New Balance is an American sports footwear and apparel brand that has been around since 1906. The famous “N” logo of the brand wasn't featured until the '70s when New Balance released the 320 sneakers. Nowadays, “N” has become the iconic symbol of the brand. Recently, the Supreme Court (“SPC”) issued two retrial decisions which withdrew the Beijing High People’s decisions and determined, due to constituting similar trademarks to New Balance’s cited Trademarks, the said two Disputed Trademarks No. 7976207 and No. 8520182 of N logo registered by Qierte Co, Ltd (“Qierte”) were invalidated.
Invalidation Disputes - Twists and Turns
In 2014, New Balance filed invalidation request with TRAB and asked the same to invalidate two N logo trademarks No. 7976207 and No. 8520182 owned by Qierte. TRAB deemed the Disputed Trademarks and Cited Trademarks didn’t constitute similar trademarks in terms of different expression form, composition design, visual effect etc., thus the coexistence would not result in confusions among the related consumers. The two N logo trademarks were maintained.
Beijing Intellectual Property Court overturned TRAB’s decision and determined the trademarks constitute similar trademarks. Because both 2 Disputed trademarks and all Cited trademarks can be recognized as Capital N letter, and the evidence provided by New Balance could prove they had enjoyed certain reputation on its N logo, thus the coexistence would arouse confusions. [(2015) Jing Zhi Xing Chu Zi No.3615-3616]
Nevertheless, Beijing High People’s Court overturned Beijing IP Court’s decision again, which determined, although these trademarks consist of Capital N letter, the overall visual effect, expression form, composition design are different. The Disputed Trademarks and Cited Trademarks can be distinguished under general attention by related public.
In addition, the evidence provided by New Balance could only prove the reputation of its standard “N” trademark on shoes and most of them are later than the filing date of Disputed Trademarks, thus it is insufficient to prove the reputation of Cited Trademarks. [(2016)Jing Xing Zhong No.3697]
Previously on Qierte - Not a coincidence
Since 2014, New Balance has initiated multiple trademark infringement lawsuits against Qierte and its affiliated company New Bunren(China) Sporting Goods Co., Ltd., and has applied for invalidation of the latter's “N” logo trademarks.
In 2016, New Balance sued above mentioned 2 companies before Hangzhou Railway Transportation Court by claiming both 2 defendants used “N” decoration on their “New Bunren” sports shoes unauthorizedly, further sold and promoted, which constituted unfair competition against New Balance’s company.
In the Decision issued on April 14, 2017, the Court deem as a competitor in the same industry, Qierte knows and should know the special decoration and registered series trademarks of New Balance, and Qierte shall avoid but they intentionally change the distinctive part of its registered trademark and use the similar special decoration of New Balance, i.e. N logo.
Therefore, the two defendants were ordered to immediately stop the manufacture and sale of sports shoes that violated the N logo, and compensate New Balance for economic losses and rights protection expenses total of RMB 3.3 million. Even if both two parties further appealed to Hangzhou Intermediate People's Court, and cases are pending in second instance, obviously, the winning of New Balance is a good start for the following invalidation disputes. [(2016) Zhe 8601 Min Chu No.296]
The SPCs’ Final Word
Let’s go back to the subject N logo invalidation litigations. After full of twists and turns during first instance and second instance, the SPC make the seemingly more reasonable final decision to New Balance. The controversial issue of the retrial before the SPC is still whether the Disputed trademarks and the Cited trademarks are similar. New Balance pointed out the comparison of similarity should not focus on the logos per se, but should comprehensively consider the factors including distinctiveness and reputation of the trademark and the subjective intention of the trademark applicant etc.
The SPC determined after trial, even if the Disputed Trademarks added different elements and made special design, the N letter is still the significant part, while N letter is also the main distinctive part of Cited trademarks. For related public, Disputed Trademarks and Cited Trademarks will be pronounced and identified as N letter.
In addition, the evidence provided by New Balance could prove it had enjoyed certain reputation before the filing date of Disputed Trademarks. As competitor in the same industry, Qierte should have a considerable understanding on New Balance’s prior trademarks, nevertheless, Qierte use the easily confused trademark in actual business, which cannot be deemed as “good faith”.
In the light of above, the Cited Trademarks and Disputed Trademarks constitute similar trademarks, and the SPC overturned the second instance judgement.
Influence of Bad Faith on Trademark Similarity
Even if the SPC didn’t precisely pointed out the malicious and confusing use by Qierte in actual business activities influence the judgment similarity, it can be speculated from the description of SPC judgment and Court debates, the Judge has comprehensively considered the subjective intentions of confusing use made by Qierte.
Last year, Beijing High People’s Court issued Guidelines for the Trial of Trademark Right Granting and Verification Cases, of which elaborate the application of similarity judgment could be comprehensively considering the below factors and their interaction based on whether it is easy to create confusion for the relevant public:
a) The similar degree of marks of the trademarks and the goods,
b) The distinctiveness and popularity of the reference trademark,
c) The degree of attention of the relevant public,
d) The subjective intention of the applicant of the trademark in dispute
Actually, New Balance has been troubled by the “copycat” shoes bearing different N logo since it entered China. One example is Qierte Co., Ltd. from Jinjiang City, Fujian Province mentioned in this article.
From my personal understanding, N logo, as simple as it is, wouldn't just change the look of the sneakers but bring fames to New Balance as one of the top sport companies.
The quick search into the Chinese trademark database disclosed different N logo trademarks co-existing in class 25, which are owned by some shoe-making enterprise. From the perspective of consumers, will you feel confusions by the shoes bearing these different N logos?