New Balance Athletic Shoe, Inc. picked up a key victory in a trademark infringement action in China last month when a court awarded New Balance a monetary award of 600,000 RMB (USD $75,000) and required that Chinese footwear maker Qiuzhi Footwear stop producing its “New Barlun” athletic shoes.
In 2002, New Balance said it discovered a group advertising itself as “American New Barlun (Hong Kong) Limited” conducting business in China and promoting a relationship with the “American New Balance” company. New Barlun had acquired trademarks which were similar to those of New Balance and combined them with packaging, advertising and slogans also similar to the brand. New Barlun began selling franchises and opening retail stores throughout China. New Balance took immediate action, working with China’s Administration for Industry and Commerce (AIC) with limited success.
In 2003, New Balance claimed that it discovered that New Barlun was a front established in Hong Kong by a Chinese company called Qiuzhi Footwear. New Balance then sued Qiuzhi in the court of Hangzhou. Harley Lewin, of Greenberg Traurig LLP, coordinated the legal battle on behalf of New Balance.
After almost three years of litigation, the Court agreed with New Balance’s arguments and found Qiuzhi liable to New Balance for trademark infringement and unfair competition. The Court agreed that New Balance’s use of an “N” logo on footwear is particularly connected to New Balance products, and that although Qiuzhi owned a similar trademark, their use of an “N” was confusing and deceptive to consumers. The Court also agreed that Qiuzhi’s use of the name “New Barlun” infringed on the New Balance trademark.
“New Balance fights very hard to protect itself and the brand’s reputation around the world so the results of the Court’s action are especially gratifying” said Ed Haddad, vice president of Intellectual Property and Licensing at New Balance. “While this is a specific victory for New Balance, it is also a victory for all companies who fight counterfeiters. The Court was not fooled by the pretense of Qiuzhi’s claims and had the courage to expose those who would seek loopholes to justify their actions.”
