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Beijing ZhongLan VS. Wuhan Nanshan & State Administration for Industry and Commerce
    Publish time 2019-06-12 00:00    

2019-06-12

Beijing ZhongLan VS. Wuhan Nanshan  &  State Administration for Industry and Commerce

Intellectual property – Trademark infringement – “CBA” – Similar trademark used on similar goods – Rights to organisation name – Rights to a name of sports event – Whether plaintiff can resort to Art 10 sec 1(8) of the Trademark Law in the retrial proceeding – Trademark Law, Art 28.

 

Wuhan City Nanshan Advertising Co Ltd (“Nanshan Co”) applied for registration of the “CBA” word mark (“disputed trademark”) in April 2001 for use on commodities under Category No 25 including baby rompers, belts, wedding dress, apparels, shoes, scarves. This trademark was preliminarily gazetted in April 2002. During the statutory dissent period, Beijing Zhonglan Sports Development Centre (“Sports Centre”) applied to the Trademark Bureau of the State Administration for Industry and Commerce, requesting for non-registration of the disputed trademark.

 

Sports Centre asserted rights was applied for registration the “CBA and logo” trademark (“cited trademark)” in May 1999, and it was approved for registration in October 2000 for use on commodities under Category No 25 including sweatshirts, T-shirts, athletic shoes, socks, neckties, windbreakers, down garments, uniforms and shirts.

 

In July 2006, the Trademark Bureau disapproved the registration of the disputed trademark for use on apparels, shoes, scarves, but approved its use on baby rompers, belts, and wedding dress.

 

Nanshan Co and Sports Centre both applied to the Trademark Review and Adjudication Board (“TRAB”) of the State Administration for Industry and Commerce for a review.

 

TRAB disapproved the registration of the disputed trademark on the grounds that

(1) the disputed trademark and the cited trademark are completely identical in term of alphabet combination, thus constituting similar trademark;

(2) the commodities on which the disputed trademark would be used were closely related to the commodities on which the cited trademark has been used, thus constituting similar commodities; and

(3) the cited trademark enjoyed certain degree of reputation, and the use of two trademarks on identical or similar commodities at the same time would easily mislead and confuse the relevant public, thus the two trademarks constituted use of similar trademarks on similar commodities.

 

Nanshan Co disagreed with the decision and appealed to the Beijing No 1 Intermediate People’s Court.

 

The Court deemed that TRAB’s finding that all the commodities on which the disputed trademark would be used and the commodities on which the cited trademark was used had constituted similar commodities was wrong. It ruled to revoke TRAB’s decision and ordered the TRAB to make a new ruling.

 

The TRAB and Sports Centre both appealed to the Beijing High People’s Court which subsequently rejected the appeal and upheld the judgment of first instance.

 

Sports Centre disagreed with the judgment of second instance and applied to the Supreme People’s Court for a retrial.

 

Held: revoke the judgment of first instance and the judgment of second instance, uphold the TRAB’s decision.

 

(1) Whether the registration of the disputed trademark had violated the provisions of Art 10 sec 1(8) of the Trademark Law, and whether it had infringed upon the organisation’s name and its rights to a name for sporting event.

 

Following long-term use and publicity, “CBA” has been known as the abbreviation of Chinese Basketball Association and the English name of the National Basketball Professional League organised by the Chinese Basketball Association, and the relevant public has associated this term with Chinese Basketball Association and National Basketball Professional League. If an enterprise other than the Chinese Basketball Association or its authorised entity uses this term for trademark registration, the public may be misled and there would be an adverse impact on the public interest.

 

However in the trademark dissent review proceeding Sports Centre merely asserted that the cited trademark involved national interests and hence should be protected. It did not assert that the registration of the disputed trademark was in violation of Art 10 sec 1(8) of the TrademarkLaw. Neither did the TRAB refer to this clause in its decision. Therefore the Supreme People’s Court does not support Sports Centre’s citing Art 10 sec 1(8) as a reason for its application for retrial.

 

In addition, as Sports Centre did not claim that the registration of the disputed trademark had infringed upon Chinese Basketball Association’s name and its rights to a name for a sporting event pertaining to the term “CBA” as its reason to initiate the trademark dissent review proceeding, therefore the Supreme People’s Court does not support it’s using this reason for the application for retrial.

 

(2) Whether the disputed trademark and the cited trademark have constituted similar trademarks on similar commodities as defined in Art 28 of the Trademark Law.

 

The Supreme People’s Court held that, the cited trademark has been well-known prior to application for registration of the disputed trademark. Under this circumstance, the disputed trademark which was identical to the cited trademark in terms of spelling and pronunciation should be recognised as a similar trademark. If the disputed trademark is to be used on commodities related to the commodities on which the cited trademark is used, the relevant public would be confused over the source of commodities, or led to believe that the source was somehow associated to the rights holder of the cited trademark which was relatively well-known. Therefore the disputed trademark should not be approved for registration.