The Title of a Music Album May Be Protected as a “Prior Right” Under Article 32 of the PRC Trademark Law — The “Mallarmé’s Tuesdays” Invalidation Proceedings

Written by Charles Feng, IP Expert and collaborator of the China IP SME Helpdesk; and Xue Lian and Zhang Mengyi.

The “Mallarmé’s Tuesdays” Invalidation Proceedings Brought by Singer Wu Qingfeng, Represented by Lawyer Charles Feng’s Team.

Under Article 32 of the current PRC Trademark Law: “An application for trademark registration shall not prejudice prior rights of others, nor shall an application be made by improper means to register a trademark that is already in use by another party and has acquired a certain influence.” Can the title of a music album, through a relatively high degree of reputation, attain commercialized interests, constitute “prior rights” of others, and thereby invoke Article 32 for protection?

In the invalidation proceedings concerning the “Mallarmé’s Tuesdays” trademarks initiated by the team of Lawyer Charles Feng on behalf of singer Wu Qingfeng, the Trademark Review and Adjudication Board granted support. It is hoped that this case will provide insights and inspiration for handling similar matters in the future.

Legislative Background

The Trademark Examination and Adjudication Guidelines give a concrete interpretation of “prior rights of others” under Article 32, namely: rights obtained prior to the filing date of the disputed mark, other than trademark rights, including trade name rights, copyright, design patent rights, rights of personal name, right of portrait, geographical indications, as well as other lawful prior interests that should be protected. In judicial practice, the “other lawful prior interests” referenced in the Guidelines have gradually crystallized into the concept of merchandising rights. 

China initially adopted a generally restrictive, negative stance on protecting “merchandising rights.” With the flourishing of the commodity economy, however, judicial practice increasingly encountered infringers who used the titles of well-known film and audiovisual works and character names as trademarks. Such titles and character names no longer performed merely a source-identifying function; they also became independent symbols carrying commercial value. To safeguard the legitimate interests of right holders, courts and the China National Intellectual Property Administration (CNIPA) began employing the concept of merchandising rights, with a perceptibly more relaxed approach to protection conditions.

In the 2005 “Harry Potter” opposition, the Trademark Office for the first time in an administrative decision recognized that a foreign-language work title could constitute a prior right, expressly requiring that the work title be “well-known within China.” In the 2011 “007 James Bond” case, the Beijing High People’s Court made an initial judicial recognition of “merchandising rights.” The appellate judgment expressly held that “007” and “JAMES BOND,” as character names from the “007” series of films, were known to the relevant public; their fame was the crystallization of Danjaq’s creative labor, and the commercial value and opportunities arising therefrom were the result of Danjaq’s substantial investment of labor and capital. Therefore, the well-known character names from the film should be protected as prior rights. This case was later selected as a 2009 guiding case by the Supreme People’s Court. At that time, the 2001 version of the Trademark Law applied, and protection was granted under the first half of Article 31. 

Judicial adjudication in practice also propelled policy revisions, bringing increasing normalization and maturity to the merchandising-rights regime. Article 16.20 of the Adjudication Guidelines for Administrative Cases Involving Trademark Granting and Confirmation issued by the Beijing High People’s Court specifies that, under certain circumstances, Article 32 may be invoked to protect lawful prior interests where, inter alia, the object of protection is a work title or a character name from a work. Further, Article 22(2) of the Provisions of the Supreme People’s Court on Several Issues Concerning the Hearing of Administrative Cases Involving Trademark Granting and Confirmation (Judicial Interpretation [2017] No. 2) provides: for works still within the copyright term, if the work title or character name has attained a relatively high degree of reputation, and their use as a trademark on related goods is likely to cause the relevant public to mistakenly believe that the goods are licensed by, or have a particular connection with, the right holder, then courts shall support a claim that such constitute prior interests. This provision for the first time established a three-element test of “reputation + commercial value + association.”

 Factual Background 

Wu Qingfeng is a well-known singer, musical artist, and songwriter from Taiwan (China), and the lead vocalist of the famous Mandarin pop band “Sodagreen.” With emotive songwriting and a versatile, fluid timbre, Wu enjoys popularity on both sides of the Strait and has created many widely sung and wellloved compositions. Mallarmé’s Tuesdays is Wu’s third solo album, for which he served as the vocalist, lyricist-composer, and producer. The album was released on September 30, 2022. The digital edition contains 12 tracks and the physical edition 16 tracks. 

From the album’s release through June 2023, Explosion Plan (Hainan) Enterprise Management Consulting Co., Ltd. filed a total of 10 trademark applications for “Mallarmé’s Tuesdays” in Classes 35, 33, 14, 3, and 21 among others; nine of these were approved for registration between May and December 2023. Upon discovering these circumstances, Wu Qingfeng engaged the team of Lawyer Charles Feng to file invalidations against the nine registered marks. 

Issues and Strategy 

Because Wu had not filed trademarks in mainland China for “Mallarmé’s Tuesdays” prior to the album’s release, the core issues were whether the disputed marks infringed Wu’s existing prior rights, and if so, what those rights were. 

Lawyer Charles Feng’s team analyzed the series as follows:：

The album title “Mallarmé’s Tuesdays” should be protected under Article 32 as “prior rights of others.” Specifically, it falls within “music work titles” as contemplated by the Supreme People’s Court’s 2017 Provisions and Article 16.20 of the Adjudication Guidelines. Although merchandising-rights protection most commonly involves titles of films or video games—e.g., the “Astro Boy,” “Eternal Love,” and “Honor of Kings” cases—the title “Mallarmé’s Tuesdays,” as a music album title, also satisfies the necessary attributes of protectable objects in trademarkconfirmation cases based on merchandising rights, namely: 

• The disputed mark “Mallarmé’s Tuesdays” is identical to the title of Wu’s album.
• The music work has attained high reputation and influence in the relevant field; the scope of such reputation and influence covers common goods and services that the audience of the work regularly encounters and through which the work’s reputation and influence can be translated into commercial benefits. This includes not only goods or services identical or similar to those of the work, but also services closely related to the work, those used for its promotion, categories necessary to fully realize the merchandising value of the title, and other common goods/services that the relevant audience may purchase out of affinity for the work.
• The disputed registrations cover multiple classes, including 35, 33, 14, and 3.
• A stable one-to-one association has formed between the work and its author, Wu Qingfeng. The relevant public, upon encountering the disputed marks, is likely to erroneously assume that the goods or services originate from Wu, or are licensed, authorized, or otherwise associated with him, leading to confusion or misrecognition as to source.
• Registration and use of the disputed marks usurp commercial opportunities that rightfully belong to Wu, thereby preventing him from exercising the merchandising rights in the well-known music work title “Mallarmé’s Tuesdays.” 

Accordingly, the team concluded that the disputed marks violate Article 32 and infringe Wu’s merchandising rights in his well-known music work title. 

The team then assisted the client in collecting evidence along the following lines: 

1. Platforms on which the album was launched, play counts, and fan-count pages — to prove broad dissemination and high reputation of the work;
2. Online search results, sales pages, and review pages for the album — to prove the album’s significant influence among the relevant public;
3. Awards received by the album, third-party media reports, and interviews — to show, both through the author’s own use and independent commentary, that a stable correspondence has formed between “Mallarmé’s Tuesdays” and Wu Qingfeng;
4. Corporate information and trademark portfolios of the registrant of the disputed marks — to show that, as an operator engaged in “literary and artistic creation, performance brokerage,” etc., the registrant has filed numerous trademarks identical to well-known album titles, evidencing a subjective intent to free-ride on the prior goodwill of others.

On this basis, the team filed nine invalidation petitions with CNIPA, arguing that the disputed “Mallarmé’s Tuesdays” marks correspond to a well-known music work title authored by Wu Qingfeng, enjoy high reputation and influence among the relevant public in China, and that registration of the disputed marks is likely to cause the public to mistakenly believe that the goods or services of Explosion Plan (Hainan) Enterprise Management Consulting Co., Ltd. originate from Wu or are licensed/affiliated by or with him, thereby infringing Wu’s merchandising rights in his well-known music work title and violating Article 32. The petitions requested that the disputed marks be invalidated. 

Decision 

Upon examination, CNIPA upheld all nine invalidation requests, reasoning in essence: 

The evidence submited by the petitioner proves that, prior to the filing dates of the “马拉美disputed marks, “Mallarmé’s Tuesdays,” as the petitioner’s well-known music work title, had, through extensive publicity, become known to the relevant public. Its reputation is the crystallization of the petitioner’s creative labor; the commercial value and opportunities arising from the title are likewise the result of substantial labor and capital investment by the petitioner. Therefore, “Mallarmé’s Tuesdays,” as a prior music work title, should be protected as a prior right. The respondent’s applications for the disputed marks violate Article 32 of the Trademark Law, which provides that ‘an application for trademark registration shall not prejudice prior rights of others.’ 

 Conclusion 

In a contemporary society where the knowledge economy and cultural industries are deeply integrated, protection of the merchandising rights in work titles is not only a necessary foundation for the thriving cultural and entertainment sectors but also a high tribute to the intellectual achievements of creators. Confronting emergent business models, the team led by Lawyer Charles Feng—through refined legal skills and strategic vision—has acted not only as a guardian of client rights but also as a driving. Force for innovation in legal practice, exemplifying the professional value of modern intellectual property counsel.