On January 29, 2021, the Intermediate People's Court of Suzhou, Jiangsu Province granted injunction amid the litigation initiated by BURBERRY LIMITED against Xinboli Trading (Shanghai) Co., Ltd., Shentu Clothing (Shanghai) Co., Ltd., Peng Yazhong and Peng Yazhong clothing store, for the infringement of Burberry's trademark rights and unfair competition.
The court ordered Xinboli Trading (Shanghai) Co., Ltd. to immediately stop using the trademarks "BANEBERRY" and , and stop the production and sales of the products bearing patterns that are identical to or similar with Burberry's trademarks No. G732879 and No. G987322 .
The court further ordered Shentu Clothing (Shanghai) Co., Ltd. and Peng Yazhong Clothing Store to immediately stop selling products bearing the trademarks "BANEBERRY" and , as well as the patterns identical to or similar with Burberry's trademarks No. G732879 and No. G987322.
In addition, the court ordered Xinboli Trading (Shanghai) Co., Ltd. to immediately stop using the sign on its product tags, and stop promoting that "BANEBERRY is originated from Jermyn Street in London and its most symbolic 'British lattice' is classic elements of the fashion industry".
In response to Burberry's application for injunction, the court organized a hearing for both parties and granted the injunction. The court found that the defendant, Xinboli Trading (Shanghai) Co., Ltd., is the licensee of the registered trademarks "BANEBERRY" and . The defendant started to open BANEBERRY physical stores in the second half of 2019 and the sales scale and area expanded rapidly. By the time Burberry filed an application for injunction at the end of 2020, Burberry alone obtained evidence from over 40 of the defendants' offline stores. The defendant's infringing stores are located in large shopping malls or outlets in large cities, and the defendant have been selling online at Tmall, WeChat, Pinduoduo, and Xiaohongshu, which has caused confusion among a large number of consumers.
In the injunction, the court affirmed that "BURBERRY" and are well-known marks in China. The court further stated that even though the trademarks used by the defendant are registered trademarks and have been registered for more than 5 years, when all the circumstances are taken into consideration, it can be concluded that the alleged infringing trademarks are registered in bad faith and should not be subject to the 5-year time limit.
Regarding whether the application for injunction is of urgency and whether failure to take immediate measures may cause irreparable damage to the applicant's legitimate rights and interests, the court gave the following reasoning. First of all, the scale of the alleged infringement is huge and has been obviously increasing. Failure to take immediate measures will result in lots of Burberry's market share being taken by the defendants and huge financial losses. Second, the alleged infringement can easily lead to confusion and misidentification in the consumer market. Failure to take immediate measures will seriously dispraise the applicant's goodwill and weaken the distinctiveness and identification of Burberry's well-known marks. Third, in light of the upcoming annual Chinese New Year Holidays which is the golden period for clothing sales, ordering to stop the alleged infringement is of real urgency.
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