On July 262019 the Beijing High Court with final decision dismissed three invalidation actions filed by New Balance, the American sport company, against three Chinese marks “百伦” （pronounced “Bai Lun” in Pinyin) registered by the individual, Zhou Lelun.
“Bai Lun” sounds like the transliteration of “Balance” in Chinese and therefore the invalidation of these marks would have been crucial to the protection of New Balance in Chinese characters “新百伦” (pronounced “Xin Bai Lun”).
The Higher Court held that the three disputed trademarks had been registered for more than five years when New Balance filed the invalidation action with TRAB and therefore these marks could not be invalidated unless New Balance proved the registrant applied these trademarks in bad faith and the cited marks of New Balance are well known prior to the application date of the disputed marks.
Herein the three disputed marks:
- The disputed mark No.2000303 in Class 25, filed on September 10, 2001 and registered on January 14, 2003:
- The disputed mark No. 1423195 in Class 25, filed on April 29, 1999 and registered on July 21, 2000:
- Registration No 865609in Class 25, filed on August 25, 1994 and registered on August 21, 1996:
This controversial case shall remind to foreign companies how important is to translate and register the trademark also in Chinese from the very beginning.
If the brand does not make and promote an official translation, several translations will be generated by the “market” and registered by spontaneous actors.