Weekly China Trademark News Updates

January 10, 2024

1. Damages of RMB 5 million was ordered against the counterfeit “Skechers” mark

SKECHERS U.S.A., INC. II (“Skechers”) sued individuals Xiong, Mao, Xiao and others for trademark infringement. The court found that Skechers is the owner of “,” “,” and “Skechers in Chinese” marks on sneakers related goods. All marks are valid. Xiong, Mao, and Xiao have been producing and selling shoes counterfeiting the registered trademarks of Sketchers since 2017. Xiong, as the main person in charge, opened the factory, was responsible for material procurement, and contacted potential customers. Mao and Xiao were in charge of the daily production matters of the factory and were responsible for the production and packaging of the counterfeited products. On May 20, 2021, the public security authorities arrested Mao, Xiao, and another individual Cai at the scene, and seized a total of 14,052 pairs of counterfeit Skechers sneakers, valued at up to RMB 8 million (USD1.12 million). On May 21 of the same year, the public security authorities again seized a total of 10,470 pairs of counterfeit Skechers sneakers by the four defendants, valued at nearly RMB 6 million (USD841,000). The Defendants Xiong, Mao, Xiao, and Cai produced and sold sneakers with counterfeit “SKECHERS” mark, which constituted the crime of counterfeiting a registered trademark, and also infringed the Skechers’ trademark right, and should be held liable for civil damages in accordance with the law. In this case, it has been ascertained that from 2017 to 2021, the Defendants produced and shipped a total of 321,211 pairs of counterfeit Skechers sneakers, which were valued between RMB 19 million to 305 million (USD 2.6 million to 42 million) according to the shipping price of RMB 60-95 per pair, and the total infringing profits of the four Defendants were calculated at a total amount of not less than RMB 2 million (USD279,000) based on the level of the actual profit margin of approximately 10% as confessed by the four Defendants. Due to the defendants’ infringement lasted for a long time, production, and sales scale, with subjective infringement of intent and infringement of the seriousness of the circumstances, Skechers claimed that Xiong’s damage should be tripled as punitive damages, the court supported Skechers’ claim and ordered Xiong to pay for economic loss of RMB 5 million (USD699,291) and reasonable costs of RMB 162,504 (USD22,727). Mao and Xiao should be jointly responsible for RMB 3662,504 of Xiong’s liability.

2. Davidoff wins another administrative trademark enforcement action

Hong Kong Wanli International Limited is the registrant of the “Davidowen Daweiouwen in Chinese” mark with reg. no. 12873589 (“Disputed Mark”). ZINO DAVIDOFF SA (“Davidoff”) filed an invalidation request based on its prior trademarks. After hearing, the court found that the goods designated for use by Davidoff’s “DAVIDOFF” mark with reg. nos. 1790412, G467510 and G876874 and the Disputed Mark fall into spices and cosmetics related classes. In terms of function, use, manufacturing department, place of sale, consumer, etc., they are identical or are highly related, and constitute identical or similar goods. Given that the Disputed Mark consisted a combination of “Davidowen” and “Daweiouwen in Chinese,” which is highly similar to the corresponding Chinese mark of Davidoff’s “DAVIDOFF” mark in China based on the evidence submitted by Davidoff. Davidoff’s evidence can prove that “Davidoff in Chinese” has formed a one-to-one corresponding relationship with the “DAVIDOFF” mark through long term use and promotion. Comparing the two marks, they are similar in terms of composition and pronunciation. Considering such high relevance, the Disputed Mark is highly likely to cause relevant public to be mistaken as a series of Davidoff’s “DAVIDOFF” mark and cause confusion. Therefore, the registration of the Disputed Mark violated Article 30 of the 2013 Trademark Law and should be invalidated.

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