The intersection of creative expression and commercial protection has become a focal point in intellectual property law. For entities in the entertainment, media, and cultural sectors, the critical inquiry is whether titles of creative works - such as film or music albums - qualify as protected prior rights under trademark law. Recent administrative adjudications in China affirm that they do, provided specific stringent criteria are satisfied.
This framework was recently clarified in invalidation proceedings concerning trademarks associated with Mallarmé’s Tuesdays, the third solo album by singer and songwriter Wu Qingfeng. The outcome establishes a precedent for shielding creative assets from opportunistic trademark registrations.
The Legal Foundation: Prior Rights and Merchandising Rights
Article 32 of the People’s Republic of China Trademark Law prohibits the registration of marks that prejudice the prior rights of others. Historically, courts and the China National Intellectual Property Administration (CNIPA) interpreted "prior rights" narrowly, limiting them to traditional assets such as trade names, copyrights, and personal name rights.
However, the expansion of the commodity economy revealed a protection gap. Infringers began registering titles of well-known films, audio-visual works, and character names as trademarks. These titles evolved beyond mere source identifiers for creative works, becoming independent symbols carrying significant commercial value, often termed "merchandising rights."
Judicial practice adapted to address this disparity through key milestones:
- The 2005 "Harry Potter" Case: The Trademark Office recognized that a foreign-language work title could constitute a prior right if it was "well-known within China."
- The 2011 "007 James Bond" Case: The Beijing High People’s Court formally recognized "merchandising rights" for character names, acknowledging their commercial value stems from substantial labor and capital investment. This decision served as a guiding precedent by the Supreme People’s Court.
These rulings prompted policy revisions, establishing a three-element test for protection: reputation, commercial value, and association. Under current guidelines, if a work title or character name has attained a high degree of reputation, and its use as a trademark is likely to cause public confusion regarding endorsement or licensing, it qualifies for protection under Article 32.
Case Study: The "Mallarmé’s Tuesdays" Invalidation
These principles were tested in invalidation proceedings initiated by Wu Qingfeng against ten trademark applications filed by Explosion Plan (Hainan) Enterprise Management Consulting Co., Ltd.
The Context
Wu Qingfeng released Mallarmé’s Tuesdays on September 30, 2022. Between its release and June 2023, Explosion Plan filed multiple applications for the mark "Mallarmé’s Tuesdays" across various classes, including Class 35 (advertising and business management), Class 33 (alcoholic beverages), Class 14 (jewelry), and Class 3 (cosmetics). Nine of these applications were approved for registration.
Upon discovering the filings, Wu Qingfeng’s legal team initiated invalidation proceedings against the registered marks. The core challenge was establishing that the album title constituted a protectable prior right, despite Wu not having previously registered trademarks for the title in mainland China.
Legal Strategy and Evidence
The strategy focused on proving that "Mallarmé’s Tuesdays" met the criteria for protection as a music work title under Article 32. The argument rested on three pillars:
- Identity: The disputed mark was identical to the plaintiff’s well-known music work title.
- Reputation and Influence: The work achieved high reputation among the relevant public, extending beyond artistic appreciation to commercial influence in related goods and services.
- Likelihood of Confusion: A stable, one-to-one association existed between the work and Wu Qingfeng. The registration of such marks by a third party was likely to mislead the public into believing the goods were authorized or affiliated with the artist, thereby usurping commercial opportunities.
Substantiating these claims required comprehensive evidence:
- Dissemination Data: Play counts and fan engagement metrics demonstrating broad reach.
- Commercial Impact: Sales data and review pages highlighting the album’s influence.
- Third-Party Validation: Awards and media reports confirming the stable correspondence between the title and the artist.
- Registrant Intent: Corporate records showing the respondent filed numerous trademarks identical to well-known titles, indicating a pattern of free-riding on others' goodwill.
The Adjudication
CNIPA upheld all nine invalidation requests. The administrative body reasoned that the evidence proved "Mallarmé’s Tuesdays" had become known to the relevant public prior to the filing dates of the disputed marks. The reputation and associated commercial value were direct results of Wu Qingfeng’s creative labor and investment. Consequently, the registration of the disputed marks violated Article 32 by prejudicing the plaintiff’s prior merchandising rights.
Implications for Business and Trademark Strategy
The ruling reinforces several critical lessons for businesses, particularly those in the creative industries:
1. Titles as Assets
A well-known work title is a commercial asset with independent legal protection. Companies must recognize that titles, once established with significant reputation, can prevent third parties from registering them as trademarks in related or even unrelated classes if confusion is likely.
2. The Importance of Monitoring and Early Action
The case highlights the necessity of proactive trademark monitoring. Wu Qingfeng’s team acted swiftly upon discovering the applications. For businesses, establishing a robust monitoring system allows for early detection of squatting or opportunistic filings, enabling timely legal intervention before marks are registered.
3. Evidence is Paramount
Success in such invalidation proceedings hinges on comprehensive evidence collection. Businesses must document not only sales and publicity but also third-party recognition and the strength of the association between the title and the creator. This data forms the bedrock of proving "prior rights" and "reputation."
4. Clarity in Brand Protection
For creators and brands, this case underscores the value of securing trademark registration for titles alongside copyright protection. While the legal framework allows protection without registration, proactively registering trademarks eliminates ambiguity and reduces the burden of proof in potential disputes.