NBA basketball superstar Yi Jianlian on a Nike advertising billboard in Wangfujing Street, Beijing.

Lately, the NBA basketball superstar Yi Jianlian has been getting a lot of attention to his name. Forbes named Yi as the fourth most popular figure in China preceded by fellow athletes Yao Ming (No 1) and Liu Xiang (No 2).

In the NBA, Yi made the headlines joining the New Jersey Nets in a recent trade. This season the big 7-foot swingman will get a lot more playing time opposite fellow teammate and superstar Vince Carter. He is still perfecting his NBA game, but he has already shown that he can do the job by scoring 17 points in a season opener with the Miami Heat. Adding to the popularity of his name, Nike had earlier rolled out during the Beijing Olympics - Team China basketball jersey bearing Yi Jianlian's name.

While Yi may be feeling good about his name, he may have to think twice. His name is becoming more than a famous name - an intangible asset for others who may wrongfully attempt to use it without his consent.

In China, the protection of personal names of famous athletes is getting more attention from the sports marketing industry as sales of jerseys bearing the names of Yi and other famous stars are increasing.

If you stroll through the Joy City Mall in Beijing's fashionable Xidan district, this is evident as you can see a multitude of sports marketing retail outlets there - Nike, Puma, Mizuno, Li Ning, MLB and many more - eager to sell you sports apparel bearing the names of famous sports athletes they sponsor.

Largely due to China's accession to the World Trade Organization, China has developed a comprehensive IP legal framework. How does one protect an individual famous name within the framework of China's IP laws?

In China, the best protection of a famous person name is the name's registration as a trademark.

By registering the person's name as a trademark, the owner gets to use the name in connection with goods or services. China's trademark laws do not expressly prohibit the registration of an individual's name as a trademark. It allows the registration of any visible sign, including words, letters, numerals, three-dimension signs and combination of colors as a trademark.

However, there are some conditions and limitations when seeking to register a person's name as a trademark. The person must consent to the registration of his or her name, and the name must have a distinctive character for it must be capable of distinguishing its goods and services from those of others.

If the person whose name is sought for registration is held in particularly high moral or cultural esteem, then China's Trademark Office will not approve the registration.

Take for example, the 2001 case of author Lu Xun's grandson, a winemaker who attempted to brand one of his wines by registering his grandfather's name. The problem, you see, is that Lu Xun (1881-1936), is one of China's most revered literary figures. He is called the father of modern Chinese literature and his first story A Madman's Diary is considered the first story written in modern Chinese. Because Lu Xun was held so high in esteem as a literary figure in China's public, his name was not allowed for trademark registration. Interestingly, despite the fact that star sports athletes are held in high esteem, their names are allowed for registration as trademarks.

What happens if a third-party seeks to register a famous person's name as trademark in China where the person has not yet registered his name?

Although the name is unregistered, China may provide some protection if it is a well-known mark. China may determine that the mark is well-known based upon a consideration of a number of factors, including the length of use of the mark, the extent of the public's knowledge of the mark, the geographical extent and duration of time the mark has been publicized, and the record of the mark's protection. However, the statistics show that it is extremely difficult for a mark to be determined as a well-known mark.

If the name can be registered as a trademark, when should you file for trademark protection? China is a first-to-file jurisdiction, and unlike the United States where prior use may afford you certain rights, the failure to file may be fatal. This means that you need to determine at the earliest time whether you will seek trademark protection. If not, you may lose valuable rights to the use of person's famous name to brand your products.

Registration of a famous person's name as a domain name should also not be forgotten, especially where the name has marketing appeal.

With changing business practices largely due to the use of the Internet, registering a person's name as a domain name is commercially valuable since the domain name can identify and distinguish a company's goods and services from competitors. Especially in China, where a famous person's name has marketing appeal, registering a name as a domain name with the extension .cn or .com.cn has considerable commercial value.

Chinese sports authorities have come to recognize the value of registering the names of famous athletes as domain names.

In 2004, it was reported that in Xiamen, a Fujian company had registered the domain names duli.cn and wangyifu.cn after two of China's gold medalists in the Athens Olympics. After a public outcry, the company gave up the domain names.

Knowing better this time around, China's General Administration of Sport had preregistered most of the names of China's Olympic athletes, giving away the domain names to the country's gold medalists as a gift. As to the rest of the domain names of China's Olympic athletes already registered by individual owners, these were returned upon an appeal made during the Beijing Olympics by the China Internet Network Information Center, China's official domain names regulator.

China's sports fans are wild about their favorite sports heroes, and so are those who seek to misappropriate the names of famous athletes. If you plan to come to China to market product brands which bear the names of famous athletes whom you sponsor, be prepared to develop an IP strategy. Unlike other jurisdictions, China does allow the names of famous athletes and stars to be registered as trademarks, and every opportunity must be made to do so as early as possible.

The author is an attorney with the US firm, Taft, Stettinius & Hollister LLP, and is based in the firm's Beijing Representative Office. The views expressed here are his own.

(China Daily 11/17/2008 page9)