Case Brief

The plaintiff, Airwair International Limited (hereinafter referred to as "Airwair" or "the plaintiff"), as the exclusive global authorized licensee of the "Dr. Martens" series of trademarks, including the No. 584207 international registered trademark, is responsible for the design, production, promotion, and sale of the series of products of the brand "Dr. Martens" in China. Since the 1960s, "Dr. Martens" footwear and boots products have been sold in more than 80 countries and regions worldwide, one of the most recognizable footwear trademark brands in the world. Since 2003, "DR. MARTENS" and its products have been advertised and reported by the Chinese newspapers and media. In 2007, the brand "Dr. Martens" entered the Chinese market, with its sales areas covering all over the country. The brand has enjoyed high popularity in China.

The defendant, Hu, the legal representative of a clothing company in Shantou, filed an application in July 2011 and obtained the approval in June 2012 for registration of the No. 9780715 "Dr. mannar" trademark for use on the same goods "clothing; footwear" as the authorized trademark. The defendant, the clothing company in Shantou, sold footwear and boots products on Tmall, Taobao, 1688 and other e-commerce platforms, and used the infringing marks such as "馬丁(Martin)", "馬丁靴(Martin Boots)", "馬丁鞋(Martin Shoes)", "MARTIN", and "Dr. Mannar" on the homepages of the stores, the linked webpages of the goods, the packaging of the shoe boxes, the wrapping paper and other places. Airwair filed a lawsuit with the Shanghai Intellectual Property Court on the grounds that the aforementioned acts of the defendant constituted trademark infringement.

Determination of the Court

Upon trial, the Shanghai Intellectual Property Court held that the plaintiff, by virtue of the authorization, is entitled to conduct sales and promotion concerning the No. G584207 trademark "DR. MARTENS" (hereinafter referred to as "the authorized trademark") in China and to file a civil lawsuit on the basis of the license. The authorized trademark has enjoyed a high reputation in China after a long period of advertisement, use and promotion, and has already become a famous trademark in the goods of "footwear, boots and clothing" on which it is approved for registration. Further, the sued infringing goods also pertain to footwear and boots goods, and because the defendant Hu has registered the No. 9780715 trademark for "Dr. Mannar", it is necessary to obtain the determination of the famous trademark in this case. The sued "Dr. mannar" "Dr. Mannar馬丁靴(Martin Boots)", "", "" and other marks are similar to the plaintiff's authorized trademarks "Dr. Martens", "馬丁(Martin) Dr. MARTENS", "", etc., in terms of the letter composition, pronunciation, and Chinese and English meanings. The clothing company in Shantou used the sued marks on footwear and boots goods and sold them on various online shopping platforms. Such act would easily make the relevant public believe that the goods have the same source or there is a close connection between their sources, and thus may easily confuse the public with source of the goods. In addition, there was no evidence in the case that the term "馬丁靴(Martin Boots)" is a legal or conventionally used common name. On the contrary, various advertisements and reports concerning the authorized trademark can all reflect that the term "馬丁靴(Martin Boots)" corresponds to or is directed to the authorized trademark, which has formed a certain correspondence with the authorized trademark. Therefore, the sued acts constitute an infringement of the authorized trademark.

In the end, the court ruled that the clothing company in Shantou and Hu should cease the infringement immediately and eliminate the influence and that punitive damages should be applied to fully support the litigation request for compensation of 3 million yuan by Airwair. This case is now in its second trial.

Typical Significance

This case is a typical case for a famous trademark to combat malicious registration and infringing acts, which helps deter the malicious infringing acts of "free-riding" in the market.