The intellectual property landscape is evolving. Businesses must look beyond traditional registered trademark protections to safeguard unregistered assets, specifically the "merchandising rights" embedded in creative work titles. This distinction is vital for preventing how brand dilution erodes value and unauthorized commercial exploitation.
Recent legal proceedings regarding the invalidation of nine trademark registrations for "Mallarmé’s Tuesdays" provide a clear framework for creators and enterprises. A well-known work title, supported by robust evidence of reputation, functions as a "prior right" capable of blocking bad-faith trademark filings.
The Legal Framework: Beyond Standard Trademarks
Article 32 of the People’s Republic of China Trademark Law prohibits applications from prejudicing the prior rights of others. While trademarks and copyrights are standard examples, recent judicial interpretations have expanded this category to include "merchandising rights."
Merchandising rights encompass the commercial value derived from a work’s title or character name that has achieved significant reputation. These titles operate as independent symbols with distinct economic potential, rather than mere identifiers of the creative work. When third parties register trademarks using famous book, film, or album titles, they often attempt to capture the goodwill and audience affinity attached to that title, extending beyond simple product naming.
Judicial practice has matured from restrictive interpretations to a nuanced approach. Protection now hinges on a three-part test:
- Reputation: The work title must demonstrate high recognition within the relevant public.
- Commercial Value: The title must possess independent commercial worth derived from creative effort and investment.
- Likelihood of Confusion: Using the title as a trademark for related or unrelated goods must likely cause the public to mistakenly believe there is a licensing, authorization, or connection between the user and the original creator.
Case Study: The "Mallarmé’s Tuesdays" Invalidations
This legal principle was applied in proceedings initiated by the legal team of lawyer Charles Feng on behalf of singer Wu Qingfeng, known for his work with the band Sodagreen. In 2022, Wu released Mallarmé’s Tuesdays, his third solo album.
Shortly thereafter, Explosion Plan (Hainan) Enterprise Management Consulting Co., Ltd. filed multiple applications to register "Mallarmé’s Tuesdays" as a trademark across various classes, including entertainment services, alcoholic beverages, jewelry, and cosmetics. Nine of these applications were approved.
Wu Qingfeng’s legal team challenged these registrations, arguing that the album title constituted a prior right under Article 32. The strategy focused on proving that the title was not merely a song identifier but a brand with established commercial value and audience association.
Building the Evidence Chain
Success required constructing a comprehensive evidentiary record rather than relying on assertions of fame:
- Proof of Dissemination: Data from digital music platforms, including play counts and fan engagement metrics, demonstrated the album’s widespread reach.
- Market Influence: Sales records, online reviews, and media coverage confirmed public recognition of the title.
- Creator Association: Evidence linked the title directly to Wu Qingfeng, establishing a stable association in the consumer mind.
- Bad Faith Intent: An examination of the respondent’s history revealed a pattern of filing trademarks identical to other well-known album titles, suggesting an intent to free-ride on existing goodwill rather than genuine brand development.
The Outcome
The Trademark Review and Adjudication Board (TRAB) upheld the invalidation requests for all nine marks. The decision emphasized that the album title, through extensive publicity and creative labor, had acquired significant reputation and commercial value. Allowing the registrations would mislead the public regarding a connection with Wu Qingfeng, thereby infringing his prior rights.
Strategic Implications for Businesses
This case reflects a broader trend in IP enforcement. For businesses in the creative and cultural industries, ignoring merchandising rights creates vulnerability to cybersquatters and trademark trolls.
Prior Rights Are Actionable
If a brand name, product line, or creative work has achieved recognition, it may be protected even without a registered trademark. Invoking Article 32 allows for the invalidation of conflicting registrations that capitalize on existing reputation. However, this requires robust evidence of fame and commercial impact.
Monitoring Is Critical
The window for action is narrow. Invalidating a registered trademark is costly and time-consuming. Companies must actively monitor trademark databases for filings that mimic brand assets or work titles. Early detection enables opposition proceedings before registration, which is often more efficient than post-registration invalidation.
Define Your "Merchandising" Scope
Enterprises must understand the scope of goods and services where their brand holds influence. In the Mallarmé’s Tuesdays case, protection extended beyond music-related services to diverse categories like jewelry and cosmetics because the public’s affinity for the artist extends to these lifestyle products. Protection should cover all classes where consumer confusion is plausible.
The protection of merchandising rights represents a sophisticated layer of intellectual property strategy. It addresses the economic reality of how audiences interact with brands and creative works. By leveraging legal tools like Article 32, businesses can protect the intangible value built over time. The key lies in diligent monitoring, proactive enforcement, and maintaining clear, documented evidence of brand reputation and influence. Treating unregistered assets with the same rigor as registered trademarks is essential for preserving IP value.