‘An important moment in Chinese IP litigation’ – Burberry celebrates trademark infringement win in ‘key market’

The Baneberry brand sold products infringing the luxury retailer’s IP in pop-up shops and online

Luxury retailer Burberry has celebrated an award of RMB 6m (£675,668) in damages by a Chinese court for trademark infringement and unfair competition in what its outside counsel described as “an important moment in Chinese IP litigation”.

A second instance judgment handed down by the Jiangsu Provincial High People’s Court, upheld Burberry’s earlier preliminary injunction in 2021 against the defendant Xinboli Trading Shanghai, owners of the BANEBERRY trademark.

Burberry, represented by Chinese law firm Lusheng, proved that Xinboli Trading Shanghai sold and advertised products using Burberry’s protected checked graphic trademarks on e-platform Tmall and social media app WeChat, along with the trademark BANEBERRY and a registered logo resembling Burberry’s Equestrian Knight design. 

Although the judgment was delivered in October, this is the first time the UK luxury brand has commented publicly on it. Amily Chen, managing IP counsel at Burberry, said: “China is home to one of the largest luxury goods markets globally, making it a key market for Burberry. Upholding our brand reputation in China is critical.”

The infringer had sold the counterfeit products in its network of more than 40 pop up stores across the 12 months of operational activity.

Lusheng noted that over a two-year period, 5,000 pages of evidence were collected where the damages were calculated by the total number of infringements, level of malicious intent and the severity of the infringement.

It was found that Burberry’s trademarks were well known in China when the accused’s trademarks were applied for in 2006 and 2009.

Well-known trademarks are marks that are universally recognisable by the general public and are widely renowned. These marks enjoy wider protection under trademark law in China.

The court also found that the trademarks used by the defendants were registered in bad faith.

Alice Yu, lead attorney at Lusheng, said that the case marks “an important moment in Chinese IP litigation. Strategically, it shows how well positioned China is for temporary injunction protection and combating malicious trademark registrations, and it signposts confidence in China’s judiciary”.

Chen added: “Thanks to Lusheng’s skill and commitment to local enforcement, we’ve been able to maintain a high level of protections on our brand.”  

Long thought of as a hotbed of counterfeit activity, foreign brands are enjoying more success enforcing their IP rights in China. In 2022, luxury shoe brand Manolo Blahnik won a 22-year legal battle in the country allowing it to use its own name, paving the way for further expansion in the region.

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