|The Registration of “Jeremy Lin” Mark in the PRC|
Jeremy Lin, a Chinese-American professional basketball player, has come under the lime light due to his marvellous performance in a series of NBA matches in February 2012. Back in July 2010, a business woman in Wuxi, Jiangsu province of China, who claimed to have an instinct that Jeremy would become a superstar, registered the trade marks “JEREMY S.H.L.” and “林书豪”.
According to Forbes, the name “Jeremy Lin” is now estimated to be the world's fastest-growing athlete brand, with value over RMB$100 million. The trade mark registration by the business woman in Wuxi caused trouble to some multinational companies, like Nike and other jersey manufacturers, which planned to use Jeremy’s name in their products in the PRC. The use of the trade mark without the consent of the trade mark owner might be amounted to trade mark infringement in the PRC.
Application for PRC trade mark registration may be filed at the Trade Mark Office of the State Administration for Industry and Commerce (the “Office”) in the PRC. The Office will carry out examination to check whether identical or similar marks have been registered in the similar or identical class of goods or services, and the requirements as set out in the PRC Trademark Upon registration, the trade mark will be valid for 10 years subject to be renewed. Therefore, the business woman in Wuxi, having registered the name “JEREMY S.H.L.” and “林书豪” with the Office, has the right to exclusively use the marks in the PRC in clothing, footwear, headgear, games, playthings, gymnastic and sporting articles. Law are complied with, before granting the registration.
“First-to-file” Rule in the PRC
According to the PRC Trademark Law, if two or more trade mark applicants apply for registration of identical or similar trade marks for the same kind of goods and services, the trade mark whose application was first filed for will be given the priority by the Office. Thus, the business woman in Wuxi may further stop others from registering marks containing “Jeremy Lin”.
Article 31 of the PRC Trademark Law
According to Article 31 of the PRC Trademark Law, the registration of a trade mark should not cause any damage to the existing rights of other persons. In the appeal to the Beijing First Medium Court for a PRC opposition case regarding the trade mark of “Wing Wah”(荣华) in 2010, Wing Wah cake shop of Hong Kong, opposed the registration of the mark “Wing Wah” by a PRC local food processing company, claiming that “Wing Wah” is a famous trade mark that has been used by Wing Wah cake shop in the PRC and globally. The plaintiff alleged that the registration by the owner should be regarded as an improper means to take advantage of the famous mark of “Wing Wah” according to Article 31 of the Trademark Law. The Court dismissed the claim. The reason was that Wing Wah cake shop failed to prove that the trade mark has been used with a substantial degree of influence at the application date of the subject mark. It is questionable whether Jeremy Lin can rely on this Article 31 to invalidate the registration of the “JEREMY S.H.L.” and “林书豪” marks, as the burden is on him to prove that his name had a substantial degree of influence in the PRC at the time of the application of the marks, which was 2 years ago.
Under the PRC Trademark Law, a trade mark owner may enter into an assignment agreement to transfer the right of exclusive use to any third party. However, with the increasing popularity of Jeremy Lin in the PRC, it is expected that the PRC owner will demand a high price for assigning her marks.
ConclusionTo prevent such kind of hi-jacking of famous brand names, it is advised that popular brand owners should take action to register their trade marks as soon as possible in the PRC to protect their marks from being exploited by others. It is important to note that Hong Kong and PRC trade mark systems are governed by two different jurisdictions. A Hong Kong registered mark will not have protection in PRC unless it is also registered in the PRC.
The law and procedure on this subject are very specialized and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.
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