Registering a trademark vertically but using it horizontally on shoes—this trick of "rotating infringement" nearly caused heavy losses for Puma.
After an eight-year legal tug-of-war, Puma turned the tables with a combined strategy of
non-use cancellation review + trademark invalidation, finally winning the battle.
Puma’s "Formstrip" is the iconic curved stripe design on sports shoes, used on sneakers since the 1958 World Cup in Sweden. However, copycats and imitations have emerged endlessly in the Chinese market. The most representative case involves two figurative trademarks applied for by Jinjiang Baxinier Shoes & Garment Trade Co., Ltd.
These two trademarks featured a "clever" design—registered vertically. Viewed only as registered designs, they did differ from Puma’s horizontal Formstrip. But Puma discovered that, in actual use, the two marks were rotated 90 degrees and applied horizontally to the side of shoe uppers, appearing nearly identical to Puma’s Formstrip in overall appearance.
I. Why Did Puma Lose at First?
Puma successively filed opposition and invalidation applications against the two trademarks, but the China National Intellectual Property Administration (CNIPA) ruled that the two marks "differed in overall visual effect and expression from Puma’s Formstrip series trademarks... were distinguishable... and did not constitute similar trademarks".
What was the problem? Examiners reviewed the registered designs, not the actual use. Registering vertically and using horizontally—this "rotation" tactic successfully interfered with the judgment of trademark similarity. The two marks did look different on paper, but consumers saw horizontal stripes on shoe uppers in stores. No one would rotate the mark 90 degrees to check if it was Puma before buying shoes.
II. Puma’s Counterattack: A Combined Strategy Breaks the Deadlock
Puma refused to concede and launched a two-pronged strategy: non-use cancellation review plus trademark invalidation.
Step 1: Non-use cancellation review to uncover the "rotation" truth
When the two disputed trademarks reached their third year of registration, Puma immediately filed cancellation applications. The marks were cancelled for non-use on all goods except "shoes", but maintained for "shoes". Puma did not stop there and filed a cancellation review—not to cancel the marks, but to verify their actual use.
During the cancellation review, the CNIPA forwarded the respondent’s use evidence to Puma. The evidence fully confirmed Puma’s suspicion: the two disputed trademarks were rotated and used horizontally on shoe uppers, exactly the same way as Puma’s Formstrip.
Step 2: Administrative litigation to overturn the ruling with evidence
Armed with actual use evidence, Puma firmly filed administrative litigation, arguing that the respondent’s use evidence was completely inconsistent with the registered form of the trademarks, constituting material alteration of registered trademarks, and thus should not be deemed legitimate use.
Finally, the Higher People’s Court of Beijing revoked the first-instance judgment and the CNIPA’s invalidation ruling, ordering the CNIPA to issue a new decision. The CNIPA subsequently declared the two disputed trademarks invalid. The eight-year trademark battle came to an end.
III. What Does This Case Teach Us?
1. Registered design ≠ actual use
The discrepancy between registered design and actual use is often a "gray area" for infringers. In this case, Puma successfully secured the respondent’s actual use evidence through cancellation review, breaking the examiners’ blind spot.
2. Cancellation review is not only for cancellation, but also for evidence collection
Many enterprises use "non-use cancellation" only to clear idle trademarks, but this case reveals its other value: obtaining use evidence via cancellation review to support invalidation litigation. This combined strategy is worth learning for brand owners.
3. Trademark similarity judgment must consider market scenarios
Consumers see horizontal stripes on shoe uppers, not vertical designs on registration certificates. Trademark similarity should be judged based on the actual perception of relevant consumers, not mechanical comparison of registered designs.
Epilogue
After eight years of trademark defense, Puma won not only the invalidation of two trademarks, but also an important judicial recognition: the "clever tricks" of infringers cannot stand long against a well-executed legal strategy.
As a core asset of a brand, trademark protection is never a one-time effort. Failure in one invalidation case is not the end—cancellation review, administrative litigation, and other legal tools are available. The key is whether you know how to use them.
