Recently, the Jiangsu High Court concluded a trademark infringement and anti-unfair competition lawsuit between Burberry Limited ("Burberry"), Shentu Clothing (Shanghai) Co., Ltd. ("Shentu"), Xinboli Trading (Shanghai) Co., Ltd. ("Xinboli"). The court recognized the "BURBERRY" trademark with reg. no. G733385 and the "Burberry Equestrian Knight Design" trademark with reg. no. 781602 (together as "Cited Marks") constituted well-known marks on clothing and other goods. The defendant had infringed upon Burberry's trademark and its acts constituted unfair competition. The defendant shall compensate Burberry for economic losses of RMB 6 million (USD 836,120).
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The court found that, first, based on the sales regions and
circumstances, the duration of continuous use, the publicity
method, duration, extent, geographical scope, and the market
reputation of the Cited Marks, it was sufficient to conclude that,
before the application date of the allegedly infringing trademark
"BANEBERRY" ("Disputed Mark"), Burberry's
Cited Marks were widely known to the relevant public in China and
were well-known marks.
Second, although the Disputed Mark and the Cited Marks were approved in the same class, for registered well-known trademarks, the scope of protection extends to marks filed on unidentical or dissimilar goods. For unregistered well-known marks, the scope of protection extends to marks filed on identical or similar goods. Article 45 of the Trademark Law stipulates that if a registered trademark violates the provisions of Article 13 of this Law, within five years from the date of registration of the trademark, the owner of the prior right or the interested party may request the Trademark Review and Adjudication Board to decide to revoke the registered trademark. For registration in bad faith, the owner of a well-known trademark is not subject to the five-year time limit. In this case, based on the fact findings, Burberry's Cited Marks were not limited by the said five-year time limit.
Third, given that the Cited Marks are well-known marks registered in Class 25 for clothing and other goods, and the Disputed Mark was widely used in the signage of stores selling clothing and related goods, which constituted as bad faith copy and imitation of Burberry's well-known Cited Marks and misled the relevant public, constituted trademark infringement, and should bear civil liability to stop the infringement and compensate for losses.
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