On May 13, Quality Brands Protection Committee of China Association of Enterprises with Foreign Investment (referred to as QBPC) successfully held the first "Membership Service Journey" of the year, Best Experience Sharing of New Balance. More than 90 representatives from more than 60 member companies attended the sharing meeting.
"We have learned that many QBPC member representatives had focused New Balance trademark case series as the hot spots. This sharing meeting is a very good chance for us. We have invited Ms. Qing SHI, Senior IP Manager of New Balance Athletics, Inc. (referred to as New Balance), to analyze the cases as the party." Mr. Ruiping Hao, Membership Service Committee Chair, said before the event, "this sharing session mainly focuses on the two cases, Administrative Retrial Decision on Qierte’s N Mark Made by the Supreme People’s Court and Appeal of Administrative Litigation regarding New Balance’s Invalidation Request against Trademark No. 3954764 Registered by New Barlun. These two cases have been selected as non-criminal cases of 2019-2020 QBPC Annual Top Ten Cases in IP Protection."
"In the five years since joined New balance, we have spent a lot of time and energy fighting against ‘Shanzhai’ brands." Qing said in the sharing, " The epidemic of bad-faith trademark filings (trademark squatters) has becoming a major problem for almost every famous brand operating in China. A typical trick played by those trademark squatters is that they file trademarks somewhat similar to an authentic brand, 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 more like the authentic brand and thus cause massive confusion to consumers."
During sharing, Qing vividly explained the specific handling process of each case, which is a wonderful story full of persistence and sweat. After the case introduction, Mr. Conan Chen, QBPC Best Practices/Enforcement Committee Chair, as the Commentator gave professional reviewers on the focus and evidence of the case and organize the attendees’ in-depth discussions and exchanges in jurisdiction, damage compensation, the company internal and external communication and coordination and other important legislative points. Mr. Jason Yao, the lawyer of the above cases, also provided professional sharing and answers to the questions raised by the participants.
The case "administrative dispute case of the supreme people's court's retrial and amendment of the trademark application of the letter N of kilter company" has generated a wide discussion on the similarity between the cited trademark and the trademark in dispute. Then, what are the criteria of trademark similarity? For this hot issue, Qing explained the four principles, namely that the general attention principle of the relevant public, the comparison principle of the whole plus the comparison principle of the main parts, the isolation comparison principle and the principle of significance and popularity. After the cancellation request, the first and second trials of the case, the company decided to apply to the Supreme People's Court for a retrial, Qing said. The Supreme Court decision has taken into consideration of the evidence of actual use in bad faith. In other words, if a trademark is registered and/or used with the attempt to side along with famous brand, even though it is not closely similar with the authentic brand, might be invalidated based on bad-faith principal. This significant decision made by the Supreme Court has increased the strength of authentic right holders to fight against copycats. The precedent can be used as a powerful weapon for tackling bad-faith trademark registrations.
According to Qing said, in the " Appeal of Administrative Litigation regarding New Balance’s Invalidation Request against Trademark No. 3954764 Registered by New Barlun ", in order to uproot such infringing activity and to remove the apparently legitimate cover of the infringers, New Balance initiated trademark invalidation procedures in parallel with civil litigations. The invalidation however proved to be a long and challenging journey, New Balance has consolidated overwhelming evidence concerning reputation of New Balance’s N decoration before 2004 and ownership of the prior copyright in the second instance. In July 2019, Beijing Higher People’s Court made the final decision, affirming that the “N” decoration applied on both sides of New Balance shoes had constituted decoration of influential goods before the year 2004, the application date of the disputed trademark. Therefore, the registration of the disputed trademark infringed the prior rights of New Balance’s “N” decoration. On April 26, 2020, Shanghai Pudong New District People's Court issued a judgment on the relevant civil litigation cases. In addition to the suspension of unfair competition behavior and the public statement to eliminate the impact, the opposite party New Barlun shall also compensate for the economic loss of 10 million yuan and the reasonable expenditure of rights protection of 800,000 yuan. It sounded a strong note calling for radical cleaning of market. In the meanwhile, it will strengthen the faith of foreign brand owners and consumers toward China’s IP protection environment.
As mentioned in Qing’s summary, the successful practice of IPR protection in the above cases is closely related to appropriate strategies, long-term investment, internal and external support of the company, as well as the protection of existing laws and regulations and the attention of social media. At the end of the conference, Ruiping stressed that the conference not only benefited a lot from the speaker's analysis of the cases, but also learned a lot of valuable experience from the professional comments and interactive discussions, so as to better carry out the coordination work in practice. QBPC Chair Mr. Michael Ding also stated that this kind of case experience sharing activities would continue to provide "nutrients" for members.
The Best Experience Sharing Meeting will be held every month after the selection of 2019-2020 QBPC Annual Top Ten Cases in IP Protection in April. Stay tuned! This activity will, as always, provide a platform for members to learn and share their experience in intellectual property protection. Through communication and interaction among members, members will learn about industry trends and explore multi-dimensional approaches to intellectual property protection, which is our goal and unremitting motivation.