ASICS has landed a win in an ongoing fight against the Chinese sportswear company that hijacked its famed stripes motif for its own collection of sneakers, and then received a patent for a sneaker design that makes use of that very motif. In a newly-issued decision, the China National Intellectual Property Administration (“CNIPA”)’s Reexamination and Invalidation Department invalidated a design patent held by Qiaodan Sports Co. Ltd., holding that the patent is in conflict with the pre-existing rights of Kobe, Japan-based ASICS.
At the center of the legal scuffle is a design patent that Qiaodan Sports was awarded in April 2015 for the visual ornamental characteristics of one of its sneakers, including a striped design that looks a whole lot like one for which ASICS’ maintains a trademark registration in China. In response to the petition for invalidation that ASICS filed early this year in a quest to stomp out Qiaodan Sports’ patent, the CNIPA determined in a decision dated July 7 that the Qiaodan Sports’ patent makes unauthorized use of a pattern that is notably similar to ASICS’ trademark, and thereby, runs afoul of Chinese Patent Law, which does not permit the issuing of patents that “conflict with the lawful rights acquired by others prior to the date of [patent] application.”
Because ASICS maintained trademark rights for its striped trademark in China before Qiaodan Sports filed its patent application in September 2014, its patent is invalid, a panel for the Chinese intellectual property body held.
Of particular relevance to the CNIPA panel is the similarity of the two parties’ goods. Qiaodan Sports’ patent covered the design of a pair of sneakers, and ASICS’ trademark is registered in Class 25, which includes “running shoes, football shoes, gym shoes and other products.” As a result, the panel held that “the types of products used by the two are the same.”
Beyond that, the panel held that while there are some differences between ASICS’ trademark and the design that appears on CNIPA’s patent-protected sneaker, namely, “the [motif in the] patent involved has a single horizontal line, while the registered trademark has two horizontal lines,” the motif in “the patent in question and the registered trademark” have enough of a similarity to cause the patent to be deemed invalid.
To be exact, the panel stated that the two parties’ designs “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” that is used by both companies “has a similar visual effect,” that any of the differences are “not enough to affect the similarity of the overall visual effect of the two.”
With that in mind, the panel says that “it is easy for the relevant public to confuse the goods of the patent in question and the goods of the registered trademark owner,” and thus, the Qiaodan Sports patent be invalidated.
As for Qiaodan Sports more generally, if the name sounds familiar, that is because it is the party on the other side of the nearly-decade-long fight with Michael Jordan over the Chinese translation for the name “Jordan.” In a highly-anticipated decision in March, the Chinese Supreme People’s Court – which is the Chinese equivalent to the United States Supreme Court – sided with the NBA legend, holding that he has prior rights in the name “Qiaodan” in Chinese characters, which the Chinese sportswear company registered along with a design that depicted a basketball player in midair attempting a layup more than a decade before in connection with its manufacturing, marketing, and sale of clothing.