Recently, there are several controversies regarding IP rights protection in the entertainment industry. For example, the lead vocalist Mr. Ching-Feng Wu from the famous band “Sodagreen” has been sued by their former producer Mr. Wei-Che Lin on the grounds of violating the Copyright Act, and also the Sodagreen-relevant trademarks have almost all been registered by Mr. Lin’s company, leading to the awkward situation that Sodagreen could not use their own band name. Another example would be that a famous television presenter, Mr. Chia-Hsing Chen, given a stage name“焦糖哥哥 (Brother Caramel)”,  previously worked for Win TV Broadcasting Co.,LTD) and was formally warned by his former employer that he shall not use the stage name “焦糖哥哥” anymore because it is a registered trademark owned by Win TV.
 
On the other hand, along with the rise of streaming platforms, the “internet celebrities” or “YouTubers” are under the spotlight of the media. Some of the YouTubers have been aware of the importance of trademarks, and have registered trademarks under their own names instead of the management companies’. Some famous examples include “理科太太” (Mrs. Science) and “阿滴英文” (RD English).
 
Current practices regarding registering personal names or stage names as trademarks
 
In accordance with Subparagraph 13, Paragraph 1, Article 30 of the Trademark Act, 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 has consented to the application”. However, it should be noted that the names prohibited from registration only include “well-known” names. If a name is just one’s “non well-known” name, in principle it is allowed to be registered.
 
In consideration of business strategies, in order to prevent others from plagiarizing or free-riding names of the artists under the banner of a management company, the company usually will register the artists’ stage names or band names as trademarks under the companies’ own name. When a management company applies for registering an artist’s name as a trademark, according to the current examining practices, if the examiner recognizes that the artist is famous to a certain extent, usually a consent from the artist will be required for registration.
 
As to the artists, they are often subjected to the pressure that they need the investment from the management companies, and also considering the cooperation, they usually will give a consent to the company at the beginning of their business life. However, if their business relationships unfortunately split up, the relevant rights to the artist’s name often become a source of controversies.
 
How should artists protect the rights of their names?
 
1. Cancelling the trademark registration through objection or validation
 
If one artist already provided a consent to registration, then it satisfied the proviso of Subparagraph 13, Paragraph 1, Article 30 of the Trademark Act and the trademark registration is legitimate. But depending on the details in an individual case, if other grounds of refusal can be found in the trademark registration, the artist may consider to file an objection or validation to cancel the registration.
 
2. Revoking the trademark registration
 
If the name or stage name has not been used by the management companies for business purpose for a long time, the artist can file a revocation to TIPO against such trademark on the grounds that “the trademark has not yet been put to use or such use has been suspended for a continuous period of not less than three years without proper reasons” in accordance with Subparagraph 2, Paragraph 1, Article 63 of the Trademark Act. This is how “Brother Caramel” Mr. Chen has revoked the trademark with his stage name registered by Win TV; he also has registered relevant trademarks again under his own name on services of advertisements, publications, entertainment and restaurant in classes 35, 38, 41 and 43.                                                                                                                                                                                                                                                                                                                                                                                                                                   
3. Making fair use claims
 
In accordance with Subparagraph 1, Paragraph 1, Article 36 of the Trademark Act, a registered trademark shall not entitle the proprietor to prohibit one indicating his/her own name in accordance with honest practices in commercial matters and not using it as a trademark. Nevertheless, according to the recent Court trials, artists will need to prove that they used their names in the way that “subjectively having no intention to use it as a trademark, having used it as a description or indication, and objectively not being viewed as a trademark by the consumers” in order to make a fair use claim.
In real situations, when artists use their names or stage names, it is less often that the names are used purely descriptive, but more likely to be used in business activities to indicate the sources of goods or services. Hence, whether it is possible to make a fair use claim of trademarks will depend on the intention of using a name as well as how it is understood by the consumers.
 
To sum up
 
Although stage names or personal names can be protected as trademarks, they are also part of the personality rights of the artists or internet celebrities, which are different from normal trademarks. As to the reputation of artists and the value of their brands, the credit cannot be completely attributed to management companies; artists themselves should also put a lot of efforts. Therefore, the allocation of the rights of stage name trademarks should be taken into consideration seriously by artists at the beginning of the cooperation with management companies. In order to avoid being locked in a stalemate when coming to a parting of the ways, we would suggest artists to register their names as trademarks under the artists’ own names, or at least being a joint owner of the trademarks, and in advance to have an agreement on the rights regarding the trademarks, in order to avoid completely losing the efforts invested eventually.
 
Sources:
 “Ching-Feng Was Indicted on Violating the Copyright Act, Accused by His Former Mentor”, CNA, Feb. 24, 2020, https://www.cna.com.tw/news/firstnews/202002240034.aspx
 
 “Fought Against MOMO Patent-Child Channel, Successively Revoked The Trademark; Chia-Hsing Chen: Cameral Is My Own Stage Name!”, CTS News, Mar. 4, 2020, https://news.cts.com.tw/cts/life/202003/202003041992593.html