2020年1月13日 星期一

There Is Only One Black Mamba, and We All Know He Plays Basketball


Mr. Yuan-Hu Lin (Mr. Lin), a successful rally car racer of Taiwan, was ruled unable to register “Black Mamba” as trademark because “Black Mamba” is the stage name of Kobe Bryant, the worldwide famous LA Laker’s former shooting guard.

On April 21, 2016, Mr. Lin filed trademark application for “Black mamba” (hereafter “disputed mark”, as shown below), designated for goods under class 25, including outfits such as sports clothing, T-shirt, scooter clothing, racing apparel, athletic apparel, etc. The disputed mark was registered and published on November 16, 2016 (Reg. No. 01804197), and was subsequently opposed by Kobe Inc. (“KOBE”) on February 15, 2017, alleging violation of, among the others, Article 30.1.13 of Taiwan’s Trademark Law. Taiwan’s Intellectual Property Office sided with KOBE. Mr. Lin appealed, and the IP Court affirms.  


Article 30.1.13 of Taiwan’s Trademark Law provides that: “A trademark shall not be registered in any of the following: …containing another person’s portrait or well-known name, stage name, pseudonym, or alternative name, unless the said person consents to the application”.

The IP Court found that although the disputed mark was stylized and presented the image of an attacking black mamba (i.e., the snake), the overall appearance and impression of the disputed mark may still be viewed and perceived as the word “black mamba”. The IP Court further noted that stage names do not necessarily refer to the names used by movie or TV celebrities only. Professional athletes, who also provide highly entertaining experiences through performances in competing sports events, may also be viewed as celebrities and thus may use stage names.

Since as early as 2010, according to KOBE, the term “black mamba” has been widely used, both in Taiwan and foreign countries, to describe the future Hall of Famer Kobe Bryant and his aggressive style of playing basketball. The IP Court found KOBE’s above statements persuasive in view of the voluminous supporting materials, including news report, social media discussion, and the associated merchandise. As such, the IP Court ruled that “Black Mamba” has been a famous stage name referred to the former LA Laker’s superstar, and is eligible for protection as moral right. Hence, no one should be able to register a trademark containing such name without Kobe Bryant’s consent.  

Mr. Lin tried to justify the disputed mark by arguing that the registration of the disputed mark was actually based on his nickname “black mamba”; and that his fan base is totally different from that of Kobe Bryant, so that the registration is out of good faith without intent to create confusion. However, the IP Court found the arguments unpersuasive, because the evidence submitted by Mr. Lin is only fan discussions limited on specific social media platform, without wide news coverage or reputable reports as presented by KOBE. Such evidence is insufficient to prove that at the time of the registration of the disputed mark, the word “black mamba” is directed to Mr. Lin and perceived as his nickname in the relevant consumers.

Based on the forgoing reasons, the IP Court affirms Intellectual Property Office’s decision in cancelling Mr. Lin’s disputed mark. We will see whether there will be appeal challenging IP Court’s judgment.

Source: 智慧財產法院108年度行商訴字第78 https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,108%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c78%2c20200108%2c2

沒有留言:

張貼留言

Under Armour prevailed in opposition for its “UA” logo before Taiwan’s IP Office

On December 10, 2024, sportwear brand Under Armour Inc. (“Under Armour”) successfully convinced Taiwan’s IP Office (“TIPO”) that trademark n...