[Guest post] Everybody was kung fu fighting: trade mark vs image rights - who will be the last one standing?

The IPKat is pleased to host this guest post by Katfriend Andrea Rossi (LA&P) on a dispute between the estate of the late actor and martial artist Bruce Lee and the holders of trade mark registrations which apparently represent his likeness.

Here's what Andrea writes:

Everybody was kung fu fighting: trade mark vs image rights - who will be the last one standing?

by Andrea Rossi

Real Kungfu fast-food chain (Getty Images)

If it is true that the IP world is a constant battlefield, surely, the future holds some kung fu fights. 

The Bruce Lee Enterprises, in the person of Shannon Lee, Bruce Lee’s daughter and CEO of the Bruce Lee Family Companies, has sued the Real Kungfu fast-food chain for using Bruce Lee’s image without permission. The member of the Lee family requested the Zhen Gongfu company, as known in Mandarin, to promptly remove the image and sought millions of US dollars (30) in damages (see full story here).

This episode raises interesting questions as the defendant has counter-argued that it has registered Bruce Lee’s image as a trade mark, and it has been using it for many years. Therefore, which rights can the Lee family rely on to protect the Bruce Lee universe from unjustified exploitation? 

Despite the fact that Article 101 of the General Rules of the Civil Law of the People's Republic of China (GRCL) grants natural persons the right, amongst others, to their name, portrait and reputation (see here), Real Kungfu was able, in 2007, to register Bruce Lee features as an international trade mark designating China, the European Union and Turkey (see registration here) and use it for many years.

According to Article 32 of the Trademark Law of the People's Republic of China, a sign cannot be registered as a trademark if it prejudices the existing prior rights of others (see here). However, it seems that during the registration process for the mark at issue, the Lee estate did not oppose the registration on the basis of Article 101 GRCL, which would have, most likely, hurdled the registration at its early stage.

Furthermore, the Bruce Lee Enterprises own various trade marks featuring Bruce Lee’s name and different stylisations of his facial features. However, none of these marks:

• was registered in class 43 (the defendant’s specification class) 
• carries the same figurative elements registered by the fast-food chain, 
• was made for the territory of China.

In addition, by virtue of article 45 of the Chinese Trademark Law, the Bruce Lee Enterprises could have sought to invalidate the Guangzhou Kungfu registration on the basis of Article 32. However, the defendant’s trade mark was registered in 2007 and the Chinese Trademark Law only allows an application for invalidity to be filed within five years from the registration.

It appears that under trade mark law, the Lee family will have a hard time protecting the Bruce Lee image in order to stop the defendant’s commercial activity.

However, if the Bruce Lee Enterprises appears to have poorly protected the Bruce Lee persona in China under trade mark law, it is also clear that Bruce Lee has an appealing power towards consumers and that the defendant is exploiting the likeness of the famous martial fighter. 

The recently emended Law Against Unfair Competition of the People’s Republic of China (see here) forbids the use of a person’s name “with certain influence” to mislead consumers into believing there is a connection with such famous person. Even if, in the case at hand, the defendant did not use Bruce Lee’s name, it may be argued that the clear depiction of Lee’s silhouette in the famous kungfu position (picture above), clearly evokes his world and that the defendant exploited his likeness. For this reason, even if the defendant’s sign is a registered trade mark and it has been used for a long time already, it may be considered as an act of unfair competition that has been gone unnoticed all these years.

Final considerations

It appears that the weak trade mark protection that the Bruce Lee Enterprises and Shannon Lee established for the Bruce Lee image has put them in hot water. This episode shows, once again, the importance of building an effective IP strategy that takes into consideration all the possible scenarios of infringement, accompanied with constant monitoring also to avoid disputes like the present one.