Joan SU | Mar 18, 2020

Basic information:

Applicant: Jeffree Star
Respondent: Guangzhou Sizu Network Technology Co., Ltd. (hereinafter called SIZU) Disputed trademark: “Jeffree Star”, No. 13475307 in Class 3
Procedures: Trademark invalidation and the corresponding administrative litigation

Summary of the case:

Jeffree Star is a well-known American model, fashion designer, makeup artist, composer and singer. He got his fame in the United States by virtue of his original songs and fashion style before 2013. Later he started his business in the cosmetics and fashion industries, using his own namesake brand "Jeffree Star". With the increasing popularity of the applicant on the online media, his name and his brand "Jeffree Star" has acquired distinction by the Chinese public. The above could prove the fact that the applicant, Jeffree Star, has been of certain popularity in the cosmetics and fashion circles in both the US and China before 2013.

On 4 November 2013, a Chinese individual Miaomiao YU(余苗苗) filed a trademark application for "Jeffree Star" (No. 13475307) in Class 3 on the goods "Soap; Cosmetics; Air Fragrances; Cleaning Preparations; Shampoos; Laundry Detergents; Essential Oils; Perfumes; Toothpastes; Baths liquid" without any consent from the applicant or his company. The application was registered on 7 February 2015 and transferred to SIZU on 13 February 2017. Jeffree Star noticed this trademark issue in 2018 and then took action to enforce his legal rights. Entrusted by the applicant, Jiaquan filed a trademark invalidation request against the disputed trademark registration No. 13475307 with the main argument of infringing Jeffree Star’s prior name right.

By collating the online information and the evidence provided by the applicant, we knew some facts: 1. Jeffree Star is a living foreign individual and the name he’s been using is in full compliance with what is recorded on his passport; 2. the word formation of the disputed trademark “Jeffree Star” is identical to the applicant’s name; 3. When we searched “Jeffree Star” on the Internet, not only we could find videos and introduction regarding the applicant or his cosmetic products in some foreign websites like YouTube and Instagram, but could find information on Baidu, Xiami Music and Youku that are familiar to the Chinese public. Besides, the information was generated before 4 November 2013, the filing date of the disputed trademark. Considering there is no direct interest between the applicant and these well-known websites, and the information on these websites could not be modified by the public according to the website’s management rules, we considered the online public information could be used in the invalidation request as a proof of prior right.

During the evidence exchange of trademark invalidation procedure, SIZU argued that the disputed trademark was legally obtained through an assignment with a Chinese individual Miaomiao YU and the assignment was duly recorded by the CTMO. Therefore, there was no violation of the applicant's prior name right. In addition, SIZU claimed that the evidence submitted by the applicant could not prove the popularity of “Jeffree Star” in China. However, in the response submitted by SIZU, we noticed that they repeatedly took enforcement actions against the parties who used the name “Jeffree Star” in business. They must have known the huge brand value of “Jeffree Star” on cosmetic products. Also, SIZU used a star logo  that is identical to the applicant’s prior US trademark registration No. 87186731 in their business. Based on the above findings, we submitted a response to question the evidence provided by SIZU.

Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (TRAB, now Trademark Office of National Intellectual Property Administration, PRC) recognized the prior name right of the applicant, and the disputed trademark shall be invalidated. Later, SIZU filed an appeal against the decision, trying to maintain their trademark right. The applicant entrusted Jiaquan to take part in the appeal as the third party. After the first instance, Beijing IP Court denied SIZU’s appeal request, upheld the ruling of TRAB and declared the trademark invalidation.

Legal basis:

Trademark Law of the People's Republic of China
Article 32 No applicant for trademark application may infringe upon another person's existing prior rights….

Jiaquan comments:

(1)Name right is one of the prior rights
Name right is one of the prior rights. Anyone files a trademark application with a living person’s name without consent or license which leads to or may lead to damage of the name right holder shall be deemed as name right infringement and shall be applied to Article 32 of the Trademark Law. The name right holder could file a trademark opposition or invalidation request against the related trademark application or registration. A note should be taken that an opposition request should be filed within three months from the date of publication of the related trademark application, while the invalidation request should be filed within five years from the date of registration of the related trademark registration.

In this case, the applicant is eligible to file an invalidation request against the disputed trademark, as he is a living person using the real name “Jeffree Star”. Also, the disputed trademark is not registered for more than five years.

(2)Applicable requirements of claiming prior name right
To claim prior name right, it should meet two requirements that are mentioned in the Trademark Examination and Review Standard: (1) In the perception of the relevant public, the trademark at issue should refer to the name right holder; and (2) The registration of trademark at issue may lead to damage to other person’s name right. Accordingly, before enforcing the name right in a trademark issue, the name right holder should confirm his name is familiar to the public, and there is a unique correspondence between the name and the person. One could not claim his name right if he has no popularity to the public, thus could not prevent others from registering the trademark. Even if the trademark is not completely the same as a name, it still invades the name right if the trademark shows the main character of the related person. The name right holder should bear the responsibility to provide evidence of popularity. In this case, Jeffree Star provided lots of evidence to show his popularity in music and cosmetic industries, and all these were generated before the filing date of the disputed trademark. The activity of registering and using the trademark “Jeffree Star” in Class 3 without obtaining any consent from the applicant would cause damage to the applicant. The trademark shall be invalidated according to Article 32 of the Trademark Law.

(3) Impact of trademark transfer on infringement determination
In this case, SIZU had argued that the disputed trademark was legally transferred, and it did not infringe the applicant's prior name right. However, trademark transfer does not affect the determination of infringement on the prior rights, according to Article 32 of the Trademark Law.

(4) Improve the success rate by taking positive action
After filing the invalidation request, the applicant could review the response filed by the respondent and question the evidence if necessary. During the appeal, the applicant could decide whether to step in as the third party. Although it does not affect the case trial, the applicant will have more opportunities to express his opinion so as to improve the success rate.

In this case, we found out many defects in the use evidence submitted by SIZU, such as they are using the star logo mark that is identical to the applicant’s US prior trademark registration No. 87186731. Jeffree Star took positive action to question these defects, helping the examiner get a full picture on the trademark cases. In the appeal, Jeffree Star also stepped in as the third party and submitted notarized evidence to reinforce his points. It does do help to the examination and improve the success rate.

Conclusion:

From the above, we could learn that name right is one of the prior rights, and the popularity of a living person to the general public will be the most important thing in claiming the name right. If a person’s name is familiar to the public, and it has a unique correspondence with the person himself, other parties will infringe the prior name right if they file or use this name as trademark without consent. The name right holder could take related actions including trademark opposition and trademark invalidation within the time limit prescribed by the Trademark Law to protect his right.

Client’s comments:

Our Chinese law firm is really taking on a western sensibility when it comes to enforcing our rights in China. From our perspective -- as a worldwide US cosmetics brand fighting counterfeiting and trademark and copyright infringement around the world - that is the highest compliment a client can pay a foreign law firm. I’m pleased to place Jiaquan IP Law in that rarified category. (From Jeff Cohen, President & COO at Jeffree Star Cosmetics)