Seven Years Later, Manchester United Kicks off Trademark Free Rider

发布时间: 2018/1/31 10:23:00

  The seven-year trademark dispute between the UK-based Manchester United (MU) and a private person by the surname of Zhou has finally come to an end recently. According to the final judgment made by Beijing High People's Court, the No.6483536鑫曼联 (English translation: Xin Manchester United) and other 15 trademarks filed by Zhou shall not be registered.

  The trademark in question was filed by Zhou for registration in December 2007, certified to be used on Class 35 services including employment office, accountant and looking for sponsorship. In November 2010, the trademark in question was preliminarily approved and published by the Trademark Office (TMO) under the State Administration for Industry and Commerce (SAIC)。

  Nearing expiration of the publication opposition period, MU filed an opposition request with TMO citing that Zhou registered MU's previously-used famed trademark in bad faith. It constituted similar trademark with its registered曼联, MANCHESTER UNITED and its figure and MANCHESTER UNITED and used in similar products or services.

  After examination, TMO upheld the registration of the trademark in question in August 2012. The disgruntled UK soccer club then brought the case to the Trademark Review and Adjudication Board (TRAB), and proved that Zhou has registered more than 10 trademarks including曼联 (Abbreviated Chinese for Manchester United), 皇马 (Abbreviated Chinese for Real Madrid) and奥巴马 (Obama) besides the trademark in question.

  In December 2013, TRAB held that Zhou not acquire the trademark in question in bad faith.

  MU then sought help at Beijing No.1 Intermediate People's Court. After hearing, the court held that the Zhou's 10 trademarks were obtained by other illegitimate means as provided by the Chinese Trademark Law, so the trademark in question shall not be registered. The court then withdrew the decision made by TRAB and ordered TRAB to take a new look.

  TRAB then appealed to Beijing High, citing that the relevant rule in the Chinese Trademark Law only applies to registered trademarks instead of unregistered ones.

  After hearing, Beijing High held that if the provision of obtaining trademark by other illegitimate means merely applies to registered trademarks not unregistered trademarks, it will prejudice with the legislative intention as well as wasting administrative and judicial resources. Zhou has no intention to use the 10+ trademarks and evidently it is an act of hoarding trademark. Therefore, such trademarks shall not be registered as it disturbs the trademark registration order.

  Beijing High then declined the TRAB request and sided with the first-instance decision and ordered TRAB to take a new look. (by Wang Guohao)

  (Editor Li Xingyi)

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