On April 24, Guangzhou Intermediate People’s Court made a first instance ruling in favor of Mr. Zhou in a trademark infringement case against New Balance Trading (China) Co. Ltd (hereinafter New Balance China), the associated company of New Balance Company in U.S. The court found that the exclusive rights of Zhou’s trademark was infringed and New Balance China was ordered to pay a compensation of 98,000,000RMB.
New Balance China was founded in 2006, mainly responsible for the marketing of New Balance sports shoes in China. Chinese words “新百伦”(transliteration of New Balance) were used for advertising and marketing.
The plaintiff Mr. Zhou (hereinafter Zhou) claimed that “百伦” was first applied for trademark registration in 1996 covering the goods of clothes, shoes, hats and socks in class 25. The mark “新百伦” was later approved for registration in April, 2008. Meanwhile, Zhou established his own factory producing men’s shoes under the trademark of “新百伦” and“百伦”.
Zhou alleged that the use of the mark “新百伦” by New Balance China led the consumers to mis-believe that “新百伦” is the trademark owned by New Balance China. Such use is said to have cut the connection between the trademark owner and its mark “新百伦”, leaving very limited space for the trademark owner to establish and develop the value of his trademark.
After examination, the Court found that the associated company of New Balance once filed an opposition request before Chinese Trademark Office to revoke Zhou’s application of the mark “新百伦”, but not successful. In spite of the fact that the marks “新百伦” and “百伦” can be retrieved using public resources and that New Balance Company was fully aware of the trademark registration of “新百伦”, New Balance China continued to use “新百伦” to mark and market its products. Taking into the factors collected, the court rejected New Balance China’s claim of prior and good will use. The court further rejected New Balance China’s claim that 新百伦 is the translation of New Balance since the translation is 新平衡 and the its associated company is named 新平衡.
After reviewing of New Balance China’s account book, the court made the decision to order the defendant to immediately cease the use of trademark “新百伦” , make a compensation of 98,000,000 RMB, publish a statement in its official website and Tmall to eliminate the negative effects.
