Rouse's strategic partner, Lusheng has helped its client, iconic British luxury goods company, Burberry Limited win a significant trade mark infringement case in the Jiangsu Provincial High People's Court.
The second-instance judgment upheld Burberry's previous injunction case in China, prohibiting the use of the defendant's trade mark registered for more than five years by rendering well known trade mark protection and awarding RMB 6 million in damages.
The infringer, “Xinboli Trading Shanghai”, sold and advertised products using Burberry’s protected checked graphic trade marks on Tmall and WeChat, along with the trademark ‘Baneberry’ and a registered logo resembling Burberry’s iconic Equestrian Knight design. It also utilised its wide-spreading network of over forty pop-up stores over the course of 12 months to further amplify the infringing activities.
Damages were calculated by considering the total number of infringements (deduced using retail receipts from the alleged infringing stores), the level of malicious intent and the severity of the infringement. As a result, twice the punitive damages were applied in this case.
This builds on the ruling from the court of first instance where Burberry was awarded an interlocutory injunction to temporarily prevent infringers from expanding irreparable damage, whilst litigation continued.
Across the two years, Lusheng case attorneys expertly collected and submitted over five thousand pages of evidence on behalf of Burberry to highlight that Burberry’s trade marks have been well-known in China when the accused trade marks were applied for registration in 2006 and 2009 year respectively, and the infringers’ trade mark registration applications were in bad faith from the registration, circulation and actual use of the accused trade marks. This was done by highlighting Article 45 of the Trademark Law of the People's Republic of China.
Alice Yu, Lead Attorney at Lusheng commented on the case: “This case marks an important moment in Chinese IP litigation. Strategically, it shows how well positioned China is for temporary injunction protection and combating malicious trademark registrations, and it signposts confidence in China’s judiciary. We’re seeing that seeking civil litigation and even interim injunctions are increasingly becoming a way for brands to resolve bad faith trademark squatting in China. We’re proud to have helped Burberry protect its brand equity from further disruption.”
Amily Chen, Managing IP Counsel at Burberry added: “China is home to one of the largest luxury goods markets globally, making it a key market for Burberry. Upholding our brand reputation in China is critical, and thanks to Lusheng’s skill and commitment to local enforcement, we’ve been able to maintain a high level of protections on our brand.”
The decision comes at a time when China has improved its laws on the issue of bad faith trademark squatting, and the Supreme People's Court of China has successively issued judicial interpretations to guide local courts how to apply the law.