http://ipkitten.blogspot.com/2022/09/everybody-is-finally-kung-fu-fighting.html
Readers may recallthat Bruce Lee Enterprises (the estate of the late well-known Chinese American martial artist Bruce Lee) filed a lawsuit against “Real Kungfu” (“真功夫”) fast-food chain for using Bruce Lee’s image without permission before the Shanghai Second Intermediate Court (上海市第二中級人民法院) back in 2019.
Where this Kat is based, there have recently been several news reports on this lawsuit again. This is because the trial began in the Shanghai Second Intermediate Court last week. See for instance news reports here, hereand here.
| Real Kungfu fast-food chain |
The filing of the lawsuit back in 2019 attracted significant attention, including extensive news coverage and discussions among professionals (Katfriend Andrea Rossi also commented on this on The IPKat here.) Like many others, this Kat finds this case particularly interesting from a trade mark and IP perspective.
Important background information to this lawsuit is that Real Kungfu is the owner of trade mark registrations in China for a logo which apparently have reproduced Bruce Lee’s likeness since 2004. As if this was not detrimental enough in a “First-to-File” jurisdiction, Real Kungfu has been using the mark for many years in relation to its fast-food business. This poses difficulties in seeking to invalidate Real Kungfu’s registrations as PRC trade mark laws only allow an application for invalidity to be filed within five years from registration (see Article 45of the PRC Trade Mark Law).
From the looks of this, perhaps a ground that could be relied upon by Bruce Lee Enterprises would be infringement of portrait rights. One of the main questions would undoubtedly be whether Real Kungfu’s logo mark evokes Bruce Lee’s likeness. Trade mark professionals should be quick to recall that this may be difficult to prove, as indicated in one of the Michael Jordan cases, where the Supreme People’s Court of China held that the relevant public would unlikely recognize a silhouette of Michael Jordan as the person himself. See below a GIF file showing a courtroom demonstration of the identity between silhouettes. You may also refer to SpecialKat Tian Lu’s report here as a refresher.
Arguably, compared to the Michael Jordan silhouette, the logo adopted by Real Kungfu does contain clearer references to Bruce Lee’s features, including his facial features, hairstyle, iconic sportswear, and signature fighting pose. The likelihood of success of Bruce Lee Enterprises in this regard might therefore be higher.
| Real Kungfu’s trade mark |
| Iconic image of Bruce Lee |
Notwithstanding the above, “things are different in China” as SpecialKat Tian Lu noted. This said, one thing for sure is that China has been working tirelessly in recent years to combat bad faith filings through legislative amendments. As an example, the law as amended (Article 4) states that a trade mark application made in bad faith without an intention to use will be rejected.
We will keep you posted on how the case progresses!
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