You’ve invested time and money in building your brand, eventually it’s gained traction in your home market. Everything is looking upwards and now you are eyeing other countries to establish your brand’s presence. To your surprise, someone in another country has registered a trade mark very similar to your brand. In your eyes, they are blatantly selling copycats of your service / products.
How do we solve this?
The case of New Balance vs New Barlun in China provides some answers on how to handle situations like this. The case was particularly difficult because the copycat filed their application in 2004 long before China had taken off as a major market for foreign brands.
Timeline of the case:
As a result of New Barlun registering so far back, it took New Balance over 5 years to invalidate the infringement registered trade mark which was held by New Barlun.
The reasoning of “insufficiency of evidence” reoccurred as an issue for New Balance. It is important to note the disputed trade mark was filed in March 2004, during a period where sportswear brands relied heavily on text-based advertisements in newspapers. Online shopping was not common in China at that time, shopping malls were still the major sales channel.
The evidence submitted by New Balance showed that before March 2004, the market in China was flooded with counterfeit New Balance shoes. New Balance took enforcement actions towards these infringements including customs enforcement and a range civil litigation. All these actions, combined with presenting further evidence (including evidence demonstrating that the well-known mark influenced the infringer), established the well-known status of the “N” mark owned by New Balance.
The rights of a registered trade mark and the prior rights of well-known mark are two independent intellectual property rights. The former is authorized by an administrative body while the latter depends on the reputation in the market in China. These two rights have different scopes of protection, duration and essential requirements for brand protection.
It’s crucial to understand these two nuances in China, as they are key to the protection of your brand in this important market.
Get insight and professional advice on the common issues and concerns businesses need to understand and may be facing when entering into China: