As first reported by ??, the China’s National Intellectual Property Office Review and Invalidation Department (PRB) invalidated a Chinese design patent for a sports shoe that uses ASICS Corporation branded striped logo. Competitor Qiaodan Sports Co. Ltd. (notorious for using Michael Jordan’s Chinese name as their company name and in trademarks, etc.) has applied for a design patent 201430367626.7 on September 29, 2014, which was granted on April 8, 2015. ASICS filed for revocation of the patent on January 20, 2020, which the PRB invalidated on July 7, 2020 on the basis of ASICS Chinese trademark no. . 5875801 included in class 25 covering sports shoes and other products.
The PRB has stated that Trademark No. 5875801 was obtained before the filing date of the patent in question and is still valid. Therefore, Trademark No. 5875801 can be used to assess whether the patent in question complies with Article 23 (3) of the Patent law, which reads: “Designs for which a patent right is granted must be those which do not conflict with legitimate rights acquired by others before the date of application. “
The PRB explained, “The patent in question is the design of athletic shoes. The products used under the registered trademark include running shoes, soccer shoes, athletic shoes and other products. Therefore, the types of products used by both are the same. Both sides shown in the subject design patent have patterns consisting of lines … Both are patterns formed by crossing horizontal and vertical lines. … The main difference between the two is that the relevant patent has a single horizontal line, while the registered trademark has two horizontal lines. The Panel considers that because the subject patent and the trademark have similar long left-bottom-right-top horizontal lines and short double vertical lines intersecting the horizontal lines, and the overall pattern formed after the intersection of the lines horizontal and vertical has a similar visual effect, and the relevant patent 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 with the goods of the owner of the registered trademark. “
As a result, the PRB considered that the patent uses a pattern similar to the registered trademark without authorization, which confuses the relevant public and therefore infringes the rights of the trademark owner. Thus, the patent in question conflicts with Article 23, paragraph 3 of the Patent Law and is invalid.
A copy of the decision is available here: CN303153886S_261070.
ASICS also succeeded in invalidating 6 other design patents in July 2020 that use the ASICS stripe logo, including Decision # 45363 for patent #. 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.
© 2021 Schwegman, Lundberg & Woessner, PA All rights reserved.Revue nationale de droit, volume X, number 214