Benjamin Choi is a partner of Mayer Brown JSM's IP & TMT Group. Benjamin focuses on local and foreign trademark prosecution (portfolio management, pre-filing advice on availability and distinctiveness of trademarks for registration, handling of official actions and contentious proceedings including opposition, revocation and invalidation actions, post registration matters including assignment, licence and security interest). Benjamin is experienced in conducting IP due diligence for merger and acquisition projects involving the transaction of IP assets. He also advises on trademark, copyright, design and patent enforcement and passing-off actions in Hong Kong and unfair competition in China, as well as domain name disputes in Hong Kong and China.

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On 24 April 2017, the Beijing Intellectual Property Court (“ the Court”) published 18 classic cases concerning trademarks filed in bad faith. One of these cases dealt with a invalidation action filed by Tiffany and company (“Tiffany”), the luxury jeweler.

Tiffany prevailed in the invalidation action brought in 2013 against Chinese trademark registration no. 8009772 for “蒂 凡尼” (pronounced as “Di Fan Ni” in Mandarin) on wallpaper, carpets etc. in Class 27 in the name of Shanghai Zhendi Decoration Materials Co., Ltd. (“Shanghai Zhendi”). After the Trademark Review and Adjudication Board (“TRAB”) rejected the registration, Shanghai Zhendi appealed to the Beijing IP Court.

The Beijing IP Court held that Tiffany’s “TIFFANY” mark registered in respect of jewellery and precious stones had become well-known prior to the application date of the subject “蒂凡尼” mark. Not only is the “蒂凡尼” mark phonetically similar to “TIFFANY”, there is also only one Chinese character difference between Tiffany’s mark and the corresponding Chinese mark “蒂凡尼”. The  contested mark therefore constituted an imitation of Tiffany’s marks.

Tiffany Case Takeaway

This is a classic case about deterring bad faith registrations under Chinese Trademark Law. In deciding whether the mark concerned would mislead the public and cause detriment to the rights of the well-known trademark owner, the Court  considered all factors, such as the extent of the reputation of the well-known mark, the similarity between the marks, how related the designated goods are, the intention of the owner of the mark concerned, etc.

In the case at hand, Tiffany’s extensive and substantial use of the mark “TIFFANY” and of its Chinese mark “蒂凡尼” had resulted in a strong reputation in the market and an immediate correlation of any similar or identical mark to goods associated with the company, namely jewellery. Apart from registering the mark “蒂凡尼”, Shanghai Zhendi had also registered the English mark “DIFFANY” and the combination mark “蒂凡尼壁纸 DIFFANY” (essentially “Di Fan Ni Wallpaper DIFFANY”) and used the mark “蒂凡尼” together with “DIFFANY”. Shanghai Zhendi’s intention to ride on the reputation of Tiffany’s well-known mark could therefore not have been more obvious. The Court considered that the relevant public would likely associate the two marks, so that the source of the goods would be mistakenly be attributed to Tiffany and Tiffany’s rights would consequently be damaged.

Good News to Brand Owners

The outlined case demonstrates the Chinese Court’s determination to reject or invalidate trademarks which amount to acts of copying another’s well-known mark in bad faith. Yet this cannot be achieved without the vigilance of the legitimate trademark owners who need to be proactive, and take action as soon as such registrations are detected.

Michael Jordan, the legendary NBA star, has finally established his rights in his Chinese name after 5 years of intensive administrative and appeal proceedings in China.
In China, Michael Jordan is more commonly known and addressed by the Chinese name “乔丹” (pronounced as “Qiao Dan” in Mandarin) which resembles the pronunciation of his last name “Jordan”. The present case is another typical example of a foreign brand owner’s name being hijacked by a local Chinese entity. The hijacker used both “乔丹” and “QIAODAN” as trademarks on shirts, sport shoes and apparel manufactured and sold in China since 2000. Michael Jordan had a long and hard fight to get his name back. He is now half way through recovering his Chinese name “乔丹” trademark, whilst the transliteration of his Chinese name “QIAODAN” is still in the hands of third parties.

Facts and Ruling

From 2000 onwards, Qiaodan Sports Co. Ltd. (“Qiaodan Sports“) registered a number of trademarks including, “乔丹”, “QIAODAN” and a logo which was resembling Nike’s famous “Jumpman” logo. The original “Jumpman” logo is owned by Nike Inc. to promote its “Air Jordan brand” of basketball shoes and comprises a silhouette of Michael Jordan performing a slam dunk. In 2012, Michael Jordan sued Qiaodan Sports for infringement of his name rights in China. He asked the Chinese authorities to invalidate the registered trademarks “乔丹”, “QIAODAN” and the corresponding logo mark arguing that Qiaodan Sports’ trademarks are misleading consumers in the People’s Republic of China in a way that consumers may believe that these sport products like shirts, sport shoes and sport apparel sold by Qiaodan Sports are licensed or otherwise authorized by Michael Jordan.

The Trademark Review and Adjudication Board, the Beijing No. 1 Intermediate People’s Court and the Beijing High Court consistently came to the view that “Jordan” is a common American surname which is not readily and uniquely associated with Michael Jordan. The lower courts also perceived no exclusive and definitive link between Michael Jordan and “乔丹” and the sign “QIAODAN”. However, Michael Jordan decided to recover the valuable commercial rights in his name by appealing to the Supreme People’s Court.

Rulings of the Supreme People’s Court

Favorable Decision – “乔丹”

In these appellate proceedings Michael Jordan could successfully demonstrate that the sign “乔丹” is well-recognized in China and clearly associated with Michael Jordan personally. The Supreme People’s Court recognized an established a link between “乔丹” and Michael Jordan, and that Qiaodan Sports had “malicious intent” in registering “乔丹” as a trademark when it was fully aware of Michael Jordan’s reputation in China. Therefore, the use of “乔丹” by Qiaodan Sports infringed upon Michael Jordan’s prior rights in his name and the Supreme People’s Court ordered the “乔丹” trademark registration to be invalidated.

Unfavorable Decision –”QIAODAN”

“QIAODAN” is the English transliteration of “乔丹”. The meanings of “QIAODAN” and “乔丹” are identical. However, from the perspective of trademark use, the Supreme People’s Court could not find an established link between “QIAODAN” and Michael Jordan, as naturally Michael Jordan would not have used “QIAODAN” in any manner. The Supreme People’s Court therefore concurred with the lower courts’ decisions in the invalidation actions against “QIAODAN” and related formative trademarks in favor of Qiaodan Sports.

A Look Ahead

Michael Jordan’s success in recovering his Chinese name “乔丹” serves as an encouraging precedent to brand owners.

At least the Supreme People’s Court is seen to have considered all relevant circumstances, in particular the fairness and commercial value behind the name, in order to reach a finding that Michael Jordan can have his long lost Chinese name back as a trademark that is likely to be worth millions of dollars. The applicable laws and provisions have not changed.

The Chinese authorities and courts are willing to see and listen. The key to success is for foreign brand or name owners to present sufficient evidence to support their rights and show bad faith on the part of the trade mark squatter. Michael Jordan’s case and other similar cases involving brand owners such as New Balance and Hermès, emphasize the need for foreign brand owners to identify and register a Chinese version of their brands be it as a translation or as a transliteration as soon as possible, in order to ensure that they are protected against trade mark squatters.

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.


In a recent decision, the Supreme People’s Court of China ruled that the use of a trademarked sign on goods manufactured in China solely for export purposes does not constitute “use” of a trademark. Consequently, such use could not be considered an infringement of a trademark registered in China.

The decision was given in a case involving a trademark which was used on goods that were produced for export to Mexico. The Supreme People’s Court ruled that the first and second instance courts erred in their finding of trademark infringement, because both courts had based their assessment of infringement on the sole fact that a sign identical or similar to a trademark, and in relation to identical goods, was used without authorization. However, in the eyes of the Supreme Court, the first and second instance courts had ignored an essential prerequisite – namely, that the alleged infringing act must constitute “trademark use in the sense of the trademark law.

The Supreme People’s Court determined that the use of a China registered trademark on goods that were manufactured in China solely for export purposes does not amount to trademark “use”. Consequently, there could be no finding of trademark infringement. The key element to note in this case was that the trade marked goods were not intended to enter the Chinese market. For this reason, the Chinese public could not have possibly been confused into thinking that the trademarked goods come from the same source or, at least, think that permission has been given to use the mark.

Takeaway Points

The decision resolves years of uncertainty about the position of Chinese courts, government and customs authorities on the so-called “OEM” (Original Equipment Manufacturing) principle. Although court decisions in China are non-binding authorities on future cases, judgments from the Supreme People’s Court are strongly indicative of possible future trends. Still, whether or not OEM constitutes trademark infringement remains a somewhat complicated issue that has to be resolved on a case-by-case basis.

In view of this Supreme People’s Court decision, foreign brand owners that have their marks registered in China will need to consider a potential defense of non-infringement available to local OEM manufacturers that deal with counterfeit trademark goods. Thorough and well-supported investigation can help ascertain whether the allegedly infringing goods were produced solely for export sales and whether the OEM manufacturers had knowledge (or should have had knowledge) of the foreign brand involved.

Roma, Italy - March 14, 2011: Sign of an opening soon Moncler shop in Via dei Condotti, center of fashion shopping in Rome. A poster of a model covers the shop window. On the left, another old palace of the street shows the name of Dior on its windowsIn 2013, Moncler S.P.A. (“Moncler”) became aware of the manufacture and sale of down jackets by Beijing Nuoyakate Garment Co., Ltd. (“Nuoyakate”). Nuoyakate used marks and logos confusingly similar to Moncler’s marks on its products and also applied for the registration of several trademarks and domain names confusingly similar to Moncler’s marks in China and other Continue Reading Moncler Awarded Highest Amount of Damages Ever for China Trade Mark Infringement

iStock_000005200286_FullIn April 2015, the Guangdong Intermediate People’s Court delivered a judgment against New Balance, an American footwear manufacturer, for trademark infringement. New Balance was found to have used, knowingly and without prior authorization from the trademark owner, the mark “新百伦” (pronounced Xin Ba Lun, a Chinese transliteration from the English word “New Balance”) in connection with offers for the sale of New Balance shoes on Chinese online platforms.

The US company argued that it was not liable for infringement because Xin Bai Lun is simply a direct transliteration of “New Balance”. However, the Court rejected that argument, mainly because other transliterations of that term would have been available. The Court found that New Balance’s continual use of the mark “新百伦”, despite having knowledge of its registered status, constituted bad faith

The most commented aspect of the New Balance case is perhaps the fact that it resulted in the largest damages award in the history of trademark infringement in China (USD 15.8 million), which illustrates the importance of the “first to file” principle in China. Unlike other jurisdictions where the registration of a trademark depends on and must be coupled with evidence of use, the trademark registration system in China is a “first to file” system. Whoever is the first to obtain trademark approval in China, owns the rights in the trademark, even if the successful registrant turns out not to be the official trader of the branded products or services.

Unfortunately, the majority of Chinese consumers do not speak a foreign language. By necessity, Chinese consumers will, sooner or later, devise their own Chinese version of a foreign brand instead of referring to the original Latin script. The failure to register a Chinese character trademark in time can, thus, have severe consequences on the marketing of global brands. One Latin script mark can yield different versions of Chinese character marks, all with the same pronunciation, so consumers will inevitably be confused by the existence of multiple Chinese versions of one’s brand.

Lessons learned

The New Balance case serves as an important reminder for any foreign brand owners with plans to trade in China to act early, and the sooner the better. Where no official Chinese version of a mark has been devised, in order to retain control of one’s brand within the Chinese market, companies should adopt and register an official Chinese mark that appropriately reflects their brand before the Chinese public creates its own version. To avoid confusion between an official Chinese mark and the multiple renditions that inevitably already exist in the market, foreign brand owners should adopt consistent and distinctive marketing strategies of their registered Chinese mark. Use of any trademark without registration can result in undesirable consequences.