Burberry has accused the Chinese company Xinboli Trading Shanghai, operating under the brand name Baneburry, of selling products with markings that are confusingly similar to its trademark, namely the iconic check pattern and the equestrian knight logo. These products were sold on e-commerce platforms such as Tmall and WeChat, as well as in numerous pop-up stores in Chinese retail locations. Another striking aspect is the very similar brand name.
Following the identified infringements, Burberry filed a lawsuit against Xinboli Trading Shanghai in 2020 for trademark infringement and unfair competition. In January 2021, the court ruled that the Chinese company had used identical fonts, labels, and packaging as Burberry, which increased the risk of trademark infringement, and as a result, the British brand obtained a preliminary injunction. The mere fact that a Chinese court issued such a ruling in this type of case is rare in China. Crucially, the ruling recognized that Burberry is a well-known trademark, which is also acknowledged in China.
The case led, among other things, to the invalidation of Xinboli’s trademarks. This is significant because in China, there is a five-year period during which third parties can apply for the invalidation of trademark registrations. Although the Chinese company’s trademarks were not subject to the five-year invalidation period, the Suzhou court clearly stated that the disputed marks were filed in bad faith with the intention of profiting from the prestige that the Burberry brand had built up over the years.
As it turned out, the lawyers of the British brand submitted a significant amount of evidence (reports indicate that it could have n over 5,000 pages) to demonstrate that the Burberry brand was well-known in China at the time Xinboli filed its applications. This, combined with the nature of Xinboli’s use of the disputed marks and the similarity of the brand name, constituted sufficient evidence that the trademarks were applied for and subsequently registered in bad faith. As a result, Xinboli Trading Shanghai was ordered to cease using the infringing marks, its own applications were invalidated, and it was ordered to pay Burberry 6 million RMB (approximately 655,633 GBP) in damages due to the scale of the infringement. This decision demonstrates the importance of investing in trademark protection in China, as well as the determination to enforce one’s rights even in a “challenging environment.”
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