China has long been a challenging territory for trademark enforcement, especially for foreign brands. However, cases involving Burberry, Manolo Blahnik, and Moncler have significantly influenced the country’s trademark protection framework. These cases illustrate the strengths and the ongoing limitations of China’s trademark system, particularly the ‘first-to-file’ principle. While foreign brands are now better able to defend their trademarks, these cases highlight the importance of careful planning when entering the Chinese market.
Burberry’s Trademark Infringement Case
In 2023, Burberry won a case against Xinboli Trading Shanghai, which had sold counterfeit goods under the “BANEBERRY” mark, mimicking Burberry’s iconic check pattern and Equestrian Knight logo. The Jiangsu Provincial High People’s Court awarded Burberry RMB 6 million in damages, a noteworthy ruling in the context of trademark enforcement in China.
Burberry secured a favorable ruling from the Jiangsu Provincial High People’s Court, which recognized Burberry’s marks as “well-known.” This legal status in China allows stronger protections, particularly in cases where competitors act in bad faith. The decision reinforces China’s stance on upholding trademark rights for well-known foreign brands.
Manolo Blahnik’s Trademark Battle
Manolo Blahnik’s long-standing trademark dispute in China provides insight into the challenges posed by China’s first-to-file system. In 1999, a Chinese company registered “Manolo & Blahnik,” preventing the luxury shoe brand from using its name in the market. Despite Manolo Blahnik’s previous use of the trademark internationally, the company faced years of legal hurdles to reclaim its name.
In 2022, the Supreme People’s Court ruled in favor of Manolo Blahnik, concluding that the original registration was made in bad faith. This decision was possible because of the 2019 reform that allowed challenges against bad faith filings. Manolo Blahnik’s case illustrates the need to act quickly to protect trademarks in China and offers a reminder of the risks associated with the first-to-file system, which can leave well-known foreign brands vulnerable to trademark squatters.
Moncler’s Fight Against Counterfeiting
Moncler, which has actively pursued counterfeiters in China, secured a victory in the Hangzhou Intermediate People’s Court. The court awarded Moncler RMB 4.7 million in damages from three companies that used the Mengking brand to produce and sell counterfeit Moncler products. These companies copied Moncler’s distinctive “M” logo and red and blue color scheme to deceive consumers.
Moncler initially sought to invalidate the infringing trademarks through China’s National Intellectual Property Administration (CNIPA). Following this, Moncler filed a civil lawsuit seeking compensation for trademark and copyright violations. The Zhejiang High Court upheld the lower court’s ruling, emphasizing Moncler’s commitment to aggressive brand protection. Over the years, Moncler’s strategy has led to the removal of hundreds of counterfeit websites, the removal of tens of thousands of fake listings on e-commerce and social networking sites.
Conclusion
The cases involving Burberry, Manolo Blahnik, and Moncler illustrate both the progress and challenges in China’s trademark system. While China has made strides in improving trademark protection, particularly for well-known marks, the first-to-file system continues to pose challenges, especially for foreign brands entering the market.
Chinese courts are open to claims of “bad faith” in cases where brands can exhibit strong ties and reputations. But such victories do not guarantee continuous protection. As China continues to be a major market for luxury goods, brands must take proactive steps by filing early and monitoring closely for potential infringement.
For foreign brands, understanding China’s trademark registration system, enforcing rights, and responding to infringements are critical components of long-term brand protection strategy in the region. While the system is improving, it remains essential for brands to be aware of the nuances of Chinese trademark law and act quickly whenever necessary to safeguard their intellectual property.
Sources:
https://www.lexology.com/library/detail.aspx?g=caae9474-ee01-40eb-92c3-6edbf7c53300
Image Courtesy: Burberry, “Burberry Reveals Chinese New Year 2021 Campaign,” Burberry PLC
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