Recently, a piece of news that the film actor, Cheung Ka Fai’s application for his nickname “渣渣辉” as trademark in all 45 classes has hit the headlines. Cheung Ka Fai from Hong Kong is a famous actor, and his Chinese name is “张家辉 (Zhang Jia Hui)”. Due to the accent, he pronounced his Chinese name as “Zha Zha Hui” in several occasions, and to everyone's surprise, this nickname became more and more popular. It is obvious that Cheng Ka Fei was well aware of the benefits this nickname will bring, and filed it as trademark to better protect it as well as prevent it from illegal use or abuse.
Much progress has been made in recent years when it comes to protecting an individual’s name rights, and in fighting against bad-faith registrations in China.
In China, the provisions of General Principle of Civil Law prohibit a third party from making commercial use of a person’s name without his or her consent. Similar provisions can be found in the Trademark Law. According to Article 32, an application to register a trademark must not prejudice the prior right of another person or be used unfairly to pre-emptively register a trademark which another person has used and obtained a certain reputation. This prior right covers personal names, images and trade names, as well as copyright and design patents – although certain factors must be met in order for it to apply.
Concerning personal name rights, usually, the National Intellectual Property Administration (NIPA) will not investigate whether a trademark infringes a personal name right during examination, unless the mark contains the name of a living political figure – applications for such marks may be rejected outright on the grounds that they might have an unhealthy influence on society, under Article 10.1(8) of the Trademark Law. Any interested person can file an opposition against a preliminarily published trademark or initiate an invalidation action against a registered mark if he or she believes that it infringes his or her name right.
Name rights cover given names, pen names, stage names and nicknames. Only a natural living person can claim a personal name right under Article 32. In such cases the disputed trademark should be identical to his or her name, or be a well-established translation of his or her name.
The name rights set out in the Trademark Law are designed to protect not only human dignity, but also the economic interests of a natural person who enjoys a certain reputation in mainland China. The law recognises that the use and registration of a mark which is similar or identical to a person’s name could mislead consumers into believing that there is a direct relationship between that person and the trademark (eg, endorsement or permission). Thus, the subject’s reputation and public awareness of him or her will be a crucial factor when it comes to determining whether a trademark infringes another’s name right. In other words, it is difficult to protect the name of an ordinary member of the public under the Trademark Law.
Back to the nickname “渣渣辉” of Cheung Ka Fai, even if he does not file any application, we believe that he can still take any legal actions against the unauthorized registration or use of this nickname by a third party according to the relevant regulations.
