In April 2015, the Guangdong Intermediate People's Court
delivered a judgment against New Balance, an American footwear
manufacturer, for trademark infringement. New Balance was found to
have used, knowingly and without prior authorization from the
trademark owner, the mark "新百伦"
(pronounced Xin Ba Lun, a Chinese transliteration from the English
word "New Balance") in connection with offers for the
sale of New Balance shoes on Chinese online platforms.
The US company argued that it was not liable for infringement
because Xin Bai Lun is simply a direct transliteration of "New
Balance". However, the Court rejected that argument, mainly
because other transliterations of that term would have been
available. The Court found that New Balance's continual use of
the mark "新百伦", despite having
knowledge of its registered status, constituted bad faith
The most commented aspect of the New Balance case is perhaps the
fact that it resulted in the largest damages award in the history
of trademark infringement in China (USD 15.8 million), which
illustrates the importance of the "first to file"
principle in China. Unlike other jurisdictions where the
registration of a trademark depends on and must be coupled with
evidence of use, the trademark registration system in China is a
"first to file" system. Whoever is the first to obtain
trademark approval in China, owns the rights in the trademark, even
if the successful registrant turns out not to be the official
trader of the branded products or services.
Unfortunately, the majority of Chinese consumers do not speak a
foreign language. By necessity, Chinese consumers will, sooner or
later, devise their own Chinese version of a foreign brand instead
of referring to the original Latin script. The failure to register
a Chinese character trademark in time can, thus, have severe
consequences on the marketing of global brands. One Latin script
mark can yield different versions of Chinese character marks, all
with the same pronunciation, so consumers will inevitably be
confused by the existence of multiple Chinese versions of one's
The New Balance case serves as an important reminder for any
foreign brand owners with plans to trade in China to act early, and
the sooner the better. Where no official Chinese version of a mark
has been devised, in order to retain control of one's brand
within the Chinese market, companies should adopt and
register an official Chinese mark that appropriately reflects
their brand before the Chinese public creates its own version. To
avoid confusion between an official Chinese mark and the multiple
renditions that inevitably already exist in the market, foreign
brand owners should adopt consistent and distinctive marketing
strategies of their registered Chinese mark. Use of any trademark
without registration can result in undesirable consequences.
Mayer Brown is a global legal services organization
comprising legal practices that are separate entities (the Mayer
Brown Practices). The Mayer Brown Practices are: Mayer Brown LLP, a
limited liability partnership established in the United States;
Mayer Brown International LLP, a limited liability partnership
incorporated in England and Wales; Mayer Brown JSM, a Hong Kong
partnership, and its associated entities in Asia; and Tauil &
Chequer Advogados, a Brazilian law partnership with which Mayer
Brown is associated. "Mayer Brown" and the Mayer Brown
logo are the trademarks of the Mayer Brown Practices in their
This article provides information and comments on legal
issues and developments of interest. The foregoing is not a
comprehensive treatment of the subject matter covered and is not
intended to provide legal advice. Readers should seek specific
legal advice before taking any action with respect to the matters
discussed herein. Please also read the JSM legal publications
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
The Policy stresses on the need for a holistic approach to be taken on legal, administrative, institutional and enforcement issues related to IP.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).