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Apr 14,2020
Express n° 1 WHD Case: TM | New Balance Wins a Hard Battle on Its House Mark at the Chinese Supreme Court
Total word count:2846
The Supreme People’s Court in China rendered a decision on April 3, 2020 invalidating two trademarks imitating the signature N mark owned by the renowned American shoemaker New Balance. This is a very significant win for the company in the 10-year battle with the local copycat named New Bunren who filed the two invalidated marks in 2010. The battle was started with a cancelation action with China Trademark Office, followed with a lawsuit at Beijing IP Court, and an appeal to Beijing High Court. New Balance won at the IP Court, but the High Court overruled the IP Court decision and maintained the registration of the trademarks. New Balance had to file a retrial petition with the Supreme People’s Court. China has a judicial system whereby the second instance is the final instance and a court decision can be appealed only once. It’s very rare (less than one percent) that a retrial is granted, and even less actually win a retrial, especially at the Supreme Court level.
New Balance has been fighting with copycat shoemakers in China for many years. A typical trick played by those copycats is that they file trademarks somewhat similar to New Balance’s signature N mark, but different enough to go through the registration and opposition procedures, and they would change color or design of the registered marks and make them look like the N mark when they actually use the marks on shoes. They would argue that New Balance’s mark is just a simple letter and not distinctive enough when they are sued for trademark infringement. New Balance has to submit thousands of pages of evidence to prove that the N mark, although a simple letter, has accumulated high distinctiveness and reputation in China through long term use and marketing.
The decision made by the highest judicial authority in China has confirmed, once and for all, that New Balance’s N mark has gained enough distinctiveness and reputation in the Chinese market, and should be respected by the other players in the same industry. This will clear the major barrier for numerous pending litigations brought by New Balance against several other copycats in China, including a recent first instance decision made by a court in Suzhou awarding New Balance USD2.5 million damages, the highest ever awarded to a foreign brand owner in China.
“This is definitely a milestone win for New Balance as we have been fighting those parasite brands in China for over a decade.” Said Mr. Dan McKinnon, senior counsel and global IP head at New Balance. “The decision made by the Chinese Supreme Court recognizes the distinctiveness and well-known status of our signature N mark among the local consumers in China. This is an ultimate defeat against the copycats. We are confident that we will win all of the pending lawsuits and get reimbursed of all of our legal costs we’ve paid for the war against copycats in China.”
New Balance has been fighting with copycat shoemakers in China for many years. A typical trick played by those copycats is that they file trademarks somewhat similar to New Balance’s signature N mark, but different enough to go through the registration and opposition procedures, and they would change color or design of the registered marks and make them look like the N mark when they actually use the marks on shoes. They would argue that New Balance’s mark is just a simple letter and not distinctive enough when they are sued for trademark infringement. New Balance has to submit thousands of pages of evidence to prove that the N mark, although a simple letter, has accumulated high distinctiveness and reputation in China through long term use and marketing.
The decision made by the highest judicial authority in China has confirmed, once and for all, that New Balance’s N mark has gained enough distinctiveness and reputation in the Chinese market, and should be respected by the other players in the same industry. This will clear the major barrier for numerous pending litigations brought by New Balance against several other copycats in China, including a recent first instance decision made by a court in Suzhou awarding New Balance USD2.5 million damages, the highest ever awarded to a foreign brand owner in China.
“This is definitely a milestone win for New Balance as we have been fighting those parasite brands in China for over a decade.” Said Mr. Dan McKinnon, senior counsel and global IP head at New Balance. “The decision made by the Chinese Supreme Court recognizes the distinctiveness and well-known status of our signature N mark among the local consumers in China. This is an ultimate defeat against the copycats. We are confident that we will win all of the pending lawsuits and get reimbursed of all of our legal costs we’ve paid for the war against copycats in China.”
“The decision sends a very strong message to the public that China is enhancing protection on intellectual property right to a new level. This is also a good sign that the government is taking real actions after the phase one Trade Agreement between China and the US was signed in January.” commented Ms Angela Shi, senior brand protection at New Balance China. “We are hoping that the copycats will get the message and stop attacking our brands, otherwise they will have to pay a very high price.”
By: Jason Yao