CTPLO Blog

- Nike Innovate C.V. v. Trademark Review and Adjudication Board of SAIC, Third Party Quanzhou Luojiang Chaosheng Footwear Co., Ltd. on the request for trademark invalid declaration

Gist

In exceptional circumstances, the registered trademarks which copy, imitate, or translate well-known trademarks that others have registered in China on the same or similar goods may be revoked or invalid in accordance with the provisions in Article 13 Item 2 of China Trademark Law of 2001 or Article 13 Item 3 of China Trademark Law of 2014.

Case

Plaintiff: Nike Innovate C.V. (hereinafter referred to as Nike)

Defendant: Trademark Review and Adjudication Board of SAIC (hereinafter referred to as Trademark Review and Adjudication Board)

Third Party: Quanzhou Luojiang Chaosheng Footwear Co., Ltd.

Quanzhou Luojiang Chaosheng Footwear Co., Ltd. (hereinafter referred to as Luojiang Chaosheng Footwear Company) applied for the registration of trademark No. 3275213 (hereinafter referred to as the disputed trademark) to the Trademark Office of SAIC (hereinafter referred to as the Trademark Office) on August 15, 2002. On July 14, 2005, it was approved for registration and use on goods in Class 25 including “clothing, shoes, socks, ties, belts”.

The Disputed Trademark

The cited trademark No. 991722 was submitted by Nike International Co., Ltd. to the Trademark Office on October 9, 1995, and was approved for registration and use on goods in Class 25 including “clothing, shoes, caps”. On September 15, 2015, it was transferred to Nike.

The Cited Trademark

Nike submitted a request for invalidation of the disputed trademark to the Trademark Review and Adjudication Board on May 23, 2014 in accordance with provisions in Article 7, Article 10 Item (1-8), Article 14, Ariticle 30 and Article 44 Item 1 of China Trademark Law of 2014.

Nike submitted a large amount of evidence to the Trademark Review and Adjudication Board. The first part of the evidence is used to prove that Nike’s graphic logo has a high reputation, including the relevant rulings made by the Trademark Office and the Trademark Review and Adjudication Board, the media reports on Nike and its brand prior to the registration application date of the disputed trademark, an excerpt from the list of Nike manufacturers in China, the sales area of Nike in mainland China and a list of specialty stores and franchisers, the National Key Trademark Protection List prepared by SAIC, and the anti-counterfeiting records for Nike products. The second part of the evidence is used to prove that Luojiang Chaosheng Footwear Company has malicious intentions, including its application for registration of the list of trademarks similar to the logo of Nike and the graphic trademark of Li Ning Sports Products Co., Ltd., the sale of web page prints that mimic Nike and other well-known goods in the Beige Tmall flagship store, as well as the web page prints of shoes and other products produced and sold at the website of Luojiang Chaosheng Footwear Company.

The Trademark Review and Adjudication Board determined that the evidence submitted by Nike was not sufficient to fully reflect that the cited trademark already had the widespread influence and popularity which a well-known trademark needed before the disputed trademark applied for registration; Nike applied to revoke the disputed trademark on the date more than 5 years after it was approved for registration on July 14, 2005. Therefore, the claim of Nike to revoke the disputed trademark under Article 28 of Trademark Law of 2001 was not supported; the disputed trademark did not constitute the circumstance referred to in Article 10 Item (1-8) and Article 41 Item 1 of Trademark Law of 2001. In conclusion, the Trademark Review and Adjudication Board ruled that the disputed trademark should be maintained.

Nike, dissatisfied with the ruling of the Trademark Review and Adjudication Board, filed a lawsuit with Beijing Intellectual Property Court, claiming that the evidence it had submitted could prove that the cited trademark had a high reputation and should be recognized as a well-known trademark; Luojiang Chaosheng Footwear Company knew the existence of Nike and its graphic trademark, and still took advantage of the good reputation and high popularity of them to seek improper interests with subjective maliciousness; The disputed trademark should be revoked, considering the maliciousness of Luojiang Chaosheng Footwear Company’s registration, and that the cited trademark was a well-known trademark, though it had been registered for more than five years from July 14, 2005, in accordance with the relevant provisions in Article 45 Item 1 of Trademark Law of 2014; The cited trademark, which was previously registered by Nike and had higher visibility and distinctiveness, and the disputed trademark were approximate trademarks used on the same or similar goods, which was in violation of Article 28 of China Trademark Law of 2001; Luojiang Chaosheng Footwear Company made use of the good reputation and high population of Nike and its trademark to seek improper interests, which violated the principle of good faith, undermined the normal management order of trademark registration, and damaged the public interest and fair competition in the market, and was easy to cause adverse effects. Therefore, the application for registration of the disputed trademark violated Article 7 of Trademark Law of 2014, Article 10 Item (1-8) and Article 41 Item 41 of Trademark Law of 2001. In summary, we beg your revocation of the No. 26932 judgement and order for the Trademark Review and Adjudication Board to make a new ruling.

The Trademark Review and Adjudication Board, Luojiang Chaosheng Footwear Company, both stated that the No. 26932 judgement was made based on clear facts, correct application of law and legal procedure of examination, and requested for rejection of Nike’s lawsuit.

In the lawsuit, Nike additionally submitted the relevant rulings made by the Trademark Review and Adjudication Board to the Court and the periodical magazine’s propaganda and reporting on Nike’s hooked logos to prove that the cited trademark had a high reputation, and submitted the product information of the “2015 autumn new-type air-laid cushion running shoes” released at Beige Tmall flagship store by Luojiang Chaosheng Footwear Company to prove that the company was malicious.

Luojiang Chaosheng Footwear Company submitted 4 copies of evidence to the Court to prove that its company and products enjoyed high reputation with its awards including the “Top Ten Leading Brands in China's Sportswear Industry”, as well as "China Famous Brands" and "China 3·15 Credit Brand" rated by China Medium and Light Product Quality Assurance Center with its casual shoes, sports shoes, and other products branded Beige. 

Judgment

The Beijing Intellectual Property Court held that although it had been more than 5 years from the registration date of the disputed trademark on July 14, 2005 to the date Nike made its request for invalidation on May 23, 2014, the evidence submitted by Nike was enough to prove that the cited trademark of hooked logo on the goods including “clothing, shoes, and caps” had reached high reputation before the registration application date for the disputed trademark and should be recognized as a well-known trademark, and Luojiang Chaosheng Footwear Company applied for the registration of the disputed trademark with its subjective malice. Therefore, Nike’s request to the Trademark Review and Adjudication Board to declare the invalidity of the disputed trademark should not be subject to a five-year time limit. The use of the disputed trademark of Luojiang Chaosheng Footwear Company took advantage of the market reputation of the cited trademark, occupied the profits and achievements obtained through Nike’s efforts and substantial investment, weakened the distinctiveness of a well-known trademark, and resulted in the damage to the rights and interests of its registrants. Therefore, the disputed trademark should be declared invalid. The determination of the Trademark Review and Adjudication Board that the application for the registration of the disputed trademark did not violate the provisions in Article 13 of Trademark Law of 2001 was wrong. Finally, the Beijing Intellectual Property Court decided to cancel the No. 26932 judgement made by the Trademark Review and Adjudication Board.

The Trademark Review and Adjudication Board and Luojiang Chaosheng Footwear Company were dissatisfied and appealed to the Beijing Higher People’s Court. After hearing the case, the Beijing Higher People’s Court ruled that the appeal should be rejected and the original judgment upheld.