A trademark opposition case has aroused people's attention. A famous cosmetic brand filed an opposition against a trademark in class 14 for the reasons that the trademark is identical to the founder and owner's name, Jeffree star.

Jeffree star is a well-known YouTuber, makeup artist, and entrepreneur. He founded the cosmetic brand in 2014. Through his promotion, he got success.

BACKGROUND

JEFFREE STAR COSMETICS, INC filed a trademark opposition against the trademark “JEFFREE STAR” No. 42914064 (hereinafter referred to as the opposed trademark) on July 4, 2020.

The opposed trademark was published on June 6, 2020, in respect of the goods, watch bands, watches, wristwatches, gold bars, jewelry storage boxes, bracelets, blocks, watch boxes, and wall clocks, and dials in Class 14.

The opposer claimed that JEFFREE STAR is the founder of the applicant and he was famous in the field of cosmetics before the filing of the opposed trademark application.  In that case, the public may be misled to believe that the disputed trademark is specifically associated with "JEFFREE STAR", which may damage his name right. Its registration on the designated goods would violated the provisions of Article 32 of the Trademark Law.

DECISION

After examination, CNIPA found that there was no sufficient evidence to prove the opposed trademark application violated the provisions of Article 10, paragraph 1, item 7 of the Trademark Law. Since the opposed trademark is identical to the alphabetical composition of JEFFREE STAR, it's hard to believe the good intentions of applying for a trademark of the opposed party. Hence, according to Articles 32 and 35, CNIPA held that the opposed trademark should not be registered.

COMMENTS

The main focus of this case was whether the registration of the opposed trademark has damaged the prior name right.

The name right refers to a person's right to decide, change, and use his/her name. Whether a specific person can claim the name right on a name, the core is whether the public has established a specific connection between the name and the person. When a name can make the public believe that it represents a specific person, the name can be protected as the object of the name right. It is obvious that Jeffree Star meets the requirement.

Registering other person's name as a trademark without permission or authorization violates the right to use other person's name and is in nature a misappropriation of name. The trademark law prohibits such behavior. When determining whether the opposed trademark constitutes damage to the name rights of others, the degree of awareness of the others in public should be considered. The fact of enjoying the right of the prior name can be proved by evidence materials such as news reports, award certificates, and advertisements.

From this case, the opposer claimed the founder have enjoyed his prior name right and submitted the relative evidence to prove it. When the cases involving conflicts between trademark rights and name rights, CNIPA may consider the popularity of the prior name holder. For example, whether the text contained in the opposed trademark is the same as the name of the prior name holder, whether the applicant of the trademark can prove the reasonable provenance of the trademark and other factors. Since the opposed trademark is the same as the founder’s name of the opposer, CNIPA stated it violated the founder of the opponent’s name right. The applicant failed to provide evidence to prove that the trademark was approved or authorized by the owner of the name right when filing the application. Therefore, the registration of the opposed trademark damaged the right of the name.