Burberry faced with trademark revocation in China
Luxury fashion brand Burberry faces losing trademark protection for its signature design in China following a long-running dispute with a local company, but has announced it will appeal.
The trademark, for the renowned beige, red and black chequered pattern, was revoked after it was proven it hadn’t been used in the country for three years.
Burberry had been in dispute with a company called Polo Santa Roberta, a leather goods company based in the city of Foshan.
In February last year Polo Santa initiated cancellation proceedings at the Chinese Trademark Office on grounds of non-use.
Its claims were reportedly upheld on November 13.
The dispute relates to a graphic trademark (G732879) for the iconic pattern, known as the “Haymarket Check” and was filed under Class 18.
In China, class 18 covers handbags but also a range of other goods including various sub-classes.
It is not clear which products the cancellation applies to but according to Burberry it includes leather goods.
In China, the period of non-use required to show abandonment of a trademark is three years and an owner must provide evidence of use or intention to use once that period expires.
In a press release published in Chinese on November 26, Polo Santa’s representatives said Burberry provided “invalid evidence” that the trademark was still in use and that the trademark office at China's State Administration for Industry & Commerce had confirmed cancellation.
Burberry previously initiated several lawsuits against Polo Santa in Hong Kong and Taiwan over its use of look-alike bags in a dispute which has continued for more than eight years.
Polo Santa’s attorneys have demanded RMB 500 million ($82 million) in compensation from Burberry, representing the losses incurred as a result of litigation.
In a statement, Burberry told WIPR any revocation would not take place until an appeal is heard.
“As a global luxury brand, Burberry considers the protection of its trademarks vital to the health of its business and brand,” it said.
“Ahead of a decision on this appeal, the cancellation decision does not take effect and there is no change to Burberry’s use or enforcement of its trademark across leather or any other products. We are confident that our appeal will be successful.
“The Burberry Check remains a registered trade mark exclusively owned by Burberry and no other parties can use the mark without Burberry's proper authorisation. Burberry always takes the strongest possible action against those who use its trade marks unlawfully.”
Catherine Wolfe, president of ITMA and partner at Boult Wade Tennant in London said trademark registration was “a very valuable asset, in China as in the UK”, but added it was an asset “with a counterbalance.”
“Thus, as a corollary to the monopoly right which registration confers, in many countries it is possible to challenge a trademark registration, after a certain period has passed [three years], on grounds of non-use.”
Wolfe, a regular visitor to China, added: “Further, in many countries, it is a simple challenge where the burden is entirely on the proprietor to show what use has been made of the mark as registered, on the goods of registration (or to show good reasons for non-use).
“The registration then stands or falls on the basis of the specific evidence filed in that action - in relation to those particular registered goods,” Wolfe said, adding the process could sometimes lead to “surprising results.”
