Prior consent is required for registering a famous stage name as a trademark
E201004Y2 | Nov. 2020（E252）
A man surnamed Lin (hereinafter referred to as “Lin”) successfully trademarked a stylized logo of “Blackmamba” (hereinafter referred to as the “mark in dispute”) in April 2016 and designated it to be used on apparel, T-shirts, and outerwear. Kobe Inc. filed an opposition action with Taiwan IPO against the registration of the mark in dispute and successfully had it cancelled, which caused Lin to file an administrative appeal but the administrative appeal was denied. Lin further initiated an action with the Taiwan IP Court but lost this case. Thus, Lin went further to appeal this case to the Supreme Administrative Court. The Supreme Administrative Court, however, overruled Lin’s appeal.
According to the IP Court judgment, Kobe Bryant, the famous American professional basketball player, who had a nickname “Black Mamba” for being known for his ability to move as aggressively, rapidly, and agilely on the court as a black mamba, the venomous snake from Africa, whose speed is nearly unmatched. Kobe Bryant has been called or referred to by the nickname “Black Mamba” by his fans, in his official FB fanpage or major sports media since a time between June 2010 through April 2016. “Black Mamba” is Kobe Bryant’s nickname, alternative name, as well as stage name that has aroused Taiwanese consumers’ (audience’s) much attention, and in this regard, any labeling including “Black Mamba” would cause Taiwanese consumers to believe that any products bearing “Black Mamba” are related to Kobe Bryant.
The IP Court judgment also stated that “Black Mamba” had already been Kobe Bryant’s stage name well-known to Taiwanese consumers before Lin filed the trademark application for the mark in dispute. Under this circumstance, Lin’s acts of applying for trademark registration for the mark in dispute without Kobe Bryant’s prior consent and obtaining economic benefits by using the mark in dispute in commercial activities have impaired the moral right and economic right of Kobe Bryant and form the unregistrable grounds as provided by the Trademark Act. In this regard, Taiwan IPO’s decision to cancel the registration of the mark in dispute did not contravene the laws, and the administrative decision was not erroneous to keep the opposition decision unchanged. Therefore, Lin’s request for revocation of Taiwan IPO’s opposition decision and the administrative decision is groundless and should be dismissed accordingly.
The Supreme Administrative Court made a ruling to sustain the IP Court’s judgment and dismissed Lin’s appeal. (Released 2020.10.04)