16 February 2021
American sportswear brand New Balance has won a major legal battle against one of China’s most prolific and aggressive copycat brands, New Barlun, in its first instance trial. The compensation amounts to one of the largest sums awarded to an IP owner in the sports sector in the history of Chinese IP lawsuits.
The decision, handed down by the Shanghai Huangpu District Court on January 5, 2021, ordered New Barlun and Shanghai Shiyi Trade (the defendants) to pay New Balance damages of ¥25 million (US$3.85 million).
The court ruled that New Barlun and Shiyi’s manufacturing and distribution of shoes marked with the ‘N’ symbol constituted an infringement against New Balance’s trademark rights, as the logo was incredibly similar to the renowned original, both visually and conceptually.
The infringing products that generated large volumes of sales for the defendants were found to have benefited from New Balance “N” logo’s reputation and fame in China. They were also found to have acted in bad faith as the defendants failed to cease infringement even after the Court had issued an interim injunction order. Additionally, the court found that the distributor Shanghai Lusha should be held jointly liable for ¥100,000 (US$15,000).
The judgment has not yet taken effect and therefore the defendants have the right to appeal.
“It is very encouraging that the court has once again recognized the legitimacy of New Balance’s IP rights which will help ensure that our brand is safeguarded and protect our consumers’ interests,” says Dan McKinnon, senior counsel of IP and global brand protection at New Balance in Boston.
“This is not only a win for New Balance but for a wide range of international brands operating in China, as they continue to face the increasing threat of copycats on their business,” says Carol Wang, principal and head of Shanghai litigation group at Rouse. “The judgment further demonstrates China’s commitment to establishing a sophisticated and robust IP system that matches other leading countries and will be crucial in attracting international investment.”
In 2020, another judgment handed down by Shanghai Pudong District Court found that New Barlun’s use of the ‘N’ logo on the sides of its sport shoes constituted unfair competition. The court subsequently ordered the company to pay damages to New Balance of ¥10.8 million (US$1.54 million).
New Balance’s litigation counsel was Chinese law firm Lusheng, part of the Rouse network, which has acted for the company throughout its civil claim against New Barlun.
Johnny Chan
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