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China’s Patent Office Invalidates Chinese Shoe Design Patent Using the ASICS Stripes Trademark

As first reported by 汇知杰, the Reexamination and Invalidation Department of the China National Intellectual Property Office (PRB) has invalidated a Chinese design patent for an athletic shoe that uses ASICS Corporation’s  trademarked stripes logo.  Competitor Qiaodan Sports Co. Ltd. (notorious for using Michael Jordan’s Chinese name as their company name and in trademarks, etc.) filed design patent application 201430367626.7 on September 29, 2014, which was granted on April 8, 2015.  ASICS filed a petition to invalidate the patent on January 20, 2020, which the PRB invalidated the patent on July 7, 2020 based on ASICS’ Chinese trademark No. 5875801 in class 25 covering athletic shoes and other goods.

China Patent Qiaodan

The PRB stated that the registered trademark No. 5875801 was obtained before the filing date of the patent in question and is still valid.  Therefore, registered trademark No. 5875801 can be used to evaluate whether the patent in question complies with Article 23, paragraph 3 of the Patent Law, which reads, “Designs for which a patent right is granted shall be ones which are not in conflict with the lawful rights acquired by others prior to the date of application.”

The PRB reasoned, “The patent in question is the design of sports shoes. The products used under the registered trademark include running shoes, football shoes, gym shoes and other products. Therefore, the types of products used by the two are the same. The two sides shown in the design patent in question have patterns composed of lines… Both are patterns formed by crossing horizontal and vertical lines. … The main difference between the two is: the patent involved has a single horizontal line, while the registered trademark has two horizontal lines. The panel believes that because the patent in question and the registered trademark have similar left-low-right-high, long horizontal lines and double short vertical lines intersecting the horizontal lines, and the overall pattern formed after the horizontal and vertical lines intersect has a similar visual effect, and the patent involved only reduces the number of horizontal lines of the registered trademark, which is a common design method, it is not enough to affect the similarity of the overall visual effect of the two, and it is easy for the relevant public to confuse the goods of the patent in question and the goods of the registered trademark owner. “

Accordingly, the PRB held that patent uses a pattern similar to the registered trademark without authorization, which causes confusion amount the relevant public and therefore damages the rights of the trademark owner.  Thus, the patent in question is in conflict with Article 23, paragraph 3 of the Patent Law and is invalid. 

A copy of the decision is available here: CN303153886S_261070.

ASICS was also successful in invalidating 6 other design patents in July 2020 that use the ASICS stripes logo including Decision No.45363 for Patent No. 201030634206.2; Decision No.45386 for Patent No. 201830688291.7;  Decision No.45366 for Patent No. 201530421043.2; Decision No.45364 for Patent No. 201530421223.0; Decision No.45346 for Patent No. 201730509023.X; and Decision No.45344 for Patent No. 201830699779.X.

© 2020 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.National Law Review, Volume X, Number 214
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About this Author

Aaron Wininger IP Attorney China Portfolio Development
Director of China Intellectual Property Law Practice Schwegman Lundberg & Woessner

Aaron Wininger is a Senior Attorney and Schwegman’s Director of China Intellectual Property. Aaron counsels both U.S. and Chinese companies on portfolio development and preparation of their patent applications and office action responses. He has worked with clients in the areas of software, networks (wired and wireless), lasers, medical devices, semiconductors and physics.

Aaron prosecutes both Chinese and U.S. trademarks. He has also drafted and prosecuted hundreds of U.S. and international patent applications in a broad spectrum of areas, including computer hardware and software,...

408-278-4059
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