Supporting Qiaodan Brand Is Not Patriotic, But Harmful To China

An iconic photo of Michael Jordan getting the basketball was made into a mirror-like silhouette logo, and then used with the phonetically similar name 乔丹 Qiáodān, and both the logo and name were trademarked in China without Michael Jordan's permission.

The most iconic basketplayer ever, Jordan, is going to protect his name, his identity and the Chinese consumer against a Chinese company that has made a business of his name by taking advantage of his reputation. 

In a video on his site The Real Jordan Michael Jordan said: "I have established a name, likeness, identity, that represents me personally. When you see the Jordan brand it is a direct connection of who I am, Michael Jordan. I have always thought that my name means everything to me and is something that I own. If someone takes advantage of that, or misrepresents that, I think it is up to me to protect that. I think that is for everyone, not just Michael Jordan, globally all over the world, when you have your name it is your DNA." 

Stan Abrams points to article 31 Trademark Law that has been applied by Yao Ming and Yi Jianlian, see here. 

Article 31 Trademark Law: An application for the registration of a trademark shall not create any prejudice to the prior right of another person, nor unfair means be used to pre-emptively register the trademark of some reputation of another person has used. 

Chinese Radio International (CRI), the website of China's state radio published an article written by Fuyu entitled "Linsanity" Offers Entrepreneurs a Chance to Cash In. The article is writing about pre-emptively registering a trademark of reputation of another person as something commendable. Fuyu writes about Yu Minjie, who registered in 2011 the trademark "Jeremy S.H.L (Shu-How Lin) when Jeremy Lin just entered the NBA: Using her sharp business acumen, Yu immediately recognized Lin's business value when she saw him play basketball on television, prior to Lin becoming famous." And of course Lin's reputation is short, but Lin should be able to make use of article 31 Trademark Law too.

Fortunately there is also information coming from China that does not accept this pre-emptive practice. The video below covers a survey at Sina website. They asked 59,279 people if they think the 乔丹 Qiaodan brand deceives the public. 78.6 percent agreed, and 16.2 percent did not agree.
The presenter 白岩松 Bai Yan Song asked: "If 乔丹 Qiaodan would win, does it means the company would win?" Bai gave the answer: "No, even if they win in the lawsuit, they will still lose, because they are cheaters in the eye of the consumer."

A boy said that if the 乔丹 Qiaodan will win the lawsuit, it will improve the position of this company in his mind. Then the reporter asked why? He replied: "乔丹 Qiaodan must win, because it is our national brand." A girl asked: "If the company was wrong, why the original Michael Jordan brand never sued them before?"

The presenter said: "I'm really worried about what the boy in the street said. If so many people think like him, it is not patriotic, but harmful to our nation. We should have greater expectations of China, not just stop Shanzhai products, such as these fake Jordans or iPads."

Thank you Michelle for pointing me to this video, which is in Chinese but in which Michael Jordan talks English.

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iPad, youPad, wePad? Who Is the Owner of the Trademark in China?

iPads for sale in the Apple Store at Central, Hong Kong
 Photo Danny Friedmann

Apple introduced a third category, in between a laptop and smartphone, on January 27, 2010 (see the late Steve Jobs give the presentation here and demonstration here and here). April 3, 2010 it was intoduced in the U.S. and one month later in other places around the world. Two months later already a million of these devices were sold. And according to Reuters, Apple has sold 15.43 million iPads in the last 14 weeks of 2011.

So Jobs vision became reality. But how to name this third category? 

" ... and we call it the iPad." 

That other companies had already registered the name iPad in some jurisdictions could be solved, so the thinking went. For this purpose Apple set up a special purpose company to acquire these trademarks in all relevant jurisdictions. The name of the company IP Application Development Limited is interesting, because abbreviated it is IPAD Ltd. 

In the acquisition process, or rather effort to assign the trademark, a mistake was made. IPAD Ltd. and Proview Holdings, Proview Electronics (Taiwan) and Proview Technology (Shenzhen) entered into a written agreement, December 2009, whereby they agreed to sell, transfer and assign the Chinese trademark of iPad to IPAD Ltd. for £35,000. However, in the written agreement Proview Electronics (Taiwan) pretended to be the proprietor of the trademark and "assigned" the trademark to IPAD Ltd. But the real proprietor was Proview Technology (Shenzhen). John Paczkowski seems to have gathered some of the documents, see here. Then Proview Technology (Shenzhen) started to try to enjoin the sale of iPads in China for alleged infringement of their iPad trademark, and was successful in cities such as Shijiazhuang and Huizhou, according to David Levine in an article for Reuters. Or, if Apple wanted to avoid getting banned from the Chinese shops and gain control over the iPad trademark, they had to pay 10,000 U.S dollar. 

Also it became clear that Proview Technology (Shenzhen) had lodged applications with the Trademark Office, part of the State Administration for Industry and Commmerce, to transfer the Chinese iPad trademarks to Yoke Technology on May 7, 2010. 

The mistake by IPAD Ltd/Apple could have been easily prevented. If you go to Trademark Search of China's Trademark Office, part of State Administration for Industry and Commerce, and type in IPAD in class international trademark 9, you will see that Proview Technology (Shenzhen) registered the trademark January 10, 2000, see registration number 1590557 and that the effective period of exclusive right: June 21, 2011-June 20, 2021, however, it seems to be repealed because of non-use for three years). Also Proview Technology (Shenzhen) has registered the stylized version of the trademark, international trademark class 9, under registration number 1682310, application date September 19, 2000. Effective period of exclusive right: December 14, 2001- December 13, 2011. Continued after objection. So at least IPAD Ltd could have easily found a starting point to trace who owns the iPad trademark for international trademark class 9. 

Everybody knows Apple these days, but Proview used to be famous too. Proview Group is a producer of display devices, which  include LCD monitors, CRT monitors and flat-panel digital products. It has operations and offices around the world, including Taiwan, Mainland China (Shenzhen and Wuhan), Hong Kong and Europe. Proview Holdings was incorporated in Bermuda and is listed on the Hong Kong Stock Exchange. Proview International Holdings Ltd was the first Taiwanese technology company to list in Hong Kong, and was quite successful. In 1999 it teamed up with U.S. chip maker National Semiconductor "to launch the I-PAD, a stripped-down desktop computer whose main selling points were its Internet connectivity and ease of use." Then Proview was hit by the financial crisis and May 12, 2010, the Hong Kong Stock Exchange issued a notice that trading of Proview Holdings’ shares had been suspended. Read here Jeremy Wagstaff and Lee Chyen Yee's Reuters article on Proview's rise and demise, see here.

Timeline

May 20, 2011, Apple Inc. and IPAD Ltd filed a lawsuit in Hong Kong against Proview International Holding Ltd, Proview Electronics Co (Taiwan) Ltd, Proview Technology (Shenzhen), Yang Rong-Shan (founder of the Proview Group and  chairman and CEO of Proview Holdings who was adjudicated bankrupt on August 2, 2010) and Yoke Technology (Shenzhen). The Hong Kong case reveals many of the relevant facts: High Court Of The Hong Kong Special Administrative Region Court Of First Instance, Action no. 739 of 2010  (HCA739/2010). On June 28, 2011 the Poon J. (潘兆初法官), decided and July 14, 2011 he motivated his decision to allow  the interlocutory injunction and restrain the defendants to "sell, transfer, assign, otherwise dispose of and/or give good title" to the Chinese iPad trademarks. 

May 24, 2010, Apple instituted proceedings against Proview Technology (Shenzhen) in the Shenzhen Intermediate People’s Court and filed an application for Asset Preservation Order (APO) in respect of the Chinese iPad trademarks. June 12, 2010 the application was granted on 12 June 2010, subject to the APOs obtained by some other Mainland banks.

Proview Technology (Shenzhen) has started suing Apple resellers at the Shenzhen Futian District Court (December 30, 2011) and Huizhou Intermediate People's Court (January 7, 2012), read Katrin Hille's FT article here and about Apple losing there here, at Stan Abram's China Hearsay.

According to Shenzhen Media People’s Court Apple lost its trademark ownership on December 6, 2011, see Huang Mengren's article here. Apple decided to appeal at the Guangdong Higher People's Court.
February 22, 2012, there was a trademark infringement case between Proview and Apple at the Shanghai  Pudong New Area People's Court. Apple was successful to the extent that Apple's iPads were not banned from the shelves. But as Stan Abrams of China Hearsay made clear, see here and here, the real question is who owns the iPad trademark. This will be decided at the Guangdong Higher People's Court, February 29, 2012.

In the mean time Proview Electronics (Taiwan) has accused Apple of fraud in a lawsuit filed at the Superior Court of California, County of Santa Clara. See here. However, in contrast to trademark lawyer Martin Schwimmer of The Trademark Blog, who was quoted by David Levine responding to the case: "I have never encountered this level of ruse", see here: I think it is not so strange nor unusual if you set up a special purpose company for the acquisition of a name such as iPad. Especially since iPhone is so ubiquitously known that if Apple pursued the trademark iPad, it would have definitely driven up the price, as this case proofs: from 35,000 pounds to 10 million U.S. dollars. There is no legal requirement to disclose the reason why you want to buy a trademark. Or is there?

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Toyota on a Chain: Creatively Challenged Art or Parody?

Last year's Hong Kong International Art Fair at the Hong Kong Convention and Exhibition Centre included the "Toyota Chain", by Thomas Hirschhorn, which, was exactly that. Mr Hirschhorn, a Swiss artist, made the piece in 2002, and so far, nobody wants to buy it.

To magnify an existent trademarked logo, without authorisation by the trademark holder, and put it on a chain seems quite stale as a piece of art. But is it legal? In Hong Kong there is no such thing as parody in the Trade Marks Ordinance (and not even in the Copyright Ordinance, so that excludes an analogous application, although it is being considered, see here). And even if there was, I think it is doubtful that this piece of cardboard, adhesive tape, aluminium and red spray falls within the scope of parody. Mr Hirschhorn uses the name recognition and reputation of the Japanese car brand to exploit commercially. In Hong Kong Mr Hirschhorn was definitely diluting Toyota's trademarked logo and name and possibly in jurisdictions with a parody provision as well.

Hirschhorn's "Toyota chain" at the 2011 Hong Kong International Art  Fair
Photo: Danny Friedmann

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Undecent Miffy Bunnies Spotted In Macau

Warning: This article contains material which may offend and may not be distributed, circulated, sold, hired, given, lent, shown, played or projected to a person under the age of 18 years.

Let me first refresh your memory about IP relevant rabbits and then tell you about my encounter with the undecent two Miffy bunnies in Macau.

Miffy is the English name of the Nijntje (konijntje = little rabit) cartoon figure, created by Dick Bruna. Kathy (in many articles this name is written with a C) looks very similar to Miffy and is a cartoon by Sanrio, the same company that created HelloKitty. To distinguish the two alleged "cute" rodents. Miffy nose is an X, and Kathy's nose is a O.

Rabbits are known for their talent to reproduce, but Mercis, the company representing Miffy's creator, Dick Bruna, held that there can be only one: Miffy, based on Miffy's Dutch copyright and Benelux trademark.
November 2, 2010, the judge responsible for interim relief (voorzieningenrechter) Amsterdam Regional Court (Rechtbank Amsterdam) agreed with Mercis that Sanrio infringes both Mr Bruna's copyright and trademark for Miffy. Read the judgment here. Sanrio decided to appeal the decision.

Then March 11, 2011 Japan was struck by natural disasters. This seems to have relativised both parties, because in the beginning of 2011 they settled the matter out of court and decided to donate 17,5 million yen (155,000 euro) to the victims of the natural disasters. And Sanrio will exit Kathy, read Catherine Lee's article for IP Kat about it here.

Read more here.

Japanarchist and Givemeabreakman with Tomoko give an overview of the Miffy versus Kathy, rabbit fight and reconciliation.

In a shop at the Calçada da Barra, a sinister street in Macau, the Dutch Miffy is depicted on each plastic bags. Now the bag does not show whether or not the maker of bags has a license to use the copyrighted Miffy. In Macau's Online Trademark Registration Search System I could not found Miffy as a Macanese trademark. My impression was that this is a school example of passing-off, although it is called judicial action for unfair competition (articles 156-173 Commercial Code of Macau).

The Calçada da Barra might as well be named Sodom and Gomorrah for its aberrant disrespect of IP.

Each sold product, unrelated to Miffy, was put in a Miffy bag

In bright daylight I was exposed to the plastic bag. 

Two Miffy bunnies are depicted here tastelessly topless.
Mr Bruna could invoke its moral rights based on his copyright.
Another option might be trademark tarnishment,
if Miffy is a well known mark in Macau and if trademark dilution is possible under Macanese law.

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Yao Ming Wants To Reign Supreme Over Yao Ming Era

Photo Danny Friedmann
Story for the Sunday (星期日) 

Xinhua reported that Yao Ming, the tallest basketballer in the NBA, who has a contract with Reebok to wear their products, sued Wuhan Yunhe Dashayu Sportswear Co., Ltd for allegedly printing in Yao Ming's handwriting 姚明 一代 (Yao Ming Yi Dai) which means Yao Ming era or Yao Ming Era in English on shoes and apparel, see picture here. It was said that Yao Ming Yi Dai is popular in Hunan and that the alleged infringer wants to sell it nationwide.

Yao Ming registered his name as a trademark in several fields in 2002. However, Xinhua wrote that other "companies and individuals have registered Yao-Ming-related trademarks in China, like Yao Ming World, Yao Ming Empire, Yao Ming Rockets etc. Most of these trademarks are not printed on products."

Hopefully Yao Ming's era as basketball player is not coming to a close, since the Houston Rockets center is recovering from an ankle that could turn out his Achilles' heel. 

Read Chen Zhi's Xinhua article here.

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Shake or Crush Your Hand: Huawei versus ZTE versus Huawei

Photo: Danny Friedmann
Shake Or Crush Your Hand, you choose. 

What if you are developing a product but your competitor has patented some technology needed to achieve the technical result? And at the same time you have some patents that you know you competitor likes to use? You might consider to cross-license. However, from a patent strategy point of view, excluding your competitor from some crucial technology might be the best thing to do.

Bien Perez reports in the South China Morning Post (April 30, 2011): "Huawei had also invited ZTE on many occassions to enter into cross-patent licensing negotiations, but was unsuccessful."

Then April 28, Huawei sues ZTE in Germany, France and Hungary for alleged patent infringement related to its data card and Long Term Evolution standard (candidate for 4G mobile communication standard) technologies, and trademark infringement.

April 29, ZTE counter sues Huawei for alleged patent infringement on Long Term Evolution.

"Proxy PRC Courts" in Europe and now also China

China Hearsay's Stan Abrams is not surprised that the legal fight "in a most non-harmonious fashion" between two Chinese giants took place overseas, see here.

It is interesting that Chinese competitors fight some patent and trademark issues abroad. But I think it becomes really interesting now that ZTE has sued Huawei in China. ZTE also threaten to take a series of legal actions globally to protect its IPR rights.

UPDATE:  The Hungarian site Portfolio.hu has a picture provided by Huawei that it uses to proof that ZTE is infringing its trademark. See Porfolio.hu's article Huawei files patent, trademark lawsuits against ZTE, rival rejects charges.

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Trademark/Copyright Use or Abuse: Coca-Cola in Hong Kong

Do you think this use of the trademark should be allowed.

"Immoral to drink sweat and blood. Coca-Cola."

Photo taken from the wall at Franklin Centre at CUHK Campus in Shatin, Hong Kong. It is in protest against alleged bad labour conditions at the Coca-Cola plant.

One could argue that the copyright (moral right of droit au respect de l'intégrité de l'oeuvre) of the Pulitzer Prize winning photo by Eddie Adams is infringed.

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Exxon Mobil Wins 500,000 RMB Because of Trademark Infringement

Parties: Plaintiff Exxon Mobil; defendants: American Mobil International Petroleum Group and Xi'an Yanqing Technology Development Co.

Dispute: "defendants registered web addresses that included the Chinese characters for 'Mobil'." Probably with this is meant the characters 美孚 (mei3 = good, beautiful; fu2 = confidence, trust) and not the Chinese characters that translate mobil, because this word in the English language does not have any meaning. Correct me if I am wrong.

Ruling by the Shanghai No.1 Intermediate People's Court: defendants infringed Exxon Mobil's registered trade mark and engaged in unfair competition. Defendants must cease the infringing activity and pay RMB 500,000 Yuan.

Rouse's excellent newsletter China IP Extress 320 states: "The Court held that, although relevant judicial interpretations have not dealt with the issue, using another's trade mark in a web address can constitute trade mark infringement."

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Obama Endorses Fake Blackberry? Yea, right...

Jason Dean and Ellen Zhu of China Journal of the WSJ, have a nice post about a rip-off version of Blackberry called Blockberry which pretends in an advertisement to be endorsed by the president of the USA. Read here. I ask myself why did they not call the apparatus Obamaberry in the first place?

Thank you Sir CH of Mobimania (new site will be up soon)

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Apple Victorious In Trademark Conflict With New Apple Concept Digital Technology

Apple, Inc. won trademark case against New Apple Concept Digital Technology Co Ltd based in Shenzhen.

The Intermediate People's Court in Shenyang, the capital of the Liaoning Province, ordered New Apple Concept Digital Technology Co., Ltd., on 2 November to pay 400,000 yuan (58,000 U.S. dollars) for infringing on Apple's trademark and logo.

Read the Xinhua article by Wang Hongjiang here.

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