China's Pro-IP Move for Luxury Brands: Tommy Hilfiger Successfully Invalidates A Copycat Trademark Based on Prior Use

*** The writing does not, and is not intended to, constitute legal advice by any means***

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Official Logo of Tommy Hilfiger

In Asia, intellectual property ("IP") protections for non-native companies can be subtly nuanced. Some complain that protectionist instincts are in play. Although such grievance is not entirely without merit, it is not wholly accurate as well. Leading Asian nations such as South Korea and China are now acutely aware that IP is indeed a valuable asset. As major Asian countries has transitioned to net-IP-exporting (meaning, they are exporting IP more than they import), protecting intellectual property rights of foreign brands is instrumental for economic growth. China is a nice case in point. These days, it is not surprising to see luxury brands scoring major victories in Chinese courts for copyright or trademark infringement actions. On the heels of this trend comes the latest Tommy Hilfiger decision issued by the Beijing IP Court. I am disclosing that I learned of the case, especially its factual background, from a Lexology article authored by Wanhuida Intellectual Property. I would otherwise have not been able to report on the matter because the decision is written in Chinese.

A Chinese company has been using a registered trademark by means of a third-party assignment. The registered trademark is striking similar to the globally renowned Tommy Hilfiger flag logo (pictured above). Then, how could the infringing trademark be registered in the first place? The trick here was that the two trademarks were registered in different categories: Tommy Hilfiger in apparel and the infringing trademark in girdles. Tommy Hilfiger commenced an invalidation action. The China National Intellectual Property Administration (the "CNIPA"), the equivalent of the United States Trademark Patent and Trademark Office, denied the invalidation. Tommy Hilfiger appealed the CNIPA decision, and the Beijing IP Court overturned it. So what led to the reversal?

The Beijing IP Court recognized that the Tommy Hilfiger flag logo enjoys appreciable reputation in China. In addition, the Court noted that the two categories - apparel and girdles - are not wholly distinctive. The judges reasoned that there is an overlapping element and that "Tommy Hilfiger's mark had acquired certain influence on girdles through extensive use in China". Some may criticize that the distinction should be upheld. Even in the United States, luxury brands file different applications to different categories to make sure that they can legally enforce their marks. Here, I believe the judges wanted to reach a just outcome given the facts of the case. The decision emphasized that the infringer was deliberately acting in bad faith. What I learned in law school is that sound policy rationales can sometimes trump rigid doctrines. You certainly don't want thieves to piggyback on others' hard-earned reputations. I hope that was the case here. We can expect to see this trend - the trend of affording strengthened protections to non-native brands - continue. Burberry also obtained a favorable ruling in China against an infringer who misappropriated the brand's famed check pattern logo. I will write about it next week, so stay tuned!