In a Trademark Battle, Under Armour defeats Uncle Martian at China’s Supreme People’s Court27-07-2020
The Supreme People’s Court of the People’s Republic of China, has recently rendered a trademark judgment in favor of Under Armour, Inc against Fujian Tingfei long Sporting Goods Co, Ltd for trademark infringement and unfair competition.
Trademark illegal usurpation in the field of sports apparel and athletic footwear is a lucrative business for infringers in China. In fact, many notorious American brands have been targeted by Chinese pirates such as Nike, Converse, and Vans. However, Under Armour broke the chain, by being the first American sports apparel company to win a trademark lawsuit in China.
Under Armour, Inc, is an American company based in Baltimore, Maryland. The company has been producing and selling Under Armour sports apparel, footwear, and accessories since 1996. Under Armour entered the Chinese market in 2010, which makes roughly half of its total Asia-Pacific sales.
Uncle Martian, is a subsidiary of Tingfei long Sporting Goods, (Tingfei long) established in 1991. Tingfei long is a shoe company, which has been selling shoes for over two decades, upon creating its subsidiary Uncle Martian, the company made its way into the high-end market of athletic wear, where Under Armour is part of.
The Plaintiff, Under Armour, owns the Chinese wordmark UNDER ARMOUR as well as the interlocking UA logo. Moreover, they have registered their trademarks in China, even before the formation of Uncle Martian. Under Armour’s trademarks are registered under Class 25, which covers clothing, and Class 28, which covers gymnastic and sporting articles. While Uncle Martian had registered their wordmark UNCLE MARTIAN and logo in 2007. Furthermore, Under Armour had also registered the pinyin and Chinese character of the English version of their marks, AN DEMA and 安德玛.
Registration 12675844 A in Class 25
Registration 12165772 in Class 28
Registration 3463214 in Class 25
Registration 7329795 in Class 25
IR Registration 996450 in Class 28
Registration 3479748 in Class 25
Registration 3463213 in Class 25
IR Registration 1007431 in Classes 25 and 28
Registration 7329792 in Class 28
In 2016, Fujian Tingfei long, launched its sports footwear line using their logo Uncle Martian, which represents a striking resemblance to Under Armour’s red and white color logo. With both logos having a stylized letter U with an inverted U directly underneath, the difference can barely be spotted at first sight.
After filling a lawsuit in the People’s Higher Court of Fujian Province, Under Armour was granted an injunction against Uncle Martian, stating that Uncle Martian’s act had infringed Under Armour’s trademark rights and the use of its tradename constituted unfair competition.
Accordingly, the Court ordered Tingfei long to:
(1): Stop using the infringing trademark Uncle Martian;
(2): Destroy all infringing products;
(3): Payment of damages of 2 million RMD (~ $286 thousand USD);
(4): Publish a public apology.
(i) Trademark infringement:
Article 57 of Trademark Law of the People's Republic of China provides:
‘’ Any of the following acts shall constitute an infringement on the exclusive rights to the use of a registered trademark:
(1) Using a trademark that is identical with a registered trademark on the same kind of goods without obtaining licensing from the registrant of the registered trademark;
(2) Using a trademark that is similar to a registered trademark on the same kind of goods, or using a trademark that is identical with or similar to the registered trademark on similar goods without obtaining licensing from the registrant of the registered trademark, and is likely to cause confusion;
(3) Selling goods that infringe on the exclusive right to the use of a registered trademark;
(4) Counterfeiting, or making without authorization, representations of another person's registered trademark, or selling such representations;
(5) Altering a registered trademark without permission of its owner and selling goods bearing such an altered trademark on the market;
(6) Providing, intentionally, convenience for such acts as infringe upon others' exclusive right of trademark use, to facilitate others to commit infringement on the exclusive right of trademark use;
(7) Impairing in other manners another person's exclusive right to the use of its registered trademark.’’
For purposes of Article 57, the Court considered the two marks similar in addition of causing customer confusion.
(ii) Unfair Competition:
Article 58 of Trademark Law of the People's Republic of China provides:
‘’Whoever uses a registered trademark or an unregistered well-known trademark of another party as the trade name in its enterprise name and mislead the public, which constitutes unfair competition, shall be dealt with in accordance with the Anti-unfair Competition Law of the People's Republic of China.’’
Based on Article 58, the Court Ruled that Tingfei long had violated the business ethics of good faith and fair competition.
Article 63 of Trademark Law of the People's Republic of China provides:
‘’ The amount of damages for infringement on the exclusive right to use a trademark shall be determined based on the actual loss suffered by the right holder as a result of the infringement; if it is difficult to determine the actual loss, the amount of damages may be determined according to the profits gained therefrom by the infringer, if it is difficult to determine both the loss of the right holder and the profits gained by the infringing party, the amount of damages may be reasonably determined in reference to the multiples of the trademark for royalties. Where an infringer maliciously infringes upon another party's exclusive right to use a trademark and falls under serious circumstances, the amount of damages may be determined as not less than one time but not more than three times the amount that is determined according to the aforesaid methods. The amount of damages shall cover the reasonable expenses paid by the right holder for stopping the infringing act […] Where it is difficult to determine the actual loss suffered by the right holder as a result of the infringement, the profits gained by the infringer from the infringement or the royalties of the registered trademark concerned, the people's court shall render a judgment awarding damages in an amount not more than RMB three million yuan based on the circumstances of the infringing acts’’
The Court awarded Under Armour two million RMB (~ $286 thousand USD)
Marketing Manager at The Legal Group