Burberry has been battling trademark squatters and infringers for a long time now in China. Two of the big squatters and infringers are the Chinese companies Shentu Clothing Shanghai and Xinboli Trading Shanghai.
These companies used similar trademarks to imitate the look and feel of Burberry clothing and related goods.
They used their registered trademark BANEBURRY, in order to sell trademark infringing goods, so that both the name and the logo would infringe upon Burberry's rights. Even the shape of the tag and the packaging imitated the way Burberry would do this.
More than 40 shops in large shopping malls in mostly first and second tier Chinese cities. They also sold trademarks infringing goods on the big Chinese e-commerce channels.
In 2021, Burberry won its first injunction in China against these two Chinese companies at the Jiangsu Intermediate People's Court of Suzhou. As a result of the awarded injunction, these companies had to cease selling Burberry trademark infringing goods.
They also had to scratch the references to be originated form London's Jermyn Street (a famous tailor street), and other references to classic Britain and London. The court awarded the injunction to immediately cease these activities as the scale of the infringement was immense and the harm that would be done to Burberry by not stopping it immediately would be irreparable.
Fast-forward two years, and now in 2023, the Jiangsu High Court ruled that these two Chinese trademark squatters and infringers have to pay Burberry 6 million RMB damages for infringing the Burberry trademark and the Burberry knight design trademark.
The Chinese party Xinboli had registered BANEBERRY as its mark, and Shentu was its licensee.
As BURBERRY was deemed a well-known trademark, and thus gets protection for all 45 classes, the five-year limit of article 13 Trademark Law to revoke the registered trademark of the other party, hence does not apply. The damages of 6 million RMB were awarded as the well-known marks that BURBERRY has, were infringed on the goods where BURBERRY was the most famous for, i.e. clothing. This has also misled the relevant public.
This judgement fits in the recent Chinese jurisprudence that sees higher damages awarded for trademark infringement and anti-unfair competition law cases.
It is encouraging to see that foreign companies also receive damage compensation higher than before.
However, the damages awarded can still be higher in these types of cases, especially when compared to fully local cases. The above combination of an injunction first, and a compensation later, is a good way for right holders to enforce their rights in China.
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