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.

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