Trademark disputes over artists’ and social media influencers’ stage names or music band/group names

Recent years have frequently seen intellectual property-related disputes between artist management companies and the artists they manage. An analysis of such disputes is as follows:

1. Who is the proprietor of a stage name trademark?

In commercial practices, the applicant for registration of a stage name or music band/group name trademark is generally an artist management company. In the meantime, Article 30, Paragraph 1, Subparagraph 13 of the Trademark Act specifies that a trademark containing another person’s portrait or well-known name, stage name, pseudonym, or alternative name shall not be registered unless the said person consents to the application. According to current trademark examination practices, therefore, the examination committee will require the applicant for registration of a stage name or music band/group name trademark to provide a written consent issued by the artist or artists themselves in order to comply with the requirement set forth in Article 30, Paragraph 1, Subparagraph 13 of the Trademark Act.

It can be known from the provision cited above that a trademarkcontaining another person’s name or stage name shall not be registered if the name or stage name is already “well-known”. If the name or stage name is “not well-known”, another person still may apply for registration of a trademark containing the name or stage name. This is why a trademark concerning an artist’s right to a name can turn into a major dispute between the artist and his/her artist management company when the contract between the two parties expires or when the two parties no longer work together.

2. How does an artist regain the trademark rights to a stage name or music band/group name after his/her contract with an artist management company expires?

(1) Cancelling the trademark registration through an opposition/invalidation procedure

If the artist management company applied for registration of the artist’s stage name without the artist’s consent, the artist may file an opposition or invalidation to cancel the registration. Once the trademark registration is cancelled, the artist management company no longer has trademark rights to the stage name. The artist, therefore, may reapply for registration of the stage name trademark. It should be noted, however, that oppositions and invalidations have their respective legal filing deadlines. No opposition or invalidation may be filed after the corresponding legal filing deadline. If the artist had issued a written consent in the first place for one reason or another, the trademark registration cannot be cancelled in accordance with Article 30, Paragraph 1, Subparagraph 13 of the Trademark Act, and the artist may not file an opposition or invalidation if there are no other grounds for refusal of registration.

(2) Applying for revocation of the trademark registration

The artist may apply for revocation of the trademark registration with the competent authority by claiming that the artist management company has not put the trademark to use in relation to the designated goods or services for a continuous period of three years. Whether the application will be approved depends on whether the artist management company can provide proof of proper use of the trademark.

In AdministrativeAppeal Judgment 2020 Xing-Shang-Su Zi No. 101, the Intellectual Property and Commercial Court held that using the trademark in question in the wording of the name of a character in a TV program or in relation to the setting or playing of the character does not constitute use of the trademark in question, and that the trademark in question, therefore, had not been used for three years before the application for revocation of the registration of the trademark in question was filed. The registration of the trademark in question was revoked in accordance with Article 63, Paragraph 2 of the Trademark Act.

3. How can an artist continue using a stage name after his/her contract with an artist management company expires?

(1) Claiming fair use

Article 36, Paragraph 1, Subparagraph 1 of the Trademark Act states that a registered trademark shall not entitle the proprietor to prohibit a third party from indicating his/her own name in accordance with honest practices in commercial matters while not using it as a trademark. As an artist (or social media influencer) has the right to use a stage name, and the right is protected by Article 19 of the Civil Code, an artist may use a stage name to indicate his/her own name as long as the use is in accordance with honest practices in commercial matters. According to court judgments, an artist may claim fair use of a stage name only if: the artist does not have the subjective intention to use the stage name as a trademark, the stage name is for descriptive use, and consumers do not use the stage name to identify the sources of goods or services.

(2) Claiming bona fide prior use

Article 36, Paragraph 1, Subparagraph 3 of the Trademark Act states that “A registered trademark shall not entitle the proprietor to prohibit a third party from using bona fide, prior to the filing date of the registered trademark, an identical or similar trademark on goods or services identical with or similar to those for which the registered trademark is designated, provided that the use is only on the original goods or services; the proprietor of the registered trademark is entitled to request the party who uses the trademark to add an appropriate and distinguishing indication.”