Nike's trademark registration enters into overtime

Su Jie
China IP News—————————

Nike International Ltd (hereafter as to Nike) suffered a succession of setbacks in its trademark registration due to the reference trademark “LEBULANG· ZHANMUSI 勒布朗·詹姆斯” since it began its trademark registration of ”勒布朗—詹姆斯” on class 25 commodities in 2005.Nike argued that the reference mark infringed its prior rights and the proceedings of review for the trademark registration should be suspended. However, the National Intellectual Property Administration(hereafter as to CNIPA) under State Administration for Industry and Commerce (hereafter as to the SAIC) did not buy it. The case was brought to both the first and second instance courts and ended up with Nike’s defeat. Recently, China’s Supreme People’s court made a retrial decision that revoked the verdicts of the first and second instance courts and ordered the CNIPA to review the application. Therefore, the trademark registration of ”勒布朗—詹姆斯” finally turned the corner.

Nike applied for trademark registration of ”勒布朗—詹姆斯” on class 9, 14, 18, 25, 28 commodities or services in September 2005. The CNIPA made the notification to refuse the registration of trademark to be used on class 25 including clothing, gloves, shoes and socks and certified the mark to be used on other classes. Disgruntled with the ruling, Nike applied for a review to the CNIPA.

The CNIPA made the review decision and held that the mark “勒布朗—詹姆斯” was identical with Chinese characters of the reference mark and “LEBULANG · ZHANMUSI” is the capitalized Pinyin of ”勒布朗·詹姆斯”. When the two marks were used in products of same or similar class which would easily cause the confusion among the consumers on the origin of the products. So, the CNIPA rejected the trademark registration to be used on class 25 commodities.

In 2011, Nike filed an administrative law suit to Beijing First Intermediate People’s Court. The court took the case and held that the reference mark was valid and neither trademark law nor related laws explicitly prescribe that when the reference mark was challenged, the proceeding of review for trademark registration should be suspended. So the court maintained the CNIPA’s decision.

Nike was disgruntled with the verdict and lodged an appeal to Beijing Higher People’s Court. The higher court upheld the previous verdict on the same legal grounds with the first instance court.

According to the system whereby the second instance is the final instance, the verdicts can be regarded the final judgment. However the persevering Nike did not give up and appealed to the Supreme People’s Court. The supreme court accepted the appeal and made the decision to rehear the case in December 2014.

Recently, the supreme court made the retrial judgment, revoking the verdicts of first and second instance courts and ordered the CNIPA to review the decision.