Chinese flying man Liu Xiang, a famous hurdle runner who enjoys world prestige, failed to register a trademark used on clothing in his name, because an enterprise had registered the trademark of "刘翔牌" 26 years ago. Disgruntled with the ruling by the Trademark Review and Adjudication Board (TRAB) under the State Administration for Industry and Commerce (SAIC) over registration of刘翔牌as trademark, Nike International Limited (Nike) brought TRAB to Beijing No.1 Intermediate People's Court recently.
Nike was rejected when it applied for registering trademark "刘翔"
In May 2006, Nike Company, with Liu Xiang's authorization, applied to the Since then, the Trademark Office (TMO) for registering "刘翔" series textual, Pinyin and graphic trademarks for use on the goods of Class 25 (clothing, shoes and hats), one of which was a textual trademark in the style of Liu Xiang's signature. TMO has approved, in succession, the registration of some trademarks in which "刘翔" is the core element, but rejected the application for registration of textual trademark "刘翔".
It turned out that as early as in 1986, an enterprise named Liu Xiang Garment Factory in Shanghai has registered a portfolio trademark "飞鹰图形＋刘翔牌" (its registration number is 281835, and hereinafter referred to as trademark 刘翔牌及图). By the time, Liu Xiang was only a 3-year-old boy. Liu Xiang Garment Factory is known to have been continued its operation till now and renamed Shanghai Liu Xiang Industrial Co., Ltd.
Liu Jianzhong, the person in charge of Shanghai Liu Xiang Industrial Co., Ltd., told the reporter from CIP News that his father Liu Dingchu opened a garment factory in 1984. Since the garment factory was located in Yixiang Village, Liuhang Town, Baoshan District, Shanghai and his family was surnamed Liu, the garment factory was named "Liu Xiang". In 1986, the garment factory used "刘翔牌" added with a graph to register its trademark for use on the goods of Class 25. According to Liu Jianzhong, it was just a coincidence that the factory was named as Liu Xiang, the name of a famous Chinese athlete.
Nike Company wished to refuse the refusal decision made by the TMO and applied to the TRAB for a review. However the application for a review of trademark registration was rejected, on the ground that the trademark in the style of Liu Xiang's signature which Nike Company intended to apply for registration and trademark "刘翔牌及图" were similar trademarks used on identical goods.
In refusal of the decision on trademark review, Nike sued the TRAB
Nike Company then brought an administrative action against the TRAB to the Beijing No.1 Intermediate People's Court. On November 27, 2012, the No.1 Intermediate People's Court held a public hearing on the case.
In court, Li Xiaohong, Nike Company's attorney-in-fact and lawyer of Beijing ZY Partners, held that the trademark in the style of Liu Xiang's signature which Nike Company intended to apply for registration was significantly different from trademark "刘翔牌及图", thus would not cause confusion or misidentification in the consumers concerned.
According to Li Yonghong, Nike Company, when cooperating with well-known athletes to popularize its brand, generally used, on related products, the trademarks relating to the athletes concerned along with its own trademark so as to allow the public concerned to identify that the products were produced by Nike Company, and avoid causing any confusion in the public concerned as to the origin of the products.
When interviewed by the reporter from CIP News, Prof. Sun Guorui from the Law School of Beihang University expressed that though the trademark in the style of Liu Xiang's signature which was applied for registration by Nike Company was different from trademark "刘翔及图" in appearance, another significant identifying element of a trademark was its pronunciation. Seen from the pronunciation of these two trademarks, the two Chinese characters "刘翔" were the core element. Hence if the two trademarks were registered for use on the goods of the same class, it would undoubtedly confuse the consumers. Sun held that Nike Company stood a slim chance of being approved to register the trademark in the style of Liu Xiang's signature.
Shanghai Liu Xiang Garment Factory was opened in 1984 before being approved to register trademark "刘翔牌及图" in 1986.
In May 2006, an agreement was signed between Liu Xiang and Nike Company, in which Nike Company was authorized to put Liu Xiang's name and image for commercial use as trademarks and to apply for registering Liu Xiang as a trademark.
In July 2009, the TMO rejected the application, made by Nike Company, for registering the trademark in the style of Liu Xiang's signature for use on clothing. Nike Company soon applied to the TRAB for a review.
In April 2012, the TRAB made a decision to reject Nike Company's application for a review of trademark registration. That is, Nike Company was rejected to register the trademark in the style of Liu Xiang's name for use on clothing. Nike Company then brought an administrative action against the TRAB to the First Intermediate People's Court of Beijing Municipality.
In November 2012, the Beijing No.1 Intermediate People's Court held a hearing over the case in which Nike Company sued the Trademark Appeal Board for rejecting its application for trademark registration.
(China IP News)2013-07-17