New Balance, the US sports shoemaker, has had a tough time of it in the PRC IP courts over the last twenty years, in particular against Niu Ba Lun (China) Co., Ltd. and its predecessors (New Barlun), a serial Chinese copycat. A low point was perhaps in 2016, when the Guangdong Higher People’s Court had ruled against New Balance on an appeal against infringement claims by Zhou Lelun, the founder of Xin Bai Lun, regarding “新百伦” (Xin Bai Lun) and “百伦” (Bai Lun), the Chinese trade name being used by New Balance, since “新百伦” was neither a translation nor transliteration of “New Balance”.
However, New Balance has now succeeded in its long battles with New Barlun, when on April 16 2020, the Shanghai People’s Court awarded New Balance RMB10.8 million for its claim of unfair competition against New Barlun. New Balance claimed that New Barlun’s continued use of the italic “N” symbol, which closely resembles New Balance’s trademarked “N” symbol, amounted to unfair competition and had damaged New Balance’s reputation and goodwill. In its defence, New Barlun had argued that as the owner of its own registered italic “N” symbol trademarks, it was entitled to use and place its trade marks on its athletic shoes. However, the Court held that Chinese consumers have sufficiently associated athletic shoes decorated with an italic “N” symbol on both sides with New Balance through its long-term publicity and repeated use, making the “N” symbol a source of identification and a “commodity decoration with certain influence”. The Chinese Court took the view that in dealing with trade mark or decoration conflicts between different market entities, the principle of good faith should be followed. If a logo is similar to an earlier “commodity decoration with certain influence” and causes confusion, even if the logo is registered as a trade mark, it can be considered as violating the principle of good faith if it infringes on the previous rights and interests.
It is also worth mentioning that in December 2019, the PRC Supreme People’s Court ruled in favour of Michael Jordan in another sportswear related case against Qiaodan Sports. The Court considered that “乔丹” (the transliteration of “Jordan” in Chinese) has high popularity and is usually used in China to refer to Michael Jordan himself, beyond just the general Western surname Jordan. It said “乔丹” has a ‘stable’ (a lower standard than ‘unique’) connection with Michael Jordan and he should enjoy the name rights under Chinese law. It was held that Qiaodan Sports had maliciously registered “乔丹” as a trade mark and thereby violated Michael Jordan’s name rights and the principle of good faith.
Some of these successful recent judgments from China are now properly considering the “influence” and “popularity” of foreign brands and recognising the importance of the principle of good faith, even when there may be identical or similar trade marks that have been locally registered by others. It is to be hoped that the trend of these decisions to consider the important principle of good faith continues.
