Towards a new balance in trademark infringement damage awards in China?

New Balance Trade (China) Co., Ltd. v Shenzhen New Balance Sporting Goods Co., Ltd.


18 August, 2017, the Suzhou Intermediary People’s Court in the first instance decided that three defendants (Zheng Chaozhong, Xin Ping Heng Sporting Goods Ltd Co, Bo Si Da Ke Trading Ltd), who manufactured sporting shoes under the name New Boom infringed the trademark logo N and relied on the “malice of free-riding”, “confused a large number of consumers”, “seized market share from New Balance” and “drastically damaged the business reputation of New Balance”, and that the defendants have to pay RMB 10 million (around US$ 1.5 million) in damages and legal costs, according to the NY Times that said it had received a copy of the court decision, see here.


Drawing Michiel Tjoe-Awie


The timing, shortly after President Trump ordered an investigation into China’s IP protection and enforcement, might have influenced the court outcome. Then again, in a trademark dispute between a Chinese plaintiff Meichao Group and Chinese defendant Beijing Xiujie Xinxing Building Materials, the Beijing IP Court had already awarded a damage award of RMB 10 million, see here. The reason was that, conform Article 63 Trademark Law, after the plaintiff had made reasonable efforts to prove the amount of the actual damages, the burden shifts to the defendant. In Meichao Group v Beijing Xiujie Xinxing Building Materials, the defendant refused to provide the required evidence.


On September 13, 2016, in New Balance Trade (China) Co., Ltd. v Shenzhen New Balance Sporting Goods Co., Ltd., the Suzhou Intermediate People’s Court trial, confirmed that the defendant’s use of the N on both sides of footwear identifying it as New Balance shoes, is a violation of the plaintiff’s well-known trademark logo, and the court provided an injunction to the defendant to immediately production and sales of shoes with on both sides the use of N to identify the brand of the footwear. See Li Disen’s article for China IP here (Chinese).


Despite the court’s injunction, the defendants refused to abide by the ban. This has resulted in the relatively generous damage award and compensation of the legal costs.


In other words, after a complaint by the plaintiff, process behaviour of the defendants which has an adverse influence on the plaintiff seems particularly relevant for the height of the damage award the court is willing to assign to the plaintiff.


In regard to statutory damages, the statistics show at the Beijing IP Court that the average compensation granted has grown from RMB 80,000 before 2014 to RMB 450,000 in 2015, see here.



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Grading Chinese Provinces and Cities for IPR Protection But Not Enforcement Useful Exercise?

Danny Friedmann


The goal of the China IP Index is to “assess and analyze the different development status of intellectual property capacities in 31 provinces and municipalities of China through setting up a scientific, systematic and formal system.” The result, that only focuses on protection (namely application and registration) of IPRs and not on enforcement and excludes the whole category of copyright is claimed to be of “substantial significance”, by the researchers of the index here. Whether this is justified will be questioned after an overview of the ranking.
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Synchronicity in Trademark Applications in China: from a first-to-file to a first-to-use to a divination system

“Let’s not look at the timekeeping equipment, let’s draw lots“ There is a theory of synchronicity of cultural artifacts. For example pyramids being build both in Egypt and in Middle and South America around the same time, or the simultaneous creation of the cartoon figure Dennis the Menace in the US and Dennis the Menace in the UK. As […]

Happy Dragon Boat Festival! Unhappy Trademark Protection for Qu Yuan?

Free interpretation of zong zi (glutinous rice).Traditional zong zi has a triangular form.Photo Danny Friedmann Today is the fifth day of the fifth month of the lunar calendar. Time for Duan Wu festival (端午节). On this day Chinese around the world commemorate the great poet Qu Yuan 屈原. Qu is not only famous for his work Chu […]

EU Experience and Practice Must Show China The Way Concerning IPR Protection At Exhibitions

It is crucial for companies to showcase their new products to the world at trade fairs and exhibitions. Hower, these places welcome potential customers but also IPR infringers. To make the bonafide exhibitors less vulnerable to IPR infringements and deal with the IPR infringers that also have come to the trade fairs, the IPR2 (EU-China […]