Squatting on the celebrity’s name by the way of trademark registration is a common trick of the bad-faith trademark applicants. Recently, NTD, representing the famous international fashion designer ZANG TOI, won a lawsuit over infringement of the name right against a Shanghai company.
ZANG TOI is a well-known Chinese fashion designer born in Malaysia. He studied fashion in New York in 1985 and then created his own clothing brand "ZANG TOI". His unique design style has been well recognized and his works won several honors and prizes in the fashion world.
In 2003, the third party of the lawsuit, a Shanghai clothing company, proactively contacted ZANG TOI, and wanted to be the general distributor for ZANG TOI brand in China. However, the both sides failed to set up the business partnership. The unsatisfied third party then filed an application for registration of “ZANG TOI” as its trademark in China. Upon discovering the third party’s use of his name ZANG TOI as trademark, ZANG TOI immediately raised an opposition against this trademark application. Although he failed in both the trademark opposition and the review procedures, ZANG TOI entrusted NTD to file the lawsuit against the review decision made by Trademark Review and Adjudication Board (TRAB), believing that the Chinese court will finally justify his case.
Subsequently, Beijing No. 1 Intermediate Court held that the third party’s trademark constituted violation of the name right of ZANG TOI, and the defendant TRAB’s review decision should be canceled.
In the judgment, the judge pronounced that “the protection of the name right under Chinese laws depends on whether the party who uses the name of others bears the unjust intent to use. If the unjust intent is found, this behavior is identified to be in the scope of infringement of others' name right. And the extent of famousness of the name in the Chinese relevant public is just one of the reference factors in determining the infringement of name right, rather than a prerequisite to establish the name infringement.
We believed that this judgment opinion cleared the mist on the protection of name right shrouding the trademark world for a long time, and would have an important value in handling the disputes between trademark right and individual name right.
