Beijing High People’s Court recently concluded a seven-year trademark dispute, ruling in favor of the natural person surnamed Hong, denying Nike Inc.’s request to revoke Hong’s KB-KOBE and 科比 trademark.

Ten years ago, Hong, a natural person, applied the No. 3962005 trademark 科比 and KB-KOBE in March 2004, certified  to be used on Class 18, commodities of suitcase, backpack, wallet, traveling bag etc. On April 2007, Hong’s application has been preliminarily approved and announced for public notice.

Nike then challenged the trademark in dispute on ground of name rights infringement of Kobe Bean Bryant, an American professional basketball player, during the publicity period. After their request was denied, Nike then turned to the Trademark Review and Adjudication Board (TRAB) under the State Administration for Industry and Commerce (SAIC) for review.

TRAB held that the evidences provided by Nike failed to prove that Kobe and Kobe Bean Bryant are closely inter-connected in other fields but basketball. Kobe is just a common seen family name in English spoken countries. Thus, Hong’s registration on Class 18 products doesn’t cause harm to Kobe Bean Bryant’s name rights and Nike’s commercial rights. At the same time, Nike fails to prove that Kobe and Kobe Bean Bryant has earned great popularity and high reputation as a trademark on products of suitcase and wallet etc. TRAB then made the decision above.

Disgruntled Nike filed an administrative proceeding against TRAB’s decision. Nike claimed that the company and Kobe Bean Bryant under the contract should enjoy the prior rights of Kobe and 科比 in Chinese as trademarks. Nike and Kobe trademark have established high reputation in Chinese markets and are popular among Chinese consumers; Hong’s registration is malicious.

The court held that Nike fails to enjoy the prior rights before the date of Hong’s registration, based on the evidences provided by Nike. Nike is not qualified to revoke the trademark in question. 

Based on the materials by the two sides, the court made the decision above. (by Wang Guohao)

http://www.cipnews.com.cn/showArticle_syzk.asp?Articleid=32325