In April 2015, the U.S. sneaker maker New Balance (hereafter referred to as “New Balance USA”) was ordered by Guangzhou Intermediate People’s Court to pay a damage of CNY 98million (USD 15.8 million / EUR 14.1 million) to a Chinese citizen, Yuelun ZHOU, for the reason of infringement against ZHOU’s trademark “新百伦” (pronounced as “Xin Bai Lun”). The news had hit the headlines. This year, New Balance USA filed an appeal at Beijing Intellectual Property Court against the decision of its previous invalidation request to invalidate trademark No. 3954764 owned by New Balance Trading (China) Co., Ltd. (hereafter referred to as “New Balance China”). But the court finally revoked the invalidation made by Trademark Review and Adjudication Board (the TRAB). New Balance USA consequently has run into a brick wall again due to the non bis in idem principle.

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Case Review

In 2007, New Balance USA filed an opposition against the trademark application No.3954764 “N” with China Trademark Office (the CTMO), in order to prevent the mentioned trademark from registration. However, it was decided by the CTMO that the grounds of opposition were not justified. New Balance USA was not satisfied with the decision and therefore filed an application for review of the opposition with the TRAB. In 2011, the TRAB issued a decision that New Balance China’s trademark application No.3954764 was not similar with New Balance USA’s registered trademark No.175151 and was therefore approved to be registered. This decision has become legally effective since New Balance USA did not file an appeal after receiving the decision.

In 2014, New Balance USA filed an invalidation request against New Balance China’s trademark No.3954764 “N” with the TRAB. However, it turned out that the TRAB decided to maintain the legal effect of New Balance China’s trademark No.3954764. Then New Balance USA filed an appeal  against the decision before Beijing Intellectual Property Court. However, after examination, the Court found that the ground for invalidation request was one of the grounds for the review of opposition. Since the TRAB had made a decision before in the procedure of review of opposition and the decision has been legally effective, it shall not make a decision again on the invalidation request. Consequently, the adjudication on the invalidation request was revoked by Beijing Intellectual Property Court according to non bis in idem principle.

Our Comments

We shall try every possible legal procedure but not give up easily when facing with trademark disputes. New Balance USA made two consecutive mistakes and consequently got bogged down in such a situation.

  1. The decision on review of opposition was issued in 2011, which is well before the implementation of the New Trademark Law in China. At that time, if the opponent was not satisfied with the decision, he/she could file an appeal within time limit and try to solve the problem in judicial proceedings. However, New Balance USA gave up this way.
  2. In 2014, New Balance USA filed the invalidation request against the same trademark, using the same grounds of the review of opposition without any new evidence. It was a violation of non bis in idem principle, as well as a waste of administrative resources and judicial resources. As a consequence, of course, New Balance USA could not get the corresponding relief.