In 2016, a new clothing brand Uncle Martian was announced in Jinjiang, Fujian Province, China. The company behind Uncle Martian is Tingfeilong Sporting Goods Co. (廷飞龙体育用品有限公司). This brand’s logo and the name was found to be remarkably similar to a famous U.S. sportswear brand Under Armour. Under Armour announced that Uncle Martian’s use of Under Armour’s famous logo, name, and other intellectual property is a serious concern and blatant infringement. The U.S company then sued Tingfeilong Sporting Goods Co. and opened up a trademark infringement case.
The Chinese translation of Under Armour is 安德玛 (an de ma). However, this Chinese transliteration was registered by the chairman of the Uncle Martian brand, so that Under Armour was only allowed to register under the Chinese name 安德阿镆 (an de a mo). According to the database at the China Trademark Office (CTMO), the name “UNDER ARMOUR” as well as its logo was registered by Under Armour at the CTMO in 2005, while the brand name “Uncle Martian” was registered by a Chinese citizen in 2007. However, there is no application of Uncle Martian’s logo in the database.
In 2017, the Fujian People’s Higher Court issued an injunction requiring Tingfeilong to stop using the infringing “Uncle Martian” trademark. The court also demanded that Tingfeilong destroy the infringing products and compensate Under Armor with 2,000,000 RMB (about 250,000 EUR) in damages. Moreover, the Chinese company needed to make a public statement to apologize for the negative impact caused by the infringement.
Tingfeilong filed appeal against the ruling of the Fujian People’s Higher Court to the Supreme People’s Court in October 2017. After more than 2 years, the Supreme People’s Court ruled in the final judgment in March 2020 that the ruling of the Fujian People’s Higher Court is correct, the appeal of Tingfeilong is rejected. Therefore, the ruling of the first instance is upheld. Tingfeilong shall stop the infringement immediately, make a public statement to eliminate the negative impact and compensate the financial losses of Under Armour include reasonable litigation costs of 2 million RMB.[1] Compared with the 100 million RMB compensation requested by Under Armour, 2 million is actually not a satisfactory amount. One reason could be that Under Armour is not a recognized Well-Known trademark in China. Therefore, it does not enjoy the special protection that Well-Known trademarks will receive in China.
One point that maybe worth noting in this case is that one related personnel of Tingfeilong had registered a company in Hong Kong with the name “Under Amour (China) Co. Limited”（安德玛（中国）有限公司, and participated in the production, sale and promotion of the infringing products by licensing Tingfeilong. This has caused confusion over the relationship between the brand “Under Armour” and the infringing trademark “Uncle Martian”, made the consumers mistakenly believe that the products of Tingfeilong are authorized by Under Armour and helped Tingfeilong in obtaining illegal benefits through unfair competition.
Regretfully, it is not the only case in the praxis. However, since Hong Kong and mainland China are in different jurisdictions, it is often difficult for the right holders to obtain effective evidence against such companies in similar rights protection process. Under Armour mentioned in an interview in 2016[2] that legal actions should also be taken through the Hong Kong Companies Registry against the infringing companies, but until now it is still unknown whether there has been any progress yet. It is hard for the rights holders to effectively avoid or prevent such infringement and also its adverse effects in the mainland China market.
In the field of intellectual property protection, it remains to be seen whether there will be a further degree of legal cooperation between Hong Kong and China in the future to facilitate rights protection.
If you have similar problems with your trademarks in China, we are happy to assist you and look forward to hearing from you.
[1] Ruling of SPC, 2020, https://wenshu.court.gov.cn/website/wenshu/181107ANFZ0BXSK4/index.html?d... .
[2] Interview, 2016, https://www.sohu.com/a/100571607_119738 .