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New Balance trademark case in China

Why New Balance’s Trademark Infringement Victory in China is a Big Deal

Category: Trademark Information

Since joining the World Trade Organisation in 2001, China has been trying to strengthen its trade mark laws. China has been making its laws stricter to respond to widespread trade mark infringement in China. Chinese companies who violate trademark laws are charged with a maximum statutory amount of $75,000. This value was before China passed a new trademark law in 2014. Currently, there is new legislation that increased the amount to $450,000.

New Balance’s Trademark Infringement Case

New Balance shoes have been sold in the Chinese market since 1995. Continuously, the sales of sports equipment has boomed in the Chinese market. As sales increased, several domestic companies started producing their own sports products that arguably copied foreign companies.

Recently, three domestic companies violated trade mark laws by copying New Balance’s trade mark slanted ‘N’ logo. Specifically, New Boom, New Bunren and New Barlun were charged with $1.5 million, which is almost 10 million Yuan in legal costs and damages. This is the biggest sum ever awarded to a foreign company in China. This court ruling was issued three days after President Trump requested an investigation of theft of intellectual property in China.

Effects of New Balance’s Trademark Infringement 

New Balance’s incredible victory is a good sign for other foreign brands that have complained that the Chinese government has not done much in protecting their brands. According to Carol Whang, a lawyer who represented New Balance, the trademark infringement case conveyed a strong impression to foreign brands that are selling their products in China. Without a lawsuit being filed, the three domestic companies would just continue to produce fake products that violate trade mark laws.

Similar to the case of New Balance, Michael Jordan won a trademark case in 2016 against a Chinese sportswear company for using his name in Mandarin without his consent. With intellectual property laws in China becoming stricter and new strategies being developed to ensure that domestic companies do not violates trade mark law, foreign trade mark owning companies have more confidence that infringement of their brands can besuccessfully successfully challenged in Chinese Courts.

New Intellectual Property Protection Strategies

Paolo Beconcini, the senior global brand protection consultant at Squire Patton Boggs, stated that current legislative reforms have considerably enhanced brand protection in China. Beconcini has worked on Chinese intellectual property cases for 15 years of his legal career. He stated that the changes in brand protection include new punitive damages for repeat infringers, four specialised intellectual property courts and a higher threshold for statutory damages.

What happens now to New Balance in China?

The outcome of New Balance’s case has made the Chinese government revisit their laws and strategies for intellectual property. Daniel McKinnon, New Balance’s senior counsel for intellectual property, stated that New Balance has confidence in their strategies on intellectual-property protection in China.

The company is to become stricter with domestic companies that sell similar sports products in China. With new trade mark laws being strengthened, it is highly possible that other foreign companies that sell their products in China will reinforce their intellectual property rights with the help of the Chinese government.

About Pinnacle TMS

Suzanne Harrington, an Australian trade mark specialist, is the proud owner of Pinnacle TMS. We are a boutique trade mark services company that has over twenty years of experience in brand protection by trade mark registration, both in Australia and overseas. If you need help with trade mark registration and trademark portfolio management, call +61 2 9520 4366 or send them a message on our website contact page.

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Logo Wars: How Under Armour Won Against Uncle Martian

Category: Trademark Information

Trademark fights are not new in China. In fact, Apple, New Balance and Sulbing are just a few amongst a number of international brands that have gone to court against Chinese businesses in the past.

Under Armour, a renowned American sportswear brand recently found itself in a year-long legal battle against a company based in Fujian, because of a trademark issue regarding their logo.

Something Borrowed

Tingfei Long Sporting Goods, Inc. is a growing sports shoe manufacturer in southeast China. The company recently debuted a line of athletic apparel and footwear under the name ‘Uncle Martian’ with an accompanying logo to boot. While the name itself may not ring any bells, the logo used to represent the collection had an uncanny resemblance to that of Under Armour’s, their biggest competitor.

Under Armour’s logo has a distinct and creative image of the letter ‘U’ intersecting a mirrored version of the character, which is then stylised to form the letter ‘A’. ‘Uncle Martian’ uses similar imagery, but the two characters do not touch. Those who would compare the two logos would agree on the similarity, specifically the font choice, the colour scheme and the positioning of the characters.

The use of the Laurel Wreath by ‘Uncle Martian’ was also reminiscent of Fred Perry’s logo. Fred Perry is a famous UK brand founded by Fred Perry, a triple Wimbledon champion. Since 1952, the brand has been a favourite amongst tennis players and British youth subcultures alike.

Beyond the Picture

Uncle Martian’s transliterated Chinese name, with a phonetic reading of ‘an-ke-ma-ding’, is also quite similar to the Chinese brand name of Under Armour, which is pronounced ‘an-de-ma’.

Tingfei Long heavily denied all allegations from the American brand. Huang Can Long, its General Manager, stated that the brand only aims to be known for ‘comfort, excellence and innovation’. In an interview with Shoes.net.cn, Huang Can Long claimed that he wanted nothing more than to create a high-profile brand with ‘high standards.’

Inciting Rifts

Under Armour dismissed the statement of its legal opponent. In 2016, Under Armour’s spokesperson Diane Pelkey said that the brand was unamused about the infringement and was willing to pursue ‘all business and legal courses of action.’

Even on social media, people were not pleased with the creative decisions of Tingei Long.

‘How come you can’t even design a logo?’ asked a critic on Weibo, a Chinese social media platform. ‘All you do is plagiarise – don’t you feel it’s disgusting?’

Another Chinese user said: ‘Don’t blame people when they say they look down upon domestic brands.’

The Victory

Early in August 2017, the People’s Higher Court of Fujian Province finally ruled the case in favour of Under Armour. Tingfei Long Sports Goods, Inc. owes 2 million yuan in damages to the American footwear brand and was given an order to permanently halt the use of the logo.

Danny Awdeh, lead counsel for Under Armour, called the ruling ‘a very positive story for trademark owners.’

While there have been many disputes regarding trademark rights, the Under Armour case is a good example of how those fights can, indeed, be won.

Seek the Expertise of Professionals

For more questions about trademark applications and laws, contact Pinnacle TMS at pinnacletms.com.au to schedule a consultation with us. You can also send us an email at info@pinnacletms.com.au or call us on +61 2 9520 4366.

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UK Courts Refuse to Trademark KitKat’s Shape

Category: Trademark Information

Nestle has lost yet another round of its long-running battle to trademark the KitKat design in the UK. While the word ‘KitKat’, its packaging and the slogan ‘Have a Break’ have been registered as trademarks in the UK, the shape of the chocolate itself does not.

The confectionery multinational first attempted to trademark the shape of its chocolate in 2010 but was promptly thwarted by Cadbury. Both companies have been in an ongoing dispute over trademarks since Nestle opposed Cadbury’s attempts to trademark the purple colour used in the packaging for Dairy Milk.

To qualify for registration, trademarks have to be distinctive. The Court of Appeal ruled that the design of KitKat was not ‘distinctive enough to warrant a trademark’ and to allow it would not comply with European law.

Trademarking Shapes and Colours

Trademarks are commonly names, logos and sound pertaining to specific goods and services. Trademarking colours and shapes is more complex and in many cases, have been unsuccessful. Such was the fate of companies like Lindt, which lost the bid to trademark its chocolate bunny wrapped in gold foil, and Rubik, which failed to win EU trademark protection for its cube-shaped puzzle. Nestle blocked Cadbury’s efforts to trademark the specific shade of purple for Dairy Milk.

The results, however, weren’t as bad for products like Toblerone, whose triangular shape is presently trademark protected. Coca-Cola also succeeded in claiming exclusive rights to its curvy, contoured glass bottle in 1980.

The question is, where did Nestle fail and why did Toblerone win?

Nestle: What Went Wrong

The UK court motioned that KitKat’s design, marked by rectangular bars with breaking grooves, was not distinctive enough.

The latest ruling stated that the four-finger design had ‘no inherent distinctiveness’. While the public may associate the shape with KitKat, it does not mean that consumers perceive the shape as a ‘badge of origin’ that they can use solely to identify the product and its source.

The consumers may simply regard the shape as a characteristic of the product, which would aid in recognition. The shape may also remind them of the brand name that is already familiar to them.

This type of recognition and association is insufficient to reflect the product’s inherent distinctiveness for trademark purposes. Moreover, the court expressed that if Nestle had a monopoly of the four-finger shape, it would be unfair to other confectionaries, since Nestle had never advertised KitKat for its shape alone.

Another argument raised is the existence of a chocolate bar called Kvikk Lunsj, a Norwegian product that has been present since 1937. It uses the same four-finger design and is nearly identical to KitKat. Kvikk Lunsj is also owned by Modelez, the parent company of Cadbury.

Toblerone: What Went Right

The Toblerone shape is pivotal to the company’s advertising, which emphasises the use of triangular honey from triangular bees. Meanwhile, Coca-Cola’s bottle was so prominent in its ads that people could identify it as a Coke bottle without the label. In both brands, the shape is utilised directly as a selling point – which Nestle has failed to do.

The ruling against KitKat shows that shape marks will be increasingly harder to obtain, as more brand owners push the boundaries to get as much protection as possible. Trademarks can potentially last for as long as the brand is alive, so for many companies, they are a truly significant measure of protection.

Let Us Help

At Pinnacle TMS, we recognise the stress and challenges involved in trademarking a brand, whether it’s a business name or product name or logo.   That’s why we are here to help. Our trademark specialists will take the hassle and headache out of the process and lead you through the maze that trade mark registration can be.

For any enquiries regarding the trademark registration process or our services, call +61 2 9520 4366 or email info@pinnacletms.com.au.   You can also book a consultation via our website for a time to suit you today.

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IKEA’s Trademark Suit Loss Against Aikya Global: What Really Happened?

Category: Trademark Information

Trademarks have always been a cause for concern amongst corporations and start-up companies alike. Recent news swept the trademark industry in India when a district court in New Delhi dismissed a violation case filed by IKEA against Bengalaru-based consulting company Aikya Global.

IKEA is a well known multinational company and one of the world’s largest home retailer, producing ready-to-assemble furniture and kitchen appliances. Aikya Global, on the other hand, is a growing private consulting and service organisation that partners with businesses from all over the world.

The case involved a suit that accused Aikya Global of allegedly coming up with a brand name with phonetic resemblance to that of the Swedish retailer. Although there were scarce statements from both parties, the lawsuit was a controversial case in India.

Boiling Trademark Concerns

This was not the first time IKEA made headlines regarding trademark issues.

Back in 2013, IKEA took legal action over more than a handful of Indian companies, which included human resources firm Ikya Human Capital Solutions and the aforementioned Aikya Global. The multinational retailer was fearless in challenging the companies in court over trademark infringement, receiving ex parte injunction against them.

The allegation stated Aikya had ‘copied and imitated’ the retailer’s trademark and, according to the legal documents, the result was ‘deceptively similar’ to IKEA. While Aikya Global had initially surrendered to the lawsuit and amended their name to Ajira Global, the New Delhi court had taken back the injunction in June 2015 and ruled in favour of the local company.

Causing Conflict

IKEA sees the market in India as crucial to its growth and development, as does many other companies wishing to take advantage of the potential in India. A government approval for the largest foreign direct investment in single brand retailing was granted to the company, allowing them to set up 25 more large stores, each carrying thousands of furniture pieces. The estimate for the investment was around Rs 10,500 crore.

The Swedish retailer had plans to open its inaugural store in Hyderabad later in 2017, while another branch was in the works for Mumbai. The dismissal of the case comes at a critical time and could have some impact upon the agreed trade and investment deal between Ikea and the Indian government. However it may be the case that a resolution has already been agreed between the parties involved and that the court’s ruling is now a moot point.

The Importance of a Trademark

This incident is just one of many high profile trademark disputes and just goes to show that a trademark is more than just stamping your business with a branding iron. Whether you own a start-up company or a long-term venture, securing your trademark not only provides ownership of a brand but is one of the most effective and valuable marketing tools for businesses both in Australia and around the world.

If you have questions about the trade mark registration process or require professional assistance in pushing your trademark application forward, find out how Pinnacle TMS can help you. Visit Pinnacle TMS at pinnacletms.com.au to book a consultation. You can also email us at info@pinnacletms.com.au or call +61 2 9520 4366.

Trump’s Trademark Triumph

Category: Trademark Information

Donald Trump may have won the election but that is not the only thing that he has won lately.

 Trump has recently been awarded 38 new trademark registrations in China.

 The Chinese trademark system doesn’t require any evidence that the applicant owns that trademark or have used it previously. They employ a “first to file” system in which the first person to file a trademark application has priority.

 This now means that Trump has more than 100 trademarks in China, including 35 that were approved before he became the US president.

 This recent approval of Trump trademarks from China has raised some eyebrows with Senator Ben Cardin even accusing China of “trying to curry favour with the president of the United States.”

 Dan Plan, a director at Simone IP Services, has also commented, “For all these marks to sail through so quickly and cleanly, with no similar marks, no identical marks, no issues with specifications – boy it’s weird.”

 However, China’s foreign ministry spokesman Geng Shuang objected to these claims, stating that every trump Trademark was received and managed “in accordance with the law and regulation.”

 Spring Chang is a founding partner at Chang Tsi & Partners, a Beijing law firm that has previously represented the Trump Organisation has refused to comment specifically on Trump’s trademarks but she added, “I don’t see any special treatment to the cases of my clients so far.

 “I think they’re very fair and the examination standard is very equal for every applicant.”

 There are currently no plans for Trump to launch new products or services using the trademarks. Rather, this appears to be a defensive move to protect his brand and intellectual property in China.

 Several of our Australian clients have had us file applications for their brands in China and we are hoping for the same results as Donald Trump’s applications.