Born as daughter to Beyoncé and Jay-Z, the name Blue Ivy Carter naturally has a certain goodwill attached to it. Hence this will make others want to register such a name as a trademark, in order to profit from it.
In the case of Beyoncé's daughter, Beyoncé has recently secured the USA trademark rights of the name 'Blue Ivy Carter'. This was achieved not dealing with a trademark squatter though, but by overcoming the hurdle of a registration of 'Blue Ivy' done before the birth of her daughter (and thus not in bad faith), in which that company in the wedding industry did not want the trademark 'Blue Ivy Carter' to be registered and thus tried to block this name for trademark registration.
In the end, the US trademark trial and appeal board argued that 'Blue Ivy' and 'Blue Ivy Carter' would not be deemed to be confusing, as her daughter's name is that of a cultural icon.
Mbappé and Ivanka Trump as examples of China's practice
Before the football world cup in 2018, when Mbappé was not yet a big football star in the world, there were only a few registrations of names referring to Mbappé in China. The number of these registrations during and after the world cup went up to over 300 trademark applications, of the new French football star.
On Sunday 20 September 2020, the whole PSG team, including Mbappé, wore their jerseys with Chinese character names on it. This might be an important signal to China's trademark bureau to show that the players have their particular Chinese translation of their personal name they want to have protected in China. The long costs and efforts of Michael Jordan to obtain the rights to his particular Chinese name, 乔丹 might be the cause of this strategy.
Likewise, Ivanka Trump was faced with many registrations already done prior to her own Ivanka Trump filings. In Ivanka's case, some other trademarks were allowed registration days before an official meeting between China and the States was scheduled.
Luck or not, it would be interesting to look further in what the requirements are of name protection in China with regard to the trademark law.
Any right to names of cultural icons in China?
The general rule is the first to file principle. Whoever registers a trademark first, has the right to use it. But if you have not registered it first, you come in more difficult territory.
Under such conditions, the Chinese trademark law does provide some exceptions to a negative outcome. One of them is the right to a name under article 32 Trademark Law, which in practice lays down three criteria that need to be satisfied in order to obtain name protection under Chinese law:
- the particular name needs to have reached a certain fame in China and needs to be known to the relevant public;
- that particular name needs to be used by the relevant public when referring to that person;
- there is an established link between that particular name and that individual.
COVID, Trademark agencies and malicious registration
Recently with COVID, we also noticed that the Chinese government is done with malicious trademark registration when it concerns COVID and has further used the trademark law to fine trademark agencies that have helped people to apply for COVID-related trademark applications.
These are encouraging developments, and it would be good if these fines would be broadened, so that trademark agencies will be the educated buffer to stop bad faith applicants from filing trademarks in bad faith in the first place. Naturally, further punishments for the actual applicants of bad faith filings would also help the situation getting better over time.
Best practice: file your trademarks!
Seen the massive number of trademarks filed and registered for people with a certain fame, it is highly recommended to file your trademark for China as soon as possible. The costs for obtaining a trademark are relatively low, but as can be seen with Michael Jordan, the costs of eventually getting back your rights will be naturally always higher.
There are currently 7 registrations of Blue Ivy Carter in China. Four of these trademarks are owned by BGK Trademark Holdings, LLC, Beyoncé's own holding company. The other three are owned by a company from Singapore. Whether that will ever become a problem, we shall see.
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