Recently, the trademark dispute between Bruce Lee's descendants and the fast-food chain brand Zhen Kung Fu has made phased progress.
According to China Trademark Network, the State Intellectual Property Office ruled that 20 graphic trademarks of Guangzhou Zhen Kung Fu Catering Management Co., Ltd. (hereinafter referred to as "Zhen Kung Fu") were "invalid", and issued a "ruling on the request for invalidation" on August 25. The figurative trademarks that were found to be invalid resembled Bruce Lee's portrait and classic movements.
Twenty figurative trademarks were ruled invalid
According to China Trademark Network, 20 graphic trademarks registered by Zhen Kung Fu, including "Zhen Kung Fu and Figure (Registration No.: 3999537)", "True Kung Fu (Registration Number: 6895149)" and "True Kung Fu Kung Fu Send (Registration No.: 8852152)", were declared invalid by the State Intellectual Property Office.
Taking "Zhen Kung Fu and Tu" (registration number: 3999537) as an example, China Trademark Network shows that the trademark is a service trademark such as "restaurant" in Class 43, which Zhen Kung Fu applied for registration in 2004, and the exclusive right period was originally from February 21, 2017 to February 20, 2027.
Source: China Trademark Network
The State Intellectual Property Office held that Bruce Lee was a generation of martial arts grandmasters, the first global promoter of Chinese kung fu, the first Chinese protagonist in Hollywood, known as the "king of kung fu", and before the application for registration of the disputed trademark, Bruce Lee was already a household name public figure, with high popularity and wide influence. The disputed trademark is almost identical to Bruce Lee's portrait and classic movements, and when used as a trademark in the approved service, it is easy for consumers to misidentify the source of the service and other characteristics, which has constituted the situation referred to in Article 10.1.7 of the Trademark Law of 2001 (i.e., exaggerated and deceptive signs shall not be used as trademarks).
According to the ruling, the State Intellectual Property Office ruled that these disputed trademarks were invalidated in accordance with Article 10.1.7 of the 2001 Trademark Law, Article 44.1, 3 and Article 46 of the 2019 Trademark Law.
Source: China Trademark Network
It was also on August 25 that the case of Bruce Lee's daughter v. Zhen Kung Fu was heard at the Shanghai No. 2 Intermediate People's Court (hereinafter referred to as the "Shanghai No. 2 Intermediate Court"), and the cause of the case was a general personality rights dispute, and the case has not yet been pronounced.
According to the Southern Metropolis Daily, the person in charge of Zhen Kung Fu said that whether the 20 "old" Zhen Kung Fu trademarks that were declared invalid violated the Trademark Law and other disputes "are yet to be decided by the Shanghai court." ”
True Kung Fu trademark declared invalid Source: China Trademark Network
Who does Bruce Lee's portrait rights belong to?
As early as December 25, 2019, Bruce Lee Enterprises, LLC (Bruce Lee Co., Ltd. (hereinafter referred to as "Bruce Lee Company") sued Zhen Kung Fu to the Shanghai Second Intermediate Court, demanding that Zhen Kung Fu immediately stop using Bruce Lee's image, and clarified on the media page for 90 consecutive days that the company had nothing to do with Bruce Lee, compensating 210 million yuan for economic losses and 88,000 yuan for reasonable expenses for rights protection.
The day after being sued, Zhen Kung Fu responded through Weibo that the Zhen Kung Fu series of trademarks were applied for by the company and authorized after strict examination by the State Trademark Office, and the company had been in use for 15 years. Zhen Kung Fu believes that there has been a dispute over whether its trademark is infringing many years ago, but there has been no administrative or judicial conclusion that its trademark has been judged to be infringing or revoked. Zhen Kung Fu said that he was "very puzzled" to be prosecuted after many years, and said that he was actively studying the facts of the case and preparing to respond to the lawsuit.
According to public reports, Bruce Lee's daughter, Shannon Lee, had bought back ownership of her father's films and trademarks in the United States in 2010. Since then, Li Xiangning has set up a rights protection office in China and taken a number of measures to protect rights.
According to Dong Yongyi, deputy director of the Trademark Professional Committee of the Guangzhou Lawyers Association and lawyer of Guangdong Sanhuan Huihua Law Firm, quoted by Southern Metropolis Daily, according to Article 47 of the Trademark Law, once the ruling on the invalidity of a trademark takes effect, the exclusive right to use the corresponding registered trademark is equivalent to not having existed from beginning to end, moreover, the reason for the invalidity of the State Intellectual Property Office is that the registered trademark of Zhen Kung Fu is almost the same as Bruce Lee's portrait and classic movements, then Bruce Lee's daughter's appeal in the civil case "requests to stop using Bruce Lee's image". Naturally, it is easy to be supported by the court.
True Kung Fu originated in Dongguan, formerly known as "168 Dessert House" established in 1990, and became a "Double Seed" steamed restaurant in 1994. In 2004, under the planning services of Ye Maozhong marketing planning agency, the company transformed its positioning as "Chinese fast food" and launched the "True Kung Fu" brand, accompanied by an icon similar to Bruce Lee.
It is worth noting that in 2016, Zhen Kung Fu officially released a new brand image and a new version of the logo, compared with the old design, the new logo has changed in composition and brand name.
Comparison of new and old brand logos of real kung fu (old on the left, new on the right)
Similar to the Bruce Lee Descendants v. Zhen Kung Fu trademark infringement case is the Qiaodan trademark case that attracted much attention in the early years. On February 23, 2012, NBA star Michael Jordan claimed in a video that he filed a lawsuit in a Chinese court accusing Qiaodan Sports Co., Ltd. (now renamed Zhongqiao Sports Co., Ltd.) of infringing his right to his name.
In 2019, the Supreme People's Court ruled that the Qiaodan sports trademark at that time did not reflect Jordan's personal characteristics and did not constitute damage to Jordan's portrait rights. In 2020, the Supreme People's Court held that Qiaodan Sports knew that Michael Jeffrey Jordan himself enjoyed long-term and widespread popularity in China, but still used "Qiaodan" to apply for the registration of the disputed trademark, which could easily lead the relevant public to mistakenly believe that the goods marked with the disputed trademark had a specific connection with Qiaodan himself, such as endorsement and licensing, and damaged Qiaodan himself's right to a prior name.
Finally, at the end of 2020, the Second Intermediate People's Court of Shanghai, also known as Shanghai, ordered Qiaodan Sports to publicly apologize to plaintiff Jordan himself in newspapers and online, and clarify the relationship between the two; Stop using the "Jordan" trade name in its business name; The use of trademarks involving "Jordan" should be stopped, but for trademarks involving "Jordan" that have exceeded the five-year dispute period, reasonable means including distinguishing marks should be used to indicate that they are not related to Michael Jordan; Compensation for the plaintiff's moral damage consolation of RMB 300,000.