INTRODUCTION

Personal names are intangible assets which are used more and more often by enterprises, as they increasingly rely on the market appeal of famous people to sell products. Many personal names have a high level of recognition and awareness at all levels of society and as a result can have a high economic value. In practice, once the status of fame is reached, the name may be used in many commercial activities with a fair prospect of profitable business.

When Michael Jordan's name was once used in Nike products, within a certain period of time, fans and consumers alike stopped saying 'I am wearing a pair of Nikes', and instead began saying 'I have a pair of Jordans', eventually turning this model of Nike basketball shoes into a powerful brand. Jordan's brand has since been extended to a wider range of products and even services (restaurants). Many other famous people or celebrities allow their names to be used in connection with perfumes and other products. Such products connote a feeling, an experience of success, and the image of the person lending their name.

In the People's Republic of China, famous people also register their names as trademarks; however, in China, the successful registration of a personal name depends on its cultural value as well as its market appeal. In some cases, people associate a given name with values and moral standards, which could eventually frustrate the effort to register with the Chinese Trademark Office, as the Lu Xun case illustrates.

The Lu Xun Case Lu Xun is a famous writer in China, who was born in Shaoxing, East China's Zhejiang province on Sept. 25, 1881. Shaoxing is a Chinese geographic location known for its famous yellow wine (????). Some of his literary works are required reading for all Chinese students who attend middle school throughout China.

Needless to say, Lu Xun (as far as I know) never attempted to apply for registration of his personal name as a trademark before he died back in 1936. As a historical note, the first Chinese Trademark Law was enacted under the Qing Dynasty in 1904.

In 2001, Lu Xun's grandson founded a wine company, which he named after his grandfather. He also filed an application to register Lu Xun as a liquor brand on behalf of the family. The application was rejected by the Trademark Office, which also prohibited any commercial activity concerning Lu Xun. The grounds for refusing its registration was the contention that it is 'improper' to use the name of one of modern China's greatest writers for commercial activities. The Trademark Office alleged that as a public figure, Lu Xun's fame is not only owned by his family, but by the whole of society.

The applicants have appealed to the Trademark Review and Adjudication Board. They also successfully registered a trademark using simply the characters for Lu Xun in Japan in October 2001. Also in China, an art school successfully registered Lu Xun as a word mark, but the trademark comprised more Chinese characters than merely those of Lu Xun (??????)(in English, Lu Xun Art School). We set out the options for Lu Xun's descendants and those wishing to register personal names, in general.

1. Options under the Amended Copyright Law of the PRC

Personality Rights As an author of literary works, Lu Xun was entitled to both personality and property rights. While the latter have a term of protection of 50 years after the author's death, the former are unlimited in time. The economic rights expired a long time ago.

According to the Regulations for the Implementation of the Copyright Law of the PRC, the inheritance of economic rights contained in copyright shall be executed in accordance with the Law of Inheritance. Chinese morality and social customs suggest that Lu Xun's descendants have the obligation to maintain the reputation of their ancestor, an obligation which -with the economic rights having expired- can only be carried out through the enforcement of his personality rights before the courts. But personality rights comprise the right of authorship, alteration of one's work and the right of integrity (protection against distortion and mutilation), which are not pertinent to the present case.

Also, according to Article 9 of the General Principles of Civil Laws, "A citizen shall have the capacity for civil rights from birth to death and shall enjoy civil rights and assume civil obligations in accordance with the law". It is clear then, that only a living person can enjoy the right to determine, use, or change his/her personal name; his descendants may only inherit those property rights deriving from the name for the limited period of time stated in the PRC Copyright Law.

Authorship Another key issue, moreover, is that copyright protection extends only to "original works of authorship." Article 3 states clearly the kinds of works that can be protected by copyright. To be protected by copyright, a work must contain at least a certain minimum amount of authorship in the form of original literary, musical, pictorial, or graphic expression. Names, titles, and other short phrases do not meet these requirements and, therefore, are not entitled to copyright protection, even if the name, title, or short phrase is novel, distinctive and/or lends itself to a play on words.

Because the trademark registered by the art school does not refer to any of Lu Xun's works over which to claim authorship, the descendants are defenceless in this respect.

The descendants can claim copyright through neither economic nor personality rights, only through a bare moral and social obligation to respect and defend the reputation of Lu Xun. Authorship is a personality right, and as such is enforceable no matter the time, as opposed to economic rights, which expire 50 years after the author's death.

2. Options under the Amended Trademark Law of the PRC

The Trademark Law of the People's Republic of China, Article 8, provides a definition of what signs may constitute a mark, whether a trade, service, collective or certification mark:

"Any visible sign capable of distinguishing the goods of a natural person, legal person, or other organization from those of others, including words, graphs, letters, numerals, three-dimensional signs and combinations of colours as well as combinations of foregoing elements".

The Country's Trademark Law has no provisions forbidding the adoption of famous names as trademarks. Practice indicates, however, that the personal name which is to be applied for trademark registration must have a clear connection with the name and with what it represents. In this respect, for instance, any athlete known to the people may register his name as a sportswear brand.

Although not explicitly included in China's Trademark law when defining what may constitute a trademark, portraits of individuals are also registered as trademarks with the consent of the given person.

What rights then, if any, exist under the trademark law in terms of protection of personal names?

When defining what a trademark is, most legal texts will apply to "any word, name, symbol, or device, or any combination used or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods".

As discussed, in foreign countries, it is common for big celebrities to commercialize their portraits or names, or for companies to use famous names to brand products, such as Napoleon wine and the Churchill cigar, but this is not a common practice in China, especially when it comes to the names of politicians - these names cannot be registered as trademarks.

A harmful effect for social morality? Article 10.8 establishes that 'any sign which infringes upon the socialist morality or practice or of other harmful effects may not be used nor registered as a trademark'.

Making a connection between Lu Xun and alcohol can definitively be claimed as a negative social influence. However, it can be argued that grape-based wine is the only alcohol with proven health benefits and might be considered a health-conscience activity in China, as well as a fashionable trend and a more upper-class activity. The Chinese government is promoting grape-based wines as an alternative to grain-based alcohol, grain that could be used to feed China's massive population.

Beatrix Potter, also a deceased famous writer, was registered as a Community Trademark in February 2004 by the publishing company which owned the already expired copyrights for her works. But contrary to the Lu Xun case, the goods to be marketed do keep a relationship with the author's reputation.

A possibility for Acquired Distinctiveness? Another discussion about personal names within the context of this case is whether or not consumers could come to associate the deceased writer's name with the said goods, and not really about registering personal names at all since the product (wine) is not attached to any actual person seeking to use his or her personal name.

Article 11.3 provides the grounds to refuse registration, as opposed to Article 10.8 which prohibits both use and registration, thus leaving room for the use of the mark in question. Specifically, Article 11.3 prohibits the registration of 'any sign which is devoid of any distinctive character'. Therefore, the sign listed in the paragraph above may be registered as a trademark if it has acquired a distinctive character following the use and is easy to distinguish.

This option would surely leave Lu Xun's reputation vulnerable to tarnish, for if the goods bearing the Lu Xun trademark were of a poor quality, consumers would say "Lu Xun wine" is so bad, eventually harming the reputation of a name of such a great influence in the PRC. But if the wine so branded started to be successful among consumers, it might -in practice- acquire distinctiveness through use. On this basis, it can be concluded that if if Lu Xun's descendants were to operate the wine company and grow its reputation, a trademark registration might be successful.

An example of this is the Lu Xun Art School, founded in 1938 and enjoying an excellent reputation in the educational field. The registration of the?????? trademark can only serve as a way to honor the deceased author. Of course, that school is conducting a commercial activity on its own, like that of selling goods bearing the name, but contrary to Lu Xun's descendants, Lu Xun is only part of the overall trademark. Perhaps, a trademark like???????? (Lu Xun's Descendants' Wine Co.) could be an alternative.

Thus, while personal names may be registered as trademarks in China, 1.There must be consent from the person. 2.There must be a clear connection between the name applied and the company or product. 3.It must not infringe the social morality or practice or of other harmful effects. 4.It must be distinctive.

3. Conclusion

If Lu Xun were alive today, he would have probably tried to benefit from the protection conferred by a trademark registration. Could we still see today a famous writer being denied registration of his name because people have come to associate it with moral values? The Amended Trademark Law of the PRC lacks any reference to the registration of personal names or portraits, but if harm to the social morality is not an issue, then the law may not be that different from other legal systems.

From this study case, we can conclude that,

1. Presumably, as long as the personal name is not held in such moral, historical, cultural esteem in China to be considered owned by all of society, one should be able to register that name; 2.As suggested above, if the descendant's wine company were to gain a reputation over time, an eventual trademark registration might be successful; and 3.If as for the Lu Xun Art School, the trademark application was changed to Lu Xun's Descendants' Wine Company, the application might be successful.

Established in 1992 as one of the first private law firms in China, Lehman, Lee & Xu employs a highly-experienced team of over 110 lawyers, patent and trademark agents representing both foreign and Chinese clients throughout China in a variety of enterprises. With branches in various Chinese cities including Beijing, Shanghai, Shenzhen and Hong Kong, Lehman, Lee & Xu is considered a leader of the re-established Chinese legal profession. The firm has been recognized by the media and the Chinese Ministry of Justice as one of the best law firms in China. For more information, please visit the firm's website at www.lehmanlaw.com.


ABOUT THE AUTHOR
Jordi Llopis hails from Spain and works in the Beijing office of Lehman, Lee & Xu.