On February 19, 2021, the Suzhou Intermediate People’s Court announced it had awarded a preliminary injunction to Burberry against Xinboli Trading (Shanghai) Co., Ltd. (新帛利商贸（上海）有限公司), owner of Chinese brand Baneberry, for trademark infringement. Burberry is an iconic British fashion brand founded in 1856 while Baneberry is a fast-growing Chinese brand with 40 physical stores opened in China in the last year and a half.

 

The Court explained:

The plaintiff’s right trademark “BURBERRY” and logo  are well-known to consumers in the Chinese market, and it is objectively possible to be recognized as a well-known trademark.  Although the alleged infringing marks “BANEBERRY” and logo  are also registered trademarks, the alleged infringement in this case may be identified as malicious duplication and imitation of the well-known trademarks involved, and may constitute trademark infringement.

Meanwhile, the allegedly infringing products widely used patterns are also suspected to constitute infringement of the the plaintiff’s patterns  which are trademarks. In addition, Baneberry declared that the brand “originated in Jermyn Street, England, and its most symbolic ‘British lattice’ is a classic element in the fashion industry ” and other marketing pronouncements.  The above behaviors are also likely to be deemed to constitute unfair competition.

It should be pointed out that the infringing trademarks “BANEBERRY” and  are both registered trademarks, but the two trademarks were approved for registration in December 2009 and August 2011 respectively. Before the registration date of the two trademarks, Burberry’s “BURBERRY” and  were already well-known. Existing evidence from this case shows that the alleged infringing trademark holders used the same special font as the BURBERRY brand to mark their “BANEBERRY” trademark, and used it in parallel with the  or the same or similar patterns, resulting in actual confusion.

The Court further stated the injunction was urgent because Baneberry and Burberry sell in similar sales channels (mall, outlets in first and second tier cities such Shanghai, Nanjing, Hangzhou, etc.) that overlap the least to confusion.  Further, Baneberry is increasing selling via online channels. This has lowered Burberry’s market share, “weakening the distinctiveness and recognizability of its well-known trademarks. Based on the possibility of infringement of the accused act and the above-mentioned situation, the injunction is of real urgency.”

The Court states the necessity of the injunction outweighs the disadvantages.  From the perspective of the balance of interests, the plaintiff Burberry is the right holder of the internationally renowned brand “BURBERRY”. After a century of intensive cultivation, the brand has gained a high reputation, its rights status is stable, and some trademarks have long been recognized. Based on the facts, there is likely to be a finding of infringement. The possible damage to the defendant caused by the injunction is controllable. Failure to issue an injunction may cause irreparable damage to the plaintiff and cause a lot of confusion and misunderstanding among consumers.

This the injunction will safeguard the public interest.  From the perspective of social public interest, the alleged infringing product is clothing. As a general consumer product, consumers will only pay general attention when purchasing. IF the alleged infringement is allowed to continue, it will not only easily cause consumers to misidentify and wrongly purchase products, it will also involve a large number of third-party shopping malls, e-commerce platforms, etc., consuming unnecessary public resources. Evidence from this case shows that the alleged infringement has actually triggered a large number of consumer complaints. Therefore, ordering the defendant to stop the relevant actions is conducive to maintaining the normal market transaction order and the rights and interests of consumers.

Finally, the Court stated that the plaintiff provided a guarantee, the amount of which was not disclosed. Accordingly, the Court issued an injunction to stop using the infringing trademarks and related marketing.  The trial is still underway and not final ruling has been made. While permanent injunctions are common in China in intellectual property infringement cases, preliminary injunctions are much rarer although increasing.

Source: China IP Law Update