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A Trademark that Includes the Well-known Stage Name of a Professional Athlete should be Refused of Registration
To attract attention, it is not uncommon for celebrities to adopt "stage names" in relation to their professional activities. Such "stage names" may have great commercial value and are often considered as an important source of income for the celebrities. To piggyback on the celebrities' fame, other people might use such stage names to promote their own goods or services. This kind of conduct might cause consumer confusion and weaken the distinctiveness of the stage names.
The Trademark Act in Taiwan provides protection for celebrities' stage names against third party appropriation. According to Article 30-1 (13) of the Act, trademarks containing another person’s portrait or well-known name, stage name, pseudonym, or alternative name, unless the said person consents to the application, should be refused of registration. However, the determination of "stage name" in Article 30-1 (13) remains unclear under the current practice. In a recent administrative litigation regarding trademark opposition, the Intellectual Property Court expressed its view on this issue.
The trademark at issue was a stylized logo of "BLACK MAMBA", with designated goods such as clothing in Class 25. The opponent of the trademark opposition was an American company, whose legal representative is the American professional basketball player Kobe Bryant.
The opponent claimed that "black mamba" is the stage name of Kobe Bryant and the stage name is widely recognized by the pertinent consumers therefore the trademark at issue should not be registered based on Article 30-1 (13). On the other hand, the registrant of the stylized logo "BLACK MAMBA" argued that the term "black mamba" is not an exclusive pseudonym of Kobe Bryant. According to the registrant, "black mamba" is only the name of a species of venomous snake and is commonly used by others in various goods and services. In addition, even though Kobe Bryant had used "black mamba" to describe his basketball skills, "black mamba" is not a well-known nickname for Kobe Bryant in Taiwan.
Firstly, the Intellectual Property Court explained that, the nature of professional athletes is highly similar to celebrities such as performers or entertainers. When consumers cheer for professional athletes, they often use the athletes' nicknames instead of their real names. Therefore, the Intellectual Property Court concluded that the "nicknames" of professional athletes should be considered as "stage names" in Article 30-1 (13).
The Intellectual Property Court further pointed out that, the consumers in Taiwan may directly associate "black mamba" to Kobe Bryant based on the evidence provided by the opponent. In addition, the registrant also referred Kobe Bryant as "black mamba on the basketball court" in an interview therefore the registrant clearly had the knowledge that "black mamba" is the stage name of Kobe Bryant before he filed the trademark. Given the above, the Intellectual Property Court held that "black mamba" is Kobe Bryant's well-known stage name and the trademark at issue should be refused of registration.