Feynman LIANG Patent & Trademark Attorney	Published on April 24, 2020

For years, New Balance has been troubled by copycats in China imitating the signature design of logo “N” on the shoes product. Some of the toughest fights are against the entities with similar trademark registrations of logo “N”. In April 2020, New Balance eventually prevailed in a litigation against a Chinese entity and New Balance was awarded injunction and CNY 10 million (USD 1.4 million) as damages on the ground of unfair competition.



In the complaint, New Balance Sports Company (“Plaintiff”) claimed that Niubalun (China) Co., Ltd. (“Defendant”)’s use of the logo on both sides of shoes had constituted infringement of the decoration of the product with certain influence. However, the Defendant argued that as the owner of the mark “N” (No. 99733, No. 4236766 etc.) for shoes, the Defendant has legitimate right to use his own registered mark on the designated product under the registration.

1. Product decoration (the Plaintiff) and the trademark (the Defendant)

The Court found that, for the Plaintiff’s signature decoration “N” logo on both sides of the shoes, after long term promotional campaign and frequent use, related public has associated the decoration “N” on both sides of the shoes to the sports shoe products of the Plaintiff. The decoration “N” has become a distinctive feature that identifies the origin of the goods. Therefore, the decoration “N” should be deemed as “a product decoration with certain influence” as provided in the Anti-Unfair Competition Law of P. R. China. As reflected in the evidence such as advertisement, media coverage and precedent judicial judgments related the Plaintiff, the said decoration has acquired “certain influence” in China before the filing date of the Defendant’s mark No. 4236766. Therefore, the Plaintiff’s right of the “product decoration of certain influence” is a senior right compared to the Defendant’s trademark right.

2. Product decoration (the Plaintiff) and the design of the alleged infringing product (the Defendant)

Both the Plaintiff’s decoration “N” and the Defendant’s logo design on the product has the similar overall visual effect of capital letter “N” . Since shoes are general consumer products, ordinary attention would be applied by the consumers in the course of transaction. When these two decoration designs are observed and compared in an isolated state, the subtle differences between these two designs would not be noticed by the consumers and therefore these two designs should be deemed as similar decoration designs.

The Court held that, as the competitor of the same trade, the Defendant should have been aware of the fact that the Plaintiff’s product decoration has gained certain influence. However, the Defendant still used the similar decoration design on the similar position of the same category of product. The Defendant was believed to be subjectively taking advantage of the Plaintiff’s reputation and causing confusion as to the origin of the product. Objectively, the act of the Defendant sufficiently led to confusion among consumers as to the origin of the goods and causing misidentification of the Defendant’s product as the Plaintiff’s product. The Court held that the Defendant’s act was against the principle of good faith and established business ethics, constituting unfair competition.

As a result, the Defendant was ordered to stop the infringing activity and cancel the influence. Besides, the Defendant was decided by the Court to be liable to damages caused to the Plaintiff. The actual loss of the Plaintiff or the profit of the Defendant was hard to be determined. However, the submitted evident has sufficiently proved that the damages are higher than the statutory damages of CNY 5 million (USD 706,000). Taking into consideration of the high reputation of the decoration “N” of the Plaintiff and the duration, scope and bad faith of the infringing activity of the Plaintiff, the Court determined the damages as CNY 10 million (USD 1.4 million). The Court also fully supported the Plaintiff’s claim to recover the attorney fee and ordered that the Defendant should be liable to the enforcement cost of CNY 800,000 (USD 113,000) which included the attorney fee etc.

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