Why Burberry is Fighting for its Trademark in China

Nov 28, 2013

Why Burberry is Fighting for its Trademark in China

In one of the more noteworthy intellectual property setbacks for a foreign brand in China, Burberry is fighting to keep control of its signature “Haymarket Check” tartan pattern. To understand why, one most look back to a years-long dispute between the U.K. luxury brand and a Chinese brand with the rather un-Chinese sounding name of Polo Santa Roberta.Chen Beiyuan, an attorney who represents the company based in the southern Chinese city of Guangzhou, told China Real Time this was the first legal decision in favor of Lubida Polo Production Co., which owns the brand Polo Santa Roberta,  in mainland China following a nine-year trademark dispute between the two.

“The check pattern is just a simple geometric pattern. I don’t think Burberry has the right to keep it exclusively and ban other producers from using it,” said Mr. Chen.

Burberry is appealing China’s decision on the trademark, a spokesman said, adding that trademark authorities’ decision relates only to leather goods that use the pattern. The spokesman said that China’s decision won’t take effect ahead of Burberry’s appeal.

Until this month, Polo Santa Roberta had trouble convincing officials in other venues of the merits of its argument. The maker of handbags and clothing often sporting tartan lost a dispute with Burberry in 2010 in a Hong Kong court. The judgment concluded that Polo Santa Roberta’s designs “were not novel at the time of registration” and revoked them from the city’s designs registry.

In February 2012 the Chinese company applied with Chinese trademark authorities to revoke Burberry’s claim to the tartan in the country dating back to 2009. Chinese trademarks can be revoked if they aren’t used for three years, and anybody can apply to terminate them, according to Chinese trademark law.

Mr. Chen said the legal fight had taken a toll on the Chinese company. “Burberry has been suing Polo Santa Roberta all over in the mainland, Hong Kong and Taiwan. It has caused huge damage to Roberta’s normal production and sales, as well as to the image of its brand,” he said.

Wang Wanjun, a spokesman for Polo Santa Roberta, the dispute had hobbled its own efforts in China. “Our company started in 1986 and did well in Hong Kong and Taiwan,” he said. “We once reached over 30 million yuan ($4.9 million) in sales for one month.”

But the dispute with Burberry, which he said began in 2004, hurt its brand, Mr. Wang said. “You’ve never heard of our brand in mainland China, have you?” he said, adding that the company estimated it had been damaged to the tune of 500 million yuan. “That might sound like a crazy number, but I would say it doesn’t even cover all the losses from the past nine years.”

About bambooinnovator
Kee Koon Boon (“KB”) is the co-founder and director of HERO Investment Management which provides specialized fund management and investment advisory services to the ARCHEA Asia HERO Innovators Fund (www.heroinnovator.com), the only Asian SMID-cap tech-focused fund in the industry. KB is an internationally featured investor rooted in the principles of value investing for over a decade as a fund manager and analyst in the Asian capital markets who started his career at a boutique hedge fund in Singapore where he was with the firm since 2002 and was also part of the core investment committee in significantly outperforming the index in the 10-year-plus-old flagship Asian fund. He was also the portfolio manager for Asia-Pacific equities at Korea’s largest mutual fund company. Prior to setting up the H.E.R.O. Innovators Fund, KB was the Chief Investment Officer & CEO of a Singapore Registered Fund Management Company (RFMC) where he is responsible for listed Asian equity investments. KB had taught accounting at the Singapore Management University (SMU) as a faculty member and also pioneered the 15-week course on Accounting Fraud in Asia as an official module at SMU. KB remains grateful and honored to be invited by Singapore’s financial regulator Monetary Authority of Singapore (MAS) to present to their top management team about implementing a world’s first fact-based forward-looking fraud detection framework to bring about benefits for the capital markets in Singapore and for the public and investment community. KB also served the community in sharing his insights in writing articles about value investing and corporate governance in the media that include Business Times, Straits Times, Jakarta Post, Manual of Ideas, Investopedia, TedXWallStreet. He had also presented in top investment, banking and finance conferences in America, Italy, Sydney, Cape Town, HK, China. He has trained CEOs, entrepreneurs, CFOs, management executives in business strategy & business model innovation in Singapore, HK and China.

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