Bruce Lee Enterprises (BLE), the entity that manages the rights of late martial arts star Bruce Lee, has lost a trademark battle against a UK-based theatre company.
The UK Intellectual Property Office (IPO) handed down its judgment on Wednesday, August 8.
BLE applied to register the trademark ‘Jun Fan’ in 2016 for services in several classes, including 41, which covers “theatrical shows” among other services.
Jun Fan Lee was the birth name of Lee.
According to the IPO, theatre production company Barisons had previously been in communication with BLE regarding plans to launch a musical in the UK called “Jun Fan: the Bruce Lee Musical”.
Barisons claimed that BLE filed its trademark application as a blocking tactic and without any genuine intention to use the mark. As a result, the theatre company opposed the application and argued that it was made in bad faith and should be refused.
BLE filed a counter-statement denying the allegation and said that it filed the application to protect Lee’s IP rights and to expand the Bruce Lee brand in the UK.
In February 2017, Barisons itself filed an application to register ‘Jun Fan the Musical’, also in class 41 in relation to theatre production and musical theatre.
BLE opposed the application on three grounds.
First, on the basis of its earlier application in the same services. Second, it said that Barisons’ application would be a misrepresentation as it would indicate a “close relationship” between BLE and Barisons.
Finally, as BLE owns all of the IP rights of Bruce Lee and it wrote to Barisons expressing its objection to the production, the company argued that Barisons’ application was made in bad faith.
Allan James of the IPO said that BLE had failed to show that the name Jun Fan has a reputation in the UK at the relevant date of the applied-for trademark.
James also said that BLE knew that the musical was to be called “Jun Fan: the Bruce Lee Musical”. He added that personality rights do not exist under UK law and that BLE’s trademark application covered the same services that Barisons intended on offering.
James said that there was no evidence that BLE’s previous trademark applications covered theatrical shows in any other territories in class 41, and that the estate had no intention of offering such services.
“I therefore find that insofar as it covered theatrical shows in class 41, BLE’s trademark was purely a blocking mechanism to obstruct Barisons’ proposed musical,” said James.
While James allowed BSE to register the trademark for nine of the applied-for classes, he refused it under theatrical shows in class 41. However, it was allowed to be registered under class 41 for educational services.
BLE’s opposition failed, and the estate was ordered to pay Barisons £550 ($700).
https://www.worldipreview.com/news/bruc ... pany-16454