Class 46 readers may recall that the subject of bad faith applications in China has been much discussed recently, including at a workshop at last year’s MARQUES Annual Conference. In this context, Ling Zhao and Tingxi Huo of the China Team discuss the latest announcement from the Supreme People’s Court regarding the JORDAN case.

Registration 6020569

On 24 December 2019, the Supreme People’s Court (SPC) of China announced Guiding Case No 113 for the courts at different levels to follow. The case was retried by the SPC on 7 December 2016 and it overruled the decision of the Trademark Review and Adjudication Board (TRAB) and the two lower courts’ judgments in the dispute over the trade mark 乔丹 (Qiaodan, JORDAN in Chinese characters) number 6020569 in class 28 (pictured above right), and made a retrial judgment in favour of Michael Jordan.

The trade mark was registered by a local company Qiaodan Sports Co, Ltd (Qiaodan Sports). Qiaodan Sports’ registration was finally considered by the SPC to be in violation of Article 31 of the Chinese Trademark Law (2001), as the registration infringes the prior name right of Michael Jordan. The SPC's announcement of the retrial judgment is very significant in that it sets binding legal criteria on the protection of prior name rights against bad faith registrations.

Administrative decision and two judgments

In the initial administrative dispute over the trade mark between Michael Jordan and Qiaodan Sports, Michael Jordan claimed that Qiaodan Sports’ registration of his name as a trade mark without his authorisation harmed his lawful rights and constituted a violation of Article 31. The TRAB ruled that there is certain difference between the trade mark and Michael Jordan’s full Chinese name “迈克尔·乔丹”, and that the term “Jordan” is a common English surname. It is difficult to determine the definite correspondence between this common surname and the star Michael Jordan. Therefore, the TRAB decided to maintain the disputed trade mark in favour of Qiaodan Sports.

Michael Jordan was dissatisfied and pursued the case by initiating legal proceedings before Beijing No 1 Intermediate People’s Court. On 1 April 2015, the Intermediate Court gave Judgment No (2014) Yi Zhong Xing (Zhi) Chu Zi 9163, upholding the TRAB’s decision. Michael Jordan appealed further to the Beijing High People’s Court, which made its Judgment No (2015) Gao Xing (Zhi) Zhong Zi 1915 on 17 August 2015, again upholding the TRAB's decision and Intermediate Courts judgment.

Michael Jordan then requested a retrial before the SPC. After examination, the SPC made a retrial Judgment No (2016) Zui Gao Fa Xing Zai 27, overruling the TRAB’s decision and the two lower courts' judgments.

SPC's findings and reasoning

1 Legal basis for protecting the personal name right

According to the SPC, the focus of the dispute in this case is whether the registration of the disputed trade mark infringes the name right claimed by Michael Jordan and violates Article 31, which stipulates that “the application for trade mark registration shall not infringe others' existing prior rights”. The General Principles of Civil Law, the Tort Liability Law and other laws also support the protection of the personal name right and provide compliance with the principles of honesty and creditability.

Where the registration of a trade mark damages the prior name right of another person, it shall be deemed a violation of Article 31. The protection of the prior name right shall be extended to not only the dignity of the natural person, but also the economic interests contained in the name, particularly the name of a famous person. If the registration of a trade mark composed of a name is likely to cause the relevant public to mistakenly believe that the goods or services marked with the trade mark have a specific connection with the natural person, such as the natural person’s endorsement, permission, etc, the registration shall be deemed to be detrimental to the prior name right, in violation of Article 31.

2 Preconditions for protection of the name right

When a natural person claims the protection of the name right, three conditions must be met: (1) The specific name shall have a certain popularity and be known to the relevant public; (2) the relevant public uses the specific name to refer to the natural person; and (3) the specific name should have a stable correspondence to the natural person.

Jordan is a common English name, but the evidence in this case is enough to prove that “Jordan” has a high popularity in China and is known by the relevant Chinese public. Given the high reputation of Michael Jordan as an NBA basketball star, when the name Jordan is used on sports products, people would tend to associate it with Michael Jordan rather than just the common name Jordan.

Moreover, the Chinese characters 乔丹 (Qiaodan) are the usual transliteration of the English name Jordan. Under such circumstances, in the mind of the relevant public in China, the name carries stable correspondence to Michael Jordan, who shall enjoy the name right.

3 Whether the use of the Chinese name “乔丹” (Qiaodan) by Michael Jordan or any interested party is necessary to claim protection

According to the Civil Law, “use” is one right enjoyed by the name right holder, not an obligation he shall undertake, not to mention the legal precondition for him to “forbid others to interfere, misappropriate or counterfeit”.

When Article 31 is applied to protecting the prior name right of others, the main issues are whether the registration of the disputed trade mark damages the name right of the natural person and whether the relevant public mistakenly believes that the goods or services marked with the disputed trade mark are associated with the natural person. It is not relevant whether the name right holder has actively used his name.

In this case, the relevant public and news media in China generally use “乔丹” (Qiaodan) to refer to Michael Jordan, while he and Nike Company mainly use “迈克尔·乔丹” (the transliteration of Michael Jordan). However, both Michael Jordan’s full Chinese name “迈克尔·乔丹” and surname “乔丹” have high notoriety among the relevant public, and are generally used by the relevant public to refer to Michael Jordan.

4 Whether the bad faith of the disputed party is relevant

The SPC concluded from the evidence that Qiaodan Sports had not sought Michael Jordan’s permission or authorisation to register or use his name, but directly registered a large number of trade marks closely related to Michael Jordan, including the disputed trade mark on sports goods, profiting from Michael Jordan’s high reputation and misleading the relevant public to associate the goods marked with the disputed trade mark with Michael Jordan. Although Qiaodan Sports used the trade mark for many years, spent much money on the publicity and won many awards, the SPC ruled that the efforts cannot wash clean the initial bad faith or justify the improper registration of the disputed trade mark.

Judicial determination to curb bad faith

In 2019, China revised its Trademark Law for the fourth time and the China National IP Administration (CNIPA) announced the corresponding new rules to implement the new Law, aiming to curb bad faith filings and registration. The SPC needs to declare China’s judicial attitude as well, and accordingly, it selected and announced this typical retrial judgment of 2016, setting it as a guiding case, clearly to reiterate China’s determination to curb bad faith from the supreme judicial angle. This guidance will be binding on all courts, with the SPC itself included, which will more effectively corner bad faith filing and registration.

In China, it is not necessary to challenge a pirated trade mark only on the basis of a prior trade mark right. If a party’s other type(s) of prior legitimate rights are preemptively registered by another party, it is possible to challenge the piracy on the basis of the former party’s non-trade mark rights, including but not limited to personal name right, personal portrait right, corporate name right, industrial design right, copyright, and domain name right.

Last but not the least, although it is possible to successfully challenge bad-faith registration in China, an earlier application or registration remains far more cost-efficient than a late challenge in this first-to-file jurisdiction.

Ms Ling Zhao is a trade mark attorney and attorney-at-law with CCPIT and Mr Tingxi Huo is a trade mark attorney with Chofn IP. Both are members of the MARQUES China Team

In a case concerning trade mark and copyright law, the Turkish Court of Appeal has ruled that the use of a figure intensively cannot prevent the use of similar figures, as long as they are not identical.

Background

A recent decision of the Court of Appeal concerned an application to register a trade mark (shown right) in classes 29 and 43. The word elements in this application can be considered of low distinctiveness: ET means “meat” in Turkish, and so is descriptive for some of the goods within the scope of the application, while KANDIRA ANBARLI is the name of the place where the applicant (the defendant in this case) is based.

The plaintiff in the case is the owner of the SÜTAŞ mark, well known for dairy products in Turkey. The plaintiff has used different cow figures for its various dairy products for many years and runs an advertising campaign by releasing comics starring the cow (see below left).

It is a fact that the cow figure used by the plaintiff and the relevant comics are highly known in Turkey, as they were drawn by famous caricaturists in Turkey and have been published in national newspapers since 1998 (some of the comics can be seen here).

The plaintiff challenged the trade mark application (KANDIRA AMBARLI ET & device), arguing that:

1. it has earlier rights on the cow figure as it had been intensively using the cow figure in the course of trade, for many years;
2. the defendant breached the plaintiff’s copyright, because the cow figure in the application is confusingly similar to the cow figure in the plaintiff’s comics; and
3. the defendant applied to register this trade mark in bad faith.

The Turkish Patent and Trade Mark Office rejected both the plaintiff’s opposition and its appeal. The Office registered the defendant’s trade mark, based on its final decision at the administrative stage. The plaintiff then challenged the Office’s final decision before the Ankara IP Court.

The Ankara IP Court accepted the plaintiff’s claims and held that the cow figure in the defendant’s trade mark is confusingly similar to the plaintiff’s cow figure; thus, the Office’s decision rejecting the plaintiff’s opposition/appeal should be cancelled and the defendant’s trade mark should be invalidated. The District Court confirmed the first instance IP Court’s decision and rejected the Office’s appeal. As a final resort, the Office applied to the Court of Appeal.

Decision

The Turkish Court of Appeal dismissed the decisions of the lower courts, reasoning that the simple fact that the plaintiff has been intensively using a cow figure on its dairy products and promotional materials together with its well-known trade mark would not prevent third parties using and registering a stylized cow figure as a trade mark for their own products.

The decision shows that the Court of Appeal seeks a high level of similarity, close to identity, between the figurative element in the applied-for trade mark and the alleged copyrighted figure in comparison, in order to decide in favour of the copyright holder. In other words, the Court of Appeal did not find similarity of the figures sufficient to protect the copyrighted figure for the reason that it qualifies as inspiration, which is legal under the copyright law.  

Following the dismissal, the case was sent back to the first instance IP Court, re-recorded and re-tried. As a result, the IP Court decided to comply with the Court of Appeal’s ruling and dismissed the plaintiff’s case.

It should be noted from this decision that if a logo/device is used as a trade mark, protection based on copyright is not sufficient and one should also register it as a trade mark, in order to have broader protection and succeed in preventing similar devices being registered.

By Dilan Sıla Kayalica and Güldeniz Doğan Alkan of MARQUES member Gün + Partners

Janet Satterthwaite of the IP Emerging Issues Team reports on an important change in the United States.

The United States Patent and Trademark Office has issued a new, confusing and controversial Examination Guide, requiring applicants to provide their own email addresses.

The new polices go into effect on 15 February 2020, i.e. this coming Saturday.

There are a number of changes:

1. Requirement to file electronically with certain exceptions;
2. Correspondence email address requirements;
3. Changes to certain fees and entity requirements; and
4. Specimens.

Of these, the most important changes for MARQUES members to know about ASAP are:

Email addresses

The applicant’s email address must be provided to get a filing date: We now must submit a live, working email address for the applicant (unless the applicant is from a handful of mostly non-EU countries) in addition to the US attorney’s email address.

The applicant’s foreign law firm address is not acceptable, so if you are instructing from the EU, you cannot use your firm address as the applicant’s email address, and you must provide the applicant’s email address in order to get a filing date. The Guide leaves open a number of questions about what will be acceptable.

MARQUES members will need to add this information to their standard filing instruction letters. (It is not clear whether pending pre-publication applications will be subject to this requirement.)

Initial reaction from the US trade mark bar is that the requirement to provide actual email addresses of applicants will increase the amount of fraudulent scam communications, such as for payment for false registries; attorneys are also sceptical that the USPTO has the right, as a matter of administrative or privacy law, to impose these changes. Many members of the trade mark bar, including this correspondent, have signed a letter to the USPTO pushing back on the rule.

Since we must provide the information to get past the now mandatory online forms, however, we will need to comply for now.

No doubt the scammers with fake registry-invoice businesses are already opening Champagne and ordering new Tesla cars.

Specimens

The policies on acceptable specimens, which have already been confusing for many EU counsel, are even stricter than before. Because of an increase in fake specimens, the USPTO has recently been suspicious of, and has been refusing, specimens such as labels that do not show the label on the goods. Now the new guide confirms that mere hang tangs or labels without a photo of the hang tag on the goods will not work unless the hang tag or labels “include informational matter that typically appears on a label in use in commerce for those types of goods such as net weight, volume, UPC bar codes, lists of contents or ingredients, or other information that is not part of the mark but provides information about the goods”.

Janet Satterthwaite is a lawyer with Potomac Law Group, Washington, DC and a member of the MARQUES IP Emerging Issues Team

WIPO has announced details of its next two webinars on the Madrid System. Webinars will continue to be held at the end of each month this year.

• “Deep dive: the Madrid System web resources” takes place on Wednesday 26 February at 4:00pm Geneva time. It is suitable for all levels and you can register here.
• “Adding new countries/regions to international registrations: the subsequent designation” (intermediate level) takes place on Wednesday 18 March, also at 4:00pm Geneva time. Register here.

Each webinar lasts 45 minutes and is presented by WIPO experts. They will also take questions.

WIPO also recently hosted “Starting 2020 off right: Understanding the new Madrid System Regulations updates”. The recording can be viewed here.

To join a webinar, click on the link and complete the online registration form. You will then receive a confirmation email with a personal access code. 

View a list of previous webinars, and play back recordings, here.

You can send questions, and suggest topics for future webinars, here.

Michal Hasiow of the MARQUES IP Emerging Issues Team discusses the lessons from the recent APERITIVO case in Italy.

Aperitivo is a famous Milanese tradition of pre-dinner drinks accompanied by often complimentary finger food. It stands for the drink, the food and the social situation itself: you could meet someone at an aperitivo while sipping a glass of wine as an aperitivo.

In 2011 APERITIVO was registered in Italy as a trade mark for restaurant services in the illustrated graphical stylization (right).

There was nothing unusual about that: the mark appears figurative enough to reach the minimum degree of distinctive character required for registration, even though the word APERITIVO lacks it. It is an example of a so-called figleaf mark that is accepted for registration because of the added logo or stylization and which is expected to be protected within the limits of its particular figurative representation.

In 2014 another application for APERITIVO for restaurant services was filed by a different company, this time in a fancy script and featuring an outline of a tricycle (pictured left).

Soon afterwards, the junior APERITIVO was opposed by the senior APERITIVO and both the Opposition Division and the Board of Appeal of the Italian Patent and Trademark Office agreed: the marks are confusingly similar (see: judgement No. 78/18 of 27 December 2018; the judgments of the Board of Appeal are made publicly available with significant delay).

Why might this outcome be surprising to Italian practitioners?

Tradition

There is a consistent and long-standing tradition embedded in the case law of the Italian Supreme Court, which holds that a reduced distinctive character of a weak mark entails a reduced scope of protection; for weak marks even small modifications or additions are sufficient for excluding the risk of confusion. Weak marks are those closely linked to general designations of goods or services, to descriptive indications or to customary signs or indications.

The rationale for a reduced scope of protection, again quoting the well-established case law, is the following: “although a company is certainly free to choose a trade mark with a low level of distinctiveness, and use it on the market, it must also accept that in doing so, its competitors are equally entitled to use trade marks containing the same or similar descriptive component”.

One factor to rule them all

When administrative opposition proceedings were eventually implemented in Italy in 2011 a question arose: how would the Opposition Division of the Italian Patent and Trademark Office and its Board of Appeal address the distinction between weak and strong marks? This was especially important in the light of the CJEU case law, according to which “although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment”, so that “even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered”.

While the Opposition Division readily follows EUIPO’s Opposition Guidelines, the Board of Appeal, which is a special jurisdiction body whose members are chosen among judges and law professors, was reluctant to dismiss the idea that trade mark distinctiveness is not the governing factor in the likelihood of confusion analysis but rather a factor among others.

The traditional approach with a twist

Upon analysis of the Board’s decisions in opposition cases, a compromise appears to have been reached. In principle, the scope of protection of weak marks continues to be considered as reduced and small modifications or additions are still sufficient for excluding the risk of confusion. There is however a growing departure from the previous judicial approach that focused the analysis on whether there had been a “complete” or “nearly complete” imitation of the earlier mark, excluding the risk of confusion on the account of corrective measures adopted in the opposed mark, even if only modest ones.

Rather, the question now is whether the modifications are merely “formal”, in which case coexistence is excluded, or if they are “likely to be perceived with some prominence (“un certo risalto”) within the opposite sign. In other words, the modifications need to reach a sufficient threshold of “otherness” (“alterità”) for the junior mark to be registrable. What does this actually mean in practice?

The APERITIVO case shows that a change in graphical stylization alone, even a significant one, does not appear sufficient to avoid the finding of a likelihood of confusion. According to other decisions additional descriptive or weak terms might however be enough: for instance the Board of Appeal considered MUSIC ACADEMY ITALY - ISTITUTI MUSICALI LEADER IN EUROPA as sufficiently different from MUSIC ACADEMY, both in different graphical forms, although neither ITALY nor the additional descriptive claim add a lot to the junior mark. Sometimes, a close synonym might do the trick: LA BOTTEGA DELL’OROLOGIO FRANCHISING and L’OFFICINA DELL’OROLOGIO, stylized, were found as sufficiently different although BOTTEGA and OFFICINA both simply describe a small shop. Further clarification is expected in the upcoming years if more judgments of the Board of Appeal in opposition cases are appealed to the Italian Supreme Court.

The future of figleaf marks

Going forward, figleaf trade marks might receive stronger protection in Italy, at least as far as opposition proceedings are concerned. This will likely add complexity to clearance and conflict advice: some marks may have small chances of getting registered if opposed, while they would be unlikely to be considered as infringing in court proceedings. While the distinctive character may no longer hold a privileged place in the likelihood of confusion analysis, it seems that the Opposition Division and the Board of Appeal will continue to be receptive to arguments that emphasize its importance.

Michal Hasiow is a Trade Mark Attorney with Società Italiana Brevetti S.p.A. in Italy and a member of the MARQUES IP Emerging Issues Team

Robert Guthrie, Chair of the MARQUES European Trade Mark Law and Practice Team, and Richard May consider the significance of last week’s CJEU ruling in the SkyKick case.

On 29 January 2020, the CJEU delivered its judgment in Sky v SkyKick (Case C-371/18). The CJEU was being asked to rule on two important areas of trade mark law:

1. whether a trade mark can be declared invalid in whole or in part for having a specification that lacks “clarity and precision” if it is registered for broad terms such as computer software; and
2. whether a trade mark can be declared invalid on grounds of bad faith if there was no intent to use for some of the goods and services covered.

MARQUES members were awaiting the CJEU’s judgment with some concern as it has been a common practice in the EU to use broad terms and specifications to obtain as much coverage as possible across the classes of goods and services applied for. This practice has been encouraged by the EUIPO – especially before the CJEU’s previous judgment in IP TRANSLATOR ruled that the use of the entirety of the Nice class headings should no longer be treated as a claim to all goods and services that fell within the relevant Nice class.

However, the decision is largely brand owner friendly:

• The CJEU has confirmed that trade mark registrations containing broad terms such as ‘computer software’, ‘financial services’ or ‘telecommunications services’ cannot be invalidated in whole or in part due to an alleged lack of clarity and precision of such terms.
• Despite the earlier Advocate General Opinion, the inclusion of broad terms in trade mark specifications cannot be regarded as contrary to public policy.
• The CJEU did confirm that the registration of a trade mark without any intention to use it in relation to the goods and services covered will constitute bad faith, but only if the applicant intended to (a) undermine, in a manner inconsistent with honest practices, the interest of third parties or (b) obtain a monopoly for purposes other than to fulfil the functions of a trade mark.  
• Importantly, the CJEU ruled that a finding of bad faith on the basis of a lack of intention to use for some of the goods and services covered will only invalidate the registration for those goods and services and not the whole registration.

Background to the case

In the underlying UK proceedings, Sky, the well-known satellite and digital television broadcaster, sued SkyKick, a start-up company that supplies cloud migration services, for trade mark infringement for use of the word SkyKick and other similar signs.

SkyKick denied infringement and counterclaimed for a declaration that Sky’s trade marks were invalidly registered, either wholly or partially, because (i) Sky’s specifications of goods and services lack clarity and precision; and (ii) Sky’s marks were applied for in bad faith because Sky had no intention to use all the protected goods and services.

Implications for brand owners

The decision is good news for brand owners because it effectively maintains the status quo for trade mark registrations and there is no need to spend time and money narrowing down broad terms. Indeed, the possibility of a bad faith challenge on the basis of a lack of intention to use suggests that the use of broad terms, where acceptable by trade mark offices, will be a more secure way to obtain broad coverage than the use of large numbers of narrow terms.

The question remains whether the EUIPO and national offices should continue to accept terms such as “computer software” because the CJEU failed to address whether the broadness of such terms does mean they are “insufficiently clear and precise”. What we know from this ruling is that there is no ability for brand owners to challenge trade mark applications or registrations for containing broad terms so it will be down to the EUIPO and national offices to decide the matter pending further guidance from the CJEU and/or their respective national courts and tribunals. MARQUES members are referred to the TMclass search tool linked to the Harmonised Database of Goods and Services database which includes information as to which terms are accepted by all participating offices.

In respect of bad faith, the CJEU did decide that this may be established when there were “objective, relevant and consistent indicia” that tended to show that an applicant intended to “obtain a monopoly for purposes other than to fulfil the functions of a trade mark”. This suggests that for marks to be invalidated on this basis it may be necessary to establish not only that an applicant had no specific plans to use the mark for the goods and services concerned but also that they knew that they would not or were unlikely to use the mark for those goods and services.

In any event, because the CJEU ruled that any finding of bad faith on the basis of a lack of intention to use does not invalidate the entire registration, it would seem that applicants will not generally have to worry that the use of broad specifications could invalidate or weaken their rights in respect of those goods and services for which they do have an intent to use. We can therefore expect the practice of using broad terms and specifications in the EU to continue.

The CJEU did not expressly address the hot topic of re-filing or “ever greening” trade marks every five years to avoid proof of use requirements – although it is certainly arguable that such practices fall within the test set out by the CJEU for those goods and services where there is no intent to use and the reference to bad faith requiring ’consistent’ indicia of the relevant intention may perhaps have been included with such practices in mind. In the MONOPOLY case (Kreativni v Hasbro) the Board of Appeal decided that re-filling could amount to bad faith and we may get more guidance on this if and when the case progresses to the CJEU.

Robert Guthrie is Chair of the MARQUES European Trade Mark Law and Practice Team and a Partner of Osborne Clarke in London. Richard May is also a lawyer with the firm

At the start of 2020, IP practitioners received some exciting news regarding South Africa’s accession to the Madrid Protocol. Mariëtte du Plessis of the MARQUES International Trade Mark Law and Practice Team explains:

South Africa’s accession to the Madrid Protocol was approved by Parliament at the end of November 2019, although the news only reached practitioners just before Christmas. Although the registry has been preparing for the event for years, the expected Parliamentary approval was again delayed in 2019, due to the national elections.

Despite the excitement, South Africa is still some time away from depositing its instrument of accession, as it will only be deposited once the President has signed the enabling legislative amendments into law.

The required impact study on the legislative amendments is being conducted by the Department of Planning, Monitoring and Evaluation in the Presidency, where after the draft amendments will be presented to the State Law Advisors for pre-certification. Once received, the amendments will be tabled with Cabinet for approval and then finally published for public comment.

The Registrar confirmed that they are aiming for the amendment bill to be tabled in Parliament by June 2020.

Further developments will be reported on this blog and the HouseMARQUES newsletter. Sign up for alerts using My Account on the MARQUES website.

Mariëtte du Plessis is a lawyer with Adams & Adams and a member of the International Trade Mark Law and Practice Team