That's not a sentence you get to write very often.

Of course, technically, I didn't kick Bruce Lee's ass. He's dead, that would be silly. That's why I kicked the company controlled by the estate of Bruce Lee's ass. Bruce Lee Enterprises Inc.

A few years  ago I was approached by Brian Hill, a professional Trumpeter and Conductor. Stay with me. Brian had spotted a post on my website about applications to register trademarks in the UK by the estate of Bruce Lee (this one, in fact) through the company Bruce Lee Enterprises. This was worrying for Brian, as he had just written and was in the process of getting funding for his Bruce Lee Musical, called...Bruce Lee the Musical. ( He had been in discussions with members of Bruce Lee's family about this. 

After discussions hit a snag with the Lee family (he has Bruce's brother's blessing FYI), Brian made the tough decision to change the name of his musical from Bruce Lee The Musical to Jun Fan the Musical. Jun Fan, it turns out, is Bruce Lee's real name (it's actually one of three real names...I learned a lot in the process). And that's where things get really interesting. Because, after Brian changed the name, then for the first time ever, anywhere in the world, Bruce Lee Enterprises applied for Registration of 'Jun Fan' as a trademark. Suspicious much? They also applied for Jun Fan specifically for 'theatrical shows'. Bruce Lee Enterprises had never filed any trademarks for 'theatrical shows' before either. This meant Brian's musical was probably dead in the water....unless he fought Bruce Lee('s estate). Which he did.

The issue here is what's called 'Bad Faith Registrations'. This is where someone registers a trademark not with a genuine intent to use it, but actually, just to stop somebody else from using it. It more typically arises (though wasn't the case here) where someone registers a trademark not to use it, but to try and sell it and make a profit off it. That is not allowed. Almost all trademark systems and regimes require you either to be using the mark before you apply to register it, or else, to have an honest and genuine intent to use it. In the US it's actually a crime to declare you have an intention to use it in the course of trade if you don't. And it's one of the grounds used in defence of trademark oppositions, and litigation and is a ground for revocation also.

A good Irish example of this was the case where somebody registered Fianna Fail as a European trademark, then tried to sell it back to the party (saying something like 'it would be a shame if you had to change your name'). It was held that it was registered in bad faith and the registration was revoked.

Ultimately, the adjudicating officer in the UK Intellectual Property Office agreed with our written submissions (Brian represented himself, fair play to him!). It was held that the estate of Bruce Lee had no honest intention to use Jun Fan for theatrical shows, and had registered it purely as a blocking tactic.

The decision is also interesting in that in deals with 'personality rights' and essentially held that such rights don't exist in the UK (they do in the US, and in France, for example). That, however, is for another day and another post. 

Trademark disputes tend to favour the people with the deepest pockets. It would have been very easy for Brian to fold up his tent when Bruce Lee Enterprises came in throwing some martial arts style legal shapes. He didn't, and thank god, because he was absolutely round-house-kickingly right.

Karate chop.