Step by step - trade marks in China (Brands & IP Newsnotes - issue 4)

So is this a sign of things to come? Perhaps. But getting to a point where western brands feel comfortable that their trade mark rights will be recognised and enforced consistently, particularly against local ‘copycats’, is likely to be a marathon not a sprint.

Nike and the “Jordan” brand have been available in the Chinese market since the 1990s. Nike registered the English word “Jordan” in China during that period but not the Chinese transliteration of 乔丹 or Qiaodan. In the early 2000s Qiaodan Sports applied to register, and obtained, a series of trade marks for these. But it was not until 2012 that Jordan sought to challenge that use. And consistent with the experience, or at least the commonly held perception, that many western brands have of trade mark proceedings in China, the lower courts sided with the local firm, dismissing the claims that use of those marks infringed Jordan’s rights.

So whilst the recent decision of the Supreme People’s Court is welcome, it’s significance should not be overstated. It is in truth only a small part of a wider dispute between Jordan and Qiaodan involving many registrations. It is therefore unlikely to signal a significant change of approach generally. The harsh reality is that protecting and enforcing IP rights in China remains a challenge, even for the biggest of brands. It will take time before the tide truly turns.

This article was first published in the Brands & IP newsnotes publication - issue 4