Nike’s “Liu Xiang” Trademark Problem

December 6, 2012

I’ve received a couple of questions about the current dispute over the “Liu Xiang” trademark between Nike and a Shanghai clothing company, and although the case is fairly straightforward, here’s the FYI. As you probably know, the world-class hurdler Liu Xiang has a representation deal with Nike, so its therefore in Nike’s interest to nail down any issues related to the “Liu Xiang” name in or out of China.

In doing so, Nike filed for trademark protection in China for the “Liu Xiang” name but was rejected by the China Trademark Office. Nike then filed an appeal of the rejection with our old friends the Trademark Review and Adjudication Board (TRAB), which upheld the decision. Nike then appealed the administrative decision with the Beijing 1st Intermediate Court, which held a hearing on the case  on Tuesday.

Why was Nike’s application rejected? The problem is that there is a similar registered mark in the way (notice I didn’t use the term “hurdle” — I respect you too much to stoop to such a cheap joke). The existing mark is ” 刘翔牌” and was registered by a Shanghai clothing company. The first two Chinese characters,  刘翔, are identical to Liu Xiang’s name. The similarity is therefore obvious, at least in my opinion.

Before you start chuckling and mutter “there they go again, those devilish trademark squatters,” keep in mind that according to media reports of the case, the ” 刘翔牌” mark was registered back in 1986 when Liu Xiang the sports hero was only three years old. If this is really a case of trademark squatting, then this Shanghai company must have been extraordinarily prescient.

One side note on the history of this. I went ahead and looked up the registration on the Trademark Office web site. Although I did find a registration for ” 刘翔牌” by this Shanghai company in Class 25 for a variety of clothing (not all sports-related, either), the application date was January 1, 2005. Several explanations for this, the most obvious being some sort of error on my part. Just for the record, though, I can’t confirm this 1986 date.

Another side note. The third character in the mark, “牌” (pai), which can mean a number of different things depending on the way it’s used, seems here to just mean “brand,” as in “Liu Xiang brand.” Weird to see that as part of the actual registered trademark, but there it is. Maybe I’m missing something on that front as well as to common usage; if so, someone please clue me in. Regardless, the inclusion of the character pai is not really relevant to the dispute.

Anyway, if the media reports are accurate and the mark goes back to 1986, that means that the Shanghai clothing company is not a trademark squatter and, since it registered the mark first, it is entitled to protection against the proposed Nike registration, which is definitely similar.

What’s a bit bizarre about this case is that the usual arguments about customer confusion are sort of reversed.

If Nike’s application was approved it would cause confusion and mislead customers because both trademarks would be used on clothes, attorneys for the appeal board told the court.

Lawyers for the sportswear giant disagreed, contending customers would not be misled due to the huge global reputations of the company and Liu, the 2004 Olympic gold medallist in the 110-meter hurdles. (China Daily)

Hmm. I think it’s safe to say that if both marks co-existed, there would be customer confusion. In that sense, the TRAB lawyers have it right. However, I have a feeling that anyone who sees the “刘翔牌” brand these days is not thinking “Oh right, that’s that Shanghai clothing company,” but rather “Liu Xiang, the Chinese sports god.” Great benefit for the Shanghai company, big bummer for Nike and Liu Xiang himself, but them’s the breaks.

In a first-to-file trademark jurisdiction, later fame doesn’t mean you can trample on the rights of an earlier registrant. Unless there’s an angle I’m overlooking here, I don’t see how Nike prevails on this one.