Usain Saint Leo Bolt (hereinafter referred to as the "Opponent") filed an opposition application on November 27, 2020, against the trademark No. 43691032 for "   " in Class 12 (hereinafter referred to as the "opposed mark"), filed by Fujian Victoria Machinery Co., Ltd. (hereinafter referred to as the "opposed party"), based on his name rights.  The National Intellectual Property Administration, PRC (“CNIPA”) issued a decision on October 19, 2021, rejecting the registration of the opposed mark.

The decision stated: "The evidence provided by the Opponent shows that the Opponent is a well-known Jamaican athlete who holds multiple world records in men's sprinting.  In 2004, he won the 200-meter race at the Commonwealth Games held in Bermuda, and subsequently participated in the Athens Olympics and the Osaka World Championships in Athletics, winning medals in both.  At the 2008 Beijing Olympics, he won the world championship in the men's 100-meter and 200-meter sprints and broke the world records in both events.  As an Olympic champion, 'Bolt' had already become widely known before the filing date of the opposed mark.  Given that Chinese audiences commonly refer to foreigners by their surnames, it can be concluded that in the perception of the relevant Chinese public, 'Bolt' has formed a unique correspondence with the Opponent.  The opposed party should also have been aware of this.  The composed letters of the opposed mark is identical to the English part of the Opponent's name, 'Bolt.'  The opposed party, without the Opponent's permission, registered this word as a trademark with the intention of seeking improper benefits, which could easily mislead the relevant public into believing that the trademark has a specific connection with the Opponent, thereby damaging the Opponent's name rights."

Factors Considered in Determining the Similarity between Trademarks and Others' Names Based on Famous Athletes' Name Protection Cases

The first paragraph of Article 32 of the Trademark Law stipulates: "The application for trademark registration shall not harm the existing prior rights of others..."

The existing prior rights of others include trade name rights, copyrights, patent rights, name rights, portrait rights, geographical indications, and other legitimate prior rights that should be protected.

Regarding the right to a name, the Trademark Examination and Adjudication Standards also clearly state: "Without permission, applying for the registration of a trademark using another person's name, which may cause damage to their rights to their name, shall result in the refusal of registration or invalidation of the disputed mark."  The term "name" includes legal names, pen names, stage names, translated names, aliases, etc.

The specific applicable conditions are as follows:

1. The name has a certain degree of fame and has established a stable correspondence with the natural person, so that in the perception of the relevant public, it points to the person with the right to the name.

2. The registration of the disputed mark may cause damage to the rights to the name.

3. The registration of the disputed mark was made without the permission of the person with the name rights.

In this case, the opposed mark consists of two parts: a cartoon figure and the foreign word "BOLT."

"Usain Saint Leo Bolt" is the full name of the Opponent.  It is worth noting that for foreigners, Chinese people generally only refer to them by their surnames, not their given names.  We can see that major newspapers, magazines, and media refer to the Opponent as "博尔特" (the English "BOLT"), which is the Opponent's surname. For the Chinese public, the surname "Bolt" has already formed a unique and specific association with Mr. Bolt.  When ordinary consumers see the characters "博尔特" or highly similar Chinese characters, they naturally think of Mr. Usain Saint Leo Bolt. In the aforementioned opposition decision, the CNIPA also recognized this naming habit, stating: "Given that Chinese audiences commonly refer to foreigners by their surnames, it can be concluded that in the perception of the relevant Chinese public, 'Bolt' has formed a unique correspondence with the Opponent, and the opposed party should also have been aware of this."

We can see that although the "name rights" is a basic personal right of citizens, the protection of this right under the Trademark Law still has certain requirements:

First, the name subject to protection must have achieved a certain level of accomplishment in a particular field, possess a certain degree of fame, and have established a stable correspondence with the subject, so that in the perception of the relevant public, it generally points to the person with the name rights.

Second, the degree of fame of the name and the degree of association between the goods or services designated by the disputed mark and the field in which the person with the name rights is famous must also be considered.  In this case, although the opposed mark is designated for "carriages," which is somewhat different from the sports industry in which the Opponent is engaged, the CNIPA likely considered the Opponent's extremely high level of fame and the heights he has achieved in the sports industry.  If the opposed mark were used on "carriages," especially given that the graphic part “”of the opposed mark is highly similar to the Opponent's iconic silhouette and portrait for , it would undoubtedly cause confusion and misidentification among consumers.  The author believes that as a globally renowned athlete and public figure, the Opponent has become a sought-after endorser for major brands. Therefore, his name rights have the potential for financial benefits and should be specially protected.  If the opposed mark were to appear on the market, it would likely lead to confusion or misidentification among consumers regarding the source of the goods, leading them to believe that the opposed trademark is associated with the Opponent or brands endorsed by him, thereby damaging the Opponent's name rights.

Additionally, the Trademark Examination and Adjudication Standards provide further directions for the protection of the right to a name:

If the use of a name in a trademark does not meet the aforementioned conditions for the protection of the name right but misleads the public, violates public order and morals, or has other adverse effects, it shall be examined and adjudicated in accordance with Articles10.1(7) and 10.1(8) of the Trademark Law.

Conclusion

In opposition cases involving the protection of the right to a name, the agent must first argue the similarity between the mark and the name in question from multiple perspectives.  Second, substantial evidence must be gathered to prove that the name has established a stable correspondence with the person with the right to the name and has a certain degree of fame.  In cases where there is no overlap or very weak overlap between the fields of the goods, it is particularly important to emphasize the potential harm that the registration of the opposed mark could cause to the Opponent.  The agent should flexibly apply the relevant provisions of the Trademark Law to increase the chances of success in the opposition case.