Donald Trump successfully has his name registered in China for construction-related services
The registration secured is for the name/mark "TRUMP"
14 December 2018
It has recently been reported that on 14 February 2017, US President Donald Trump successfully had his name registered in China in respect of commercial, residential and restaurant property services (including construction-related services essential to the real estate business). The registration secured is for the name/mark "TRUMP" (under application no. 14831415) in respect of Class 37 services (the "Registered Mark"). Notably, this is a re-file of an earlier, failed application made by Donald Trump almost 10 years.
The Registered Mark was filed in 2014 and is one of a series of steps taken by Trump following the failure of a previous application to secure trade mark registration in construction-related services (filed under application no. 5771154 "TRUMP" in Class 37 on 7 December 2006) (the "Previous Mark"). The Previous Mark was partially rejected by the PRC Trade Mark Office ("TMO") in 2009 due to the existence of an earlier, identical third party mark (no. 5743720 "Trump") (the "Conflicting Mark"). The Conflicting Mark was allegedly a pirated mark filed by the individual Dong Wei in respect of goods and services in Class 37. The Conflicting Mark was filed in November 2006, just a couple of weeks before Donald Trump's filing of the Previous Mark. Despite Donald Trump appealing the TMO's rejection, this rejection was upheld by the PRC Trade Mark Review and Adjudication Board ("TRAB") in 2014. Donald Trump filed further appeals against the TRAB's decision but they were dismissed by the Beijing First Intermediate People's Court (i.e., the first instance court) and the Beijing High People's Court (i.e. the second instance court) in 2014 and 2015 respectively, based on a strict application of the "first-to-file" principle (i.e. Donald Trump's application cannot prevail because the Conflicting Mark has an earlier filing date). Due to the Conflicting Mark, Donald Trump had to remove core services of interest to this business from the Previous Mark (i.e. construction and construction information in commercial, residential and restaurant properties) as these services overlap with those covered by the Conflicting Mark. After deleting such core services, the Previous Mark then proceeded to registration on 6 October 2015 but only in respect of "indoor decoration and repair, heating equipment, air conditioners and elevators installation and repair in commercial, residential and restaurant properties" which are not core to Donald Trump's business.
In parallel, Donald Trump also contested the Conflicting Mark. In 2009, Trump filed an opposition and subsequently (following an unsuccessful opposition) an invalidation in 2015 against the Conflicting Mark. The invalidation decision was issued by the TRAB in September 2016 and led to most of the services of the Conflicting Mark being declared invalid, with only two services remaining: well drilling and mining. The invalidation of the Conflicting Mark in overlapping services subsequently allowed Donald Trump to secure the Registered Mark in relation to his core business.
As reported, it has taken more than ten years for Donald Trump to register his name for core construction-related services, and after going through numerous stages of legal proceedings and pursuing all kinds of offensive and defensive actions in China. However, this is not a special case; it merely highlights the rigidity of China’s trade mark system. In particular, it shows how difficult it can be to remove a prior conflicting mark or a pirated filing. In the event that a trade mark application is blocked by a conflicting prior mark, the TMO, at its discretion, may suspend the trade mark application process if there are existing parallel opposition and/or invalidation proceedings in relation to the conflicting mark. However, the pending opposition and/or invalidation process may take several years to conclude and can consequently drag out the relevant trade mark application for years as well.
Pirated filings and name right protection in China
It was reported that lawyers for Donald Trump argued that Dong Wei had filed the Conflicting Mark in bad faith and had infringed upon his name right. Unfortunately, it is not uncommon for the names of many world-famous celebrities to be the subject of bad faith trade mark applications or registrations in China. Examples include NBA stars Allen Iverson and Michael Jordan, Yao Ming (a Chinese NBA star), Britney Spears and Andy Lau/刘德华 (a television and movie star).
A string of recent PRC Supreme Court interpretations, opinions and decisions have confirmed that PRC courts are more determined to give better protection to name rights in China. In the decision of the Supreme Court issued on 7 December 2016 concerning a pirated trade mark application for the "Michael Jordan" name/mark, the Supreme Court laid down the following conditions to determine whether or not a foreign celebrity can claim name rights over a Chinese translation of his or her foreign name:
i. has the name in question attained a certain level of fame in China;
ii. has a valid connection been established between the name in question and a natural person; and
iii. does the relevant public use the name in question to refer to that individual.
The above test was subsequently codified in the Supreme Court's Opinions (Fa Shi  No. 2) issued on 10 January 2017. It was set out in the Opinions that an act of registering the name of a public figure in the political, economic, cultural, religious, ethnic or other field as a trade mark may be deemed to be an "unhealthy influence". Causing an "unhealthy influence" to society is a ground for denying trade mark registration under the PRC Trade Mark Law. In any event, the clarity brought about by the Supreme Court's Opinions is very much welcomed and it is hoped that this will help brand owners better protect and enforce their rights against pirated names filed by trade mark squatters.
- The process of opposing and/or invalidating a conflicting mark or a pirated filing generally takes years to conclude. This in turn obstructs and delays parallel trade mark applications.
- A name right is established if the following three conditions are met
- the name in question has attained a certain level of fame in China;
- a valid connection has been established between the name in question and a natural person; and
- the relevant public use the name in question to refer to that individual.