In a world where personal reputation and recognition hold immense value, safeguarding one's name becomes an imperative endeavor. The case of Yao Anna serves as an illustration of the critical role that trademark registration and legal action play in protecting personal names, particularly when individuals have cultivated a significant reputation associated with their names. In this article, we delve into the significance of preserving personal names through the prism of trademark law and the lessons we can glean from the Yao Anna case.

 

Case Background

In December 2018, trademark applications related to "Yao Anna" were submitted to the China Trademark Office and on June 27, 2019 they were preliminarily approved.

 

The “Yao Anna” name, however, carries significant weight due to Ms. Yao Anna’s notable credentials and association with Huawei Technologies. Ms. Yao is the youngest daughter of Ren Zhengfei, a highly prominent figure in the China tech sector and the Founder and CEO of Huawei. Moreover, Ms. Yao was able to gain further recognition through her own efforts, namely, her online and offline presence. As a result, she enjoys a high level of recognition and reputation in China.

 

Challenges in Protecting Personal Names

The case exemplifies the complexities involved in protecting personal names. While it's crucial for individuals to safeguard their names from misuse and exploitation, opportunistic trademark applications can hinder this process. The case reveals that malicious applications for well-known personal names may occur, aiming to capitalize on the reputation and connection to a famous individual.

 

According to Article 4 of China's Trademark Law, natural persons, legal persons, or other organizations engaged in production and business activities who need to obtain exclusive trademark rights for their goods or services should apply for trademark registration with the Trademark Office. Since at the time Ms. Yao did not have an Individual Industrial and Commercial Household license, nor was she a natural person engaged in production, manufacturing, service and other activities, she did not meet the application requirements and could not directly apply for a trademark in her own name.

 

Trademark Invalidation Process

Approximately one and a half years after the registration of the "Yao Anna" trademarks by third parties, Ms. Yao’s legal team discovered them and subsequently took action to invalidate them. The key arguments for invalidation were as follows:

• Ms. Yao Anna's fame and recognition.

• Lack of a legitimate creative source for designing the "Yao Anna" trademark.

• Malicious registration with the intention to imitate and exploit Ms. Yao’s name.

• The disputed trademark was approved for use in advertising and promotion, which were services closely related to products endorsed or promoted by Ms. Yao.

• The registration of the disputed trademark easily misled the public to believe it was closely related to Ms. Yao, thereby infringing on Ms. Yao’s name rights.

• In addition to the disputed trademark, the respondent had a consistent history of copying and imitating well-known trademarks of others.

 

Protection Under the Trademark Law

Personal names are protected under the Trademark Law of the People's Republic of China. Articles 4, 7, 10(1)(7), 32, and 44(1) are some of the legal provisions that can be invoked to protect personal names from malicious registrations. In this case, Ms. Yao’s team provided extensive supporting evidence to substantiate their invalidation claims, including:

1. Introduction and media coverage featuring Ms. Yao.

2. Publications referencing the disputed name in connection with the trademark application.

3. Administrative rulings and judgments on similar cases involving public figures' names.

4. Documentation on measures taken against malicious trademark registrations.

 

Eventually, Ms. Yao’s team was successful in invalidating the malicious registrations.

 

Pursuing Trademark Administrative Litigation

If invalidation claims prove unsuccessful, however, legitimate owners may initiate administrative litigation. This phase allows for the collection of additional evidence to reinforce the validity and legality of the plaintiff’s rights as well as an opportunity to accumulate further evidence of the registrant’s malicious actions. Subsequently, the court will examine the case from various angles, focusing on social fairness, justice, and good practices. In cases of confirmed malicious intent, the court can instruct the Intellectual Property Office to issue a new ruling.

 

Strategies for Preventing Name Registration as a Trademark

Early Trademark Registration

To safeguard a name as a trademark, it is advisable to register it as early as possible. China follows the "first-to-file" principle, granting trademark rights to the first applicant among competing applications for the same or similar marks in the same class. Applying for registration promptly helps prevent others from registering your name as a trademark and avoids conflicts with existing trademarks.

 

Building Brand Awareness

Establishing distinct trademark designs and creating emotional connections between consumers and the brand is essential. Effective brand management involves multi-channel communication, marketing efforts, and emphasizing core values and unique qualities to differentiate the brand, enhance the customer experience, and increase market visibility and awareness.

 

Trademark Monitoring and Protection

Regularly monitoring trademarks and promptly identifying potential preemptive registration attempts can effectively safeguard one’s trademark portfolio. In cases where preemptive registrations occur, timely action can reduce subsequent protection costs and minimize adverse impacts.

 

Conclusion

Trademark Law considers the protection of personal names an important aspect aimed at safeguarding individuals' name rights. This protection ensures that individuals’ names are not abused, infringed upon, or misleading to others. Article 10 (1), (7), (8) and Article 32 of the Trademark Law stipulate that the object of name protection includes not only formal names, but also all written symbols that can refer to the natural person, such as pen names, pseudonyms and stage names. It should also be noted that Article 32 of the Trademark Law is closely related to the scope of protection of the prior right to name and the level of reputation and fame of the name holder. Of course, when a natural person uses their name as a trademark or corporate name for commercial purposes, it should not violate the principle of good faith or infringe upon the legitimate prior rights of others. The case of safeguarding personal names, as showcased by the Yao Anna case, underscores the importance of this protection, emphasizing the safeguarding of identity and reputation in a world where a name carries profound implications and reputation remains an invaluable asset.