[author: Yan WANG]

In the Civil Code of the People's Republic of China, which came into effect as of January 1, 2021, “personality rights” has become a major highlight for its independent codification. As a result, the protection of human dignity and personality rights has been further strengthened. As one of the most important personality rights, the protection of portrait right is also reflected in the trademark right granting and verification cases. This article intends to briefly review and analyze issues concerning portrait right in practical trademark right granting and verification cases based on the current Guidelines for Trademark Examination and Adjudication and relevant typical cases.

1. Scope of protection of portrait right

According to Article 1018 (ii) of the Civil Code, a portrait is an external image of a specific natural person that can be identified through images, sculptures, paintings and other means reflected on a certain carrier.
In the administrative dispute case 1 against trademark No. 6020570 for

“ ”, the Supreme People’s Court pointed out that, from the perspective of the public’s cognitive habits and characteristics, the facial features of a natural person are the most important personal characteristics among their physical features. If the party claims that the sign protected by the portrait right does not have facial features sufficient for identification, it should provide sufficient evidence to prove that the sign is identifiable by containing other personal features sufficient to reflect the natural person to whom it corresponds, and the public can realize that the mark has clear reference to the natural person. The disputed trademark is only a black silhouette of a person in absence of any personal characteristics related to the applicant for retrial, and any other natural person can make the same or similar actions. The mark is hence not recognizable and cannot clearly refer to the applicant for retrial, and the registration of the disputed trademark does not impair the portrait right of the applicant for retrial.

It can be seen that the identifiability between the portrait and the personal characteristics of a specific natural person is the key to assert whether the portrait right is tenable. For signs that cannot be identified by the public as to a specific natural person, such as silhouettes of people, the claim of protection of portrait right is often not supported. Other forms of protection need to be sought. In the invalidation case 2 against trademark No. 9254835 for “device” filed by Nike, Inc., although the Court did not support the trademark No. 643806 cited by Nike as the legal basis for claiming portrait right, it held that the disputed trademark and the cited trademark constituted similar trademarks, and the cited trademark had acquired well-known reputation. Thus the Court decided the registration of the disputed mark is in violation of Article 13 (iii) of the Trademark Law.

Trademark no. 9254835 Trademark no. 643806

It follows that if the right holder has registered a prior trademark, he can seek protection by asserting the trademark rights. However, in practice, it is very difficult to recognize a trademark as a well-known trademark, and hence difficult to prevent others from registering the trademark on dissimilar goods by claiming prior trademark rights. In contrast, unlike trademark rights, the claim of copyright is not limited by goods, and there is no need to prove the degree of popularity when claiming copyright. The graphics of the silhouette of a person mostly meet the elements of an art work as stipulated in the Copyright Law. If a prior copyright registration certificate can be legally obtained and used to claim the prior copyright, without counter-evidence, it is highly possible that the prior copyright claim can be supported. Therefore, for such portrait silhouette signs, the author suggests that the copyright registration should be filed together with the trademark registration application as early as possible.

In addition, for the protection of portrait right of a character image, since the character image is not always equivalent to the portrait of the performer, the portrait right based on character images need to be treated on a case-by-case basis. If the character image itself is the same as the performer’s portrait, or even if it is artistically processed through makeup and other means, it can still reflect the performer’s own facial features, and the public can establish a corresponding relationship with the performer through the character image, then the protection of the character image should fall within the scope of the protection of the performer’s portrait right. On the contrary, if the character image is quite different from the performer’s own image, and the public cannot directly correspond to the performer's portrait through the character image, the portrait right of the character image cannot be claimed. For example, in the administrative dispute case 3 against trademark no. 3450383 for “ ”, Beijing High Court pointed out that portrait right is usually limited to the real facial characteristics of a natural person, so that the disputed trademark is a reflection of Chaplin’s film character instead of a use of Chaplin’s image 4 as a natural person who has passed away, so the claim on infringement of portrait right was not supported by the Court.

2. Whether the person’s popularity is prerequisite for the protection of his/her portrait right

People are born equal and enjoy equal portrait right. The protection of portrait right shall not be preconditioned by the prestige of the portrait right person. However, the primary cause of registering a portrait as a trademark is to commercialize the portrait right, and the portrait trademark has the connotation of property attributes and economic interests. Therefore, in the field of trademark right granting and verification, the protection of portrait right requires a certain degree of public visibility of the portrait owner in some circumstances. For example, portrait paintings, due to artistic creation, usually have certain differences on appearances and looks from the portrait right person himself, and often cannot uniquely correspond to a specific natural person. Under the situation, it is required that the portrait right person himself/herself has a certain social popularity, and his/her facial characteristics are known to the public, which proves that the portrait has a corresponding relationship with him/her. Relevant evidence of popularity shall contain information that can reflect the facial characteristics of the portrait right person. Especially when the portrait right person’s own appearance and the portrait painting in the trademark are not highly similar, evidence should also be presented to prove the trademark applicant’s awareness of the portrait right person.

In the trademark invalidation case 5 against the trademark No. 18046007 for “ ”, the CNIPA found that the applicant (Kanye West) was well-known among the relevant public and his facial characteristics were known to the relevant public before the application for registration of the disputed trademark. The graphic of the disputed trademark is highly similar to the image of the applicant wearing sunglasses. In view of the fact that the responding party and its affiliates have registered a large number of trademarks similar to “YEEZY” brand related to the applicant, it can be inferred that the disputed party should have been aware of applicant while it had the intention to infringe the applicant’s portrait right. Therefore, it determined that the registration of the disputed trademark damaged the applicant’s portrait right.

3. Whether protection is limited to living natural persons

According to Article 994 of the Civil Code, in the event that the personality of a deceased person is infringed upon, his or her personality interests shall still be protected by law. In the Guidelines for Trademark Examination and Adjudication 2021 edition, it stipulates that the “other person” claiming the prior portrait right in light of Article 32 of the Trademark Law refers to the living natural person who was alive at the time of the application for registration of the disputed trademark. In the aforementioned judgment on Chaplin case, it is also pointed out the fact “Chaplin has passed away” is one of the reasons why the claim of infringement of his portrait right cannot be established, which is also consistent with the current practice. For the application for registration of the portrait of a deceased person as a trademark, Article 32 of the Trademark Law is not usually applicable, while the examination is rather based on Article 10(i)(7)(8) or Article 44(i) of the Trademark Law.

For example, in the invalidation case 6 against trademark No. 17859737 for

“ ”, the CNIPA held that one of requirements for the establishment of the portrait right protection is that the to-be protected person is a living natural person, and since Audrey Hepburn herself had passed away, her portrait right no longer falls within the scope of protection under Article 32 of the Trademark Law. However, Audrey Hepburn is an internationally famous movie star well-known to the relevant public in China as well, and if the disputed trademark is registered in respect of “plastic surgery; beauty salon” and other services in class 44, it is easily misleading to the consumers as to the connection with Audrey Hepburn and thus will confuse and misidentify the characteristics of the contents and source of the services, so the disputed trademark constitutes the situation referred to in Article 10(i)(7) of the Trademark Law.

It is worth noting that when applying Article 10(i)(7)(8) of the Trademark Law, it is necessary to prove that the disputed trademark is misleading to the public, harmful to public order and morals or has other unhealthy effects. With respect to the opposition or invalidation cases against trademarks related to the portrait of a deceased person, it is usually necessary to prove that the deceased has a high influence and popularity among the public or the relevant public in a specific field.

Notes:
1. (2015) Zhi Xing Zi No. 332 Administrative Judgement
2. (2018) Jing 73 Xing Chu No. 12842 Judgment
3. (2012) Gao Xing Zhong Zi No. 1507 Judgment
4. The master of comedy off-screen, no mustache, no funny walking https://baijiahao.baidu.com/s?id=1598507259141520674&wfr=spider&for=pc
Comedy master Chaplin, color photos exposed after removing makeup, appearance thoroughly defeats young man
https://baijiahao.baidu.com/s?id=1647555013949053679&wfr=spider&for=pc
5. Decision on Invalidation against Trademark No. 18046007 for “Device”
6. Decision on Invalidation against trademark No. 17859737 for “A.hepburn & Device”