Introduction

With the popularity of Apple products, countless enterprises have tried to use brand names similar to or related to Apple’s brand in an attempt to ride on Apple’s success. In our Intellectual Property & Technology newsletter of July 2016, we explored the losses that Apple suffered in intellectual property disputes in China. For example, in April 2016, Apple lost its exclusive right to use the name “iPhone” on products made of leather in China. While Apple holds the rights to countless trademarks, it has unfortunately failed to register one of its founder’s name, “Steve Jobs”, as one of its trademarks. As a result, a fashion company in Italy now has the right to use the brand name “Steve Jobs” on its products.

Background

In 2012, two clothier brothers named Vincenzo and Giacomo Barbato from Naples, Italy, discovered that Apple neglected to register its co-founder’s name, “Steve Jobs”, as one of its trademarks while searching for a catchy name for their new clothing company.  The two brothers made use of such opportunity and registered five marks, two of them with the plain text “Steve Jobs” and the other three with a stylised “J” logo which has a small bite mark and leaf before the European Union Intellectual Property Office (“EUIPO”) (Registration No. 011041861), in International Classes 9, 18, 25, 38 and 42.

Comparison between Apple’s trademark and the Steve Jobs trademark

The EUIPO granted and confirmed the “Steve Jobs” trademark together with the “J” logo in 2014, and during the same year, Apple opposed the two brothers’ trademark application for the “J” logo (but interestingly, did not oppose the plain “Steve Jobs” mark), alleging that the proposed trademark is highly similar to Apple’s own trademark. Since the goods and services offered are identical and/or similar (for example, Class 9 relates to scientific goods including computers and computer software and Class 38 relates to telecommunications services), there is a likelihood of confusion.

The EUIPO rejected Apple’s arguments, primarily due to the fact that the letter “J” is, unlike an apple, inedible. The missing chunk from the “J” logo is not a bite and thus, the association between the marks is only superficial. Apple’s opposition against the “J” logo was declined and registration of the “J” logo was sustained. The two brothers have since indicated that they would eventually be interested in selling electronic devices with the “Steve Jobs” trademark due to the protection granted under Class 9.

Protecting the names of celebrities

This case calls to mind the phenomenon of “name squatting” in China, where a handful of individuals or companies may register a foreign celebrity’s name as a trademark to quickly occupy the market. In China, the basic legal principle for protecting the name of individuals (including celebrities) is contained in the General Principles of Civil Law, where the right of citizens to enjoy the use of their personal names is conferred. The Anti-Unfair Competition Law prohibits the unauthorised use of another’s name that causes confusion, and Article 32 of the Trade Mark Law further provides that the prior rights of others (i.e. rights of individuals to their names) should not be infringed in an application for trademark registration.

Despite such protections, foreign celebrities seeking to claim prior rights in their names face difficulties. For example, as discussed in our August 2015 newsletter, Michael Jordan lost his rights in his Chinese name to Qiaodan Sports Co. Ltd. in which a number of trademarks, including, “乔丹”, “QIAODAN” and a logo resembling Nike’s famous “Jumpman” logo were held to be validly registered. Fortunately, in 2017, Michael Jordan emerged partly victorious after 5 years of administrative and appeal proceedings in China (the link between the English transliteration of “乔丹”, “QIAODAN”, and Michael Jordan cannot be established and hence, the trademark “QIAODAN” can still be used by third parties). This demonstrates that foreign celebrities may face challenges where action is brought against a trademark bearing a Chinese version of their name, whether by transliteration or otherwise. In addition, Article 32 of the Trade Mark Law only protects the name rights of a living person. The estate of the deceased celebrity will not be able to rely on such protection to prevent exploitation of the deceased celebrity’s name.

In contrast, the European Court of Justice has held, in a case involving the use of the name “Fiorucci”, an Italian fashion brand, that under Italian law, the “right to a name” means that consent must be granted by the famous individual before their names can be used in a commercial context. Furthermore, the European Court of Justice has ruled that such rights can survive death in a case involving the use of Audrey Hepburn’s images. As such, if faced with a similar case in the future in Italy, claiming violation of publicity rights may be considered.

Takeaways

This case is a reminder of the importance of being vigilant when devising strategies for protecting intellectual property rights. For example, one may consider using a defensive intellectual property strategy to prevent dilution of the brand or infringement in the future. A periodical intellectual property audit can also be conducted to anticipate what potential competitors might do. It is vital for businesses to take trademarks seriously as a trademark can add value to one’s brand and is vital to one’s business.