA WATSON” would be improperly used by the respondent for profit, so it was likely to harm the name right of Emma Watson, and has constituted the circumstance referred to in Article 32 of the Trademark Law where another party’s existing earlier right (name right) is harmed.

CCPIT Patent and Trademark Law Office participated in the opposition review as the opponent’s agent.

II. The above ruling on trademark opposition review reflects the trial standards and rules adopted by TRAB on the protection of earlier name right by the Trademark Law

(i) Relevant provisions and trial standards stipulated by the trademark law on the protection of the earlier name right.

According to Article 32 of the current Trademark Law, an application for registration of a trademark shall not be of such a nature as to infringe the existing earlier right of another person. In Trademark Review and Adjudication Standards executed by the Trademark Office and TRAB, name right is specified as belonging to “earlier right” 3 referred to Article 32 of the Trademark Law.

In Trademark Review and Adjudication Standards, both the Trademark Office and TRAB list the applicable conditions for trademark infringement of earlier name right. They are:

① The disputed trademark is the same as another person’s name;

② The registration of the disputed trademark has damaged or may damage another person’s name right.

Meanwhile, two factors to identify trademark infringement of earlier name right have been supplemented. They are:

① If the disputed trademark harms another person’s name right, the name owner’s popularity in public shall be taken into consideration;

② If the name of a public figure is used in the application for trademark registration, or another person’s name is knowingly applied for registration as a trademark for the purpose of damaging its owner’s interests, it shall be identified as infringement of another person’s name right.

(ii) An analysis of the trial standards and rules, followed by TRAB, on the protection of earlier name right specified in the trademark law based on the above ruling.

① The above is a typical case where TRAB identifies trademark infringement of earlier name right. It conformed to “applicable conditions for trademark infringement of earlier name right” in Trademark Review and Adjudication Standards, and had taken into consideration “other factors to be taken into consideration to identify trademark infringement of earlier name right” set forth in Trademark Review and Adjudication Standards.

Firstly, the disputed trademark and the earlier name right owner Emma Watson are completely the same.

Secondly, the TRAB identified that since the consumers concerned would easily associate the disputed trademark with “EMMA WATSON”, it may harm the name right of Emma Watson. In fact, the ascertainment of such harm cannot be made without the fact that Emma Watson has become a celebrity and such celebrity effect could produce commercial interests and advertising value. Once consumers associate the disputed trademark with the movie star Emma Watson, the commercial value would be transferred — from which is supposed to belong to “EMMA WATSON” and is attached to the name “EMMA WATSON” to the opposed trademark owner, resulting in a direct harm to the right of name “EMMA WATSON”.

② The above case was concerned with “other factors to be taken into consideration to identify trademark infringement of earlier name right” set forth in Trademark Review and Adjudication Standards.

First of all, in the ruling made by the TRAB, “EMMA WATSON” was identified in clear-cut terms as the name of a famous actress and the spokesperson of the world-famous clothing brand BURBERRY as well, and that the actress enjoyed certain popularity. In fact, it is because of the high reputation of Emma Watson that the important conditions for the infringement of the right of name “EMMA WATSON” are met. While what needs to be noticed is that, in this case, the opponent submitted only one but extremely vital evidence -- the information on Emma Watson’s appearing in well-known magazines and speaking for top brands in the world. As we can see, the TRAB valued materials that are truly “vital” and “familiar to the public” in judging the “popularity” of the “celebrity”.

The second factor to be taken into consideration, as provided by the TRAB, is that, the regulation “if the name of a public figure is used in the application for trademark registration, or another person’s name is knowingly applied for registration as a trademark for the purpose of damaging its owner’s interests, it shall be identified as infringement of another person’s name right”, is in fact ascertainment of the subjective maliciousness of the disputed trademark owner. In this case, the TRAB clearly pointed out that “the respondent aimed to improperly benefit from ‘EMMA WATSON’ the name by registering the opposed trademark for use on clothing and other goods.” That was inference of the respondent’s subjective maliciousness, which was indispensable from the high reputation of Emma Watson. The more famous the celebrity is, the more possible the respondent would know and embezzle his or her name in bad faith.

II. Conclusion

As a matter of fact, the provision in Trademark Review and Adjudication Standards on “protection of earlier name right by the trademark law” can be simply understood as “being the same as the name,” “causing damages to the earlier name right owner”, “the popularity of the earlier name right owner” and “the subjective maliciousness of the respondent”. In fact, except “being the same as the name”, other conditions are inseparable from “the popularity of the earlier name right owner”. The higher the popularity, the earlier it is to infer “maliciousness”, and the better the condition of “damages” would be met. Therefore, how to prove and understand the “popularity” of the earlier name right owner is the important connotation of Article 32 of the Trademark Law.