Burberry in dispute over China trade mark rights

December 2013

Burberry's distinctive "Haymarket" tartan pattern in black, red and tan has become embroiled in a trade mark dispute in China following an application for removal by Chinese company Polo Santa Roberta, which uses a similar print in its products. However, it looks like Burberry will be appealing against the trade mark office's decision, which rejected the renewal of copyright on the basis that Burberry has not used the design in over three years.

IP disputes are common in China, a key country for many major brands, and over the past decade Burberry has clashed with Polo Santa Roberta a number of times. Burberry originally filed for this trade mark to be protected in China in 2000, under three separate classifications. The classification under dispute is Class 18, which includes bags, suitcases and luggage - some of Burberry's most iconic fashion items.

However it seems that it's that iconic status which has recently affected sales of the brand, and fashion in the country has shifted to an anti-luxury tone which reflects the feelings toward corruption among the wealthy. This negative association certainly hasn't helped Burberry, and the existing black market goods copying the signature brand have made the designer's impact on the market even less effective.

These factors have led some to believe that what would normally be a fairly routine appeal may actually be overturned, although Burberry is confident that it will be successful. The fashion industry is also keeping a close eye on the proceedings - the editor of Vogue China was quick to comment, stating that: "Today, even on the catwalk or in the catalogues you see around the world, established brands put out products that have a really clear influence from previous products of other brands. Is it influence, or is it coincidence - that they thought similarly?" adding that the digital age and fast distribution of information was making it even harder for brands to protect their trade mark.

Burberry's next steps are to appeal the decision at China's State Admission for Industry and Commerce. The main requirement will be for Burberry to prove that is still uses the trade marked design; a process which requires a lot of evidence such as labels - although as Beijing-based IP lawyer Stan Abrams says of the three-year rule: "That’s a VERY easy case to win for trademark owners; all you need to do is submit evidence of usage, and the bar there is extremely low. I believe even a simple advertisement would have sufficed."