Burberry, the iconic British luxury fashion brand, has been awarded 6 million RMB in damages by the Jiangsu High Court in China. This legal win comes after Burberry’s long-standing battle against trademark infringement and unfair competition by Chinese companies Shentu Clothing Shanghai and Xinboli Trading Shanghai.
Both companies were found to have infringed upon Burberry’s well-known trademarks by selling clothing and related goods under the similar trademark “BANEBERRY,” which was intended to imitate Burberry’s branding and mislead consumers.
The court’s decision recognized Burberry’s trademarks as well-known marks, recognized by the relevant consumers in China due to their long-standing use, extensive advertising, and solid market reputation. Consequently, these trademarks were classified as well-known marks before the registration date of the competing "BANEBERRY" trademark.
Additionally, the court acknowledged that while the disputed "BANEBERRY" trademark and Burberry's trademarks were in the same product class, protection for well-known registered trademarks extends beyond identical or similar goods. Furthermore, unregistered, well-known trademarks are protected when used on similar or identical goods. According to Article 45 of the Trademark Law, the owner of an earlier right or an interested party can request cancellation of a registered trademark within five years of its registration if it infringes upon the provisions of Article 13. However, this five-year limit does not apply to well-known trademark owners when registered in bad faith.
Lastly, the court found that using "BANEBERRY" in-store signage for selling clothing and related products was a deliberate attempt to imitate Burberry's well-known trademarks. This misled consumers and constituted trademark infringement. Therefore, the violator must cease the infringement and provide compensation for any damages incurred.
The ruling is part of a growing trend in Chinese jurisprudence that sees higher damages awarded for trademark infringement cases, signaling stronger enforcement of intellectual property rights in the country. This outcome compensates Burberry for its economic losses and reinforces the importance of protecting well-known trademarks against bad-faith registrations and infringement in China.
