In early October, the British luxury goods brand Alfred Dunhill announced that it had secured a major victory in a long-running trademark battle in Chinese courts against a domestic menswear firm. Alfred Dunhill was awarded 10 million RMB ($1.47 million USD) by the Foshan Intermediate People’s Court, Guangdong Province, against Chinese menswear brand Danhouli for infringing upon Alfred Dunhill’s well-known “long tail mark” logo used around the world. Along with trademark infringement, the Chinese court also determined that Danhouli was guilty of unfair competition practice and deemed the individual in charge of Danhouli as being personally liable for the infringement.
According to a press release issued by global IP consultancy firm Rouse, Danhouli had registered a trademark in China for the use of its brand name in a plain font. However, Danhouli had been utilizing a variation on its registered mark for several years which bore a striking similarity to the elongated lettering used in Alfred Dunhill’s mark. Both logos make use of elongated tails on the lowercase letters “d,” “h” and “l,” with Danhouli also elongating the final “i” in a way that mirrors the elongated double “ll” at the end of Dunhill.
Along with the use of the infringing mark, Danhouli had also established a shadow company headquartered in Hong Kong under the name “Dunhill Group” which managed corporate business activities for the Danhouli brand. Although Alfred Dunhill had been previously successful in shutting down the Hong Kong company, the brand continued to engage in trade across the Chinese mainland. In all, Danhouli operates more than 200 franchise stores across 61 Chinese cities and generates annual revenues of 100 million RMB ($14.7 million USD).
The press release following the Alfred Dunhill trademark victory noted that the damages award issued by the Chinese court was “uncommonly large” compared to other trademark damages award handed out in China and significantly larger than the average damages awarded in trademark rulings in that country. The damages award in this case equals the award handed out last August to American shoe and athletic apparel company New Balance; the 10 million RMB awarded to New Balance against three domestic shoemakers infringing on New Balance’s slanted “N” logo was, at the time, the largest damages award ever handed out by Chinese courts and about three times higher than the maximum statutory damages for trademark infringement under Chinese law at that time.
Alfred Dunhill hailed the ruling as “another key milestone” in China’s increasing crackdown on intellectual property in recent years, pointing out that the country has made significant strides over the past decade in developing a strong IP rights system. Last June, Chinese President Xi Jinping made a very public proclamation that IP infringers would “pay a heavy price,” marking a major shift in the government’s rhetoric on infringement matters in that country. China’s IP system improved its ranking in this year’s U.S. Chamber of Commerce’s Global IP Index, reflecting China’s advances in growing its IP system. This year’s IP index noted that China’s IP system still tends to favor domestic entities over foreign rights holders, but the Alfred Dunhill and New Balance cases are at least some indication that China may be addressing that shortcoming as well.
Alfred Dunhill CEO Andrew Maag issued the following statement after the Chinese ruling on Danhouli’s trademark infringement:
“Today’s ruling demonstrates Alfred Dunhill Ltd.’s unequivocal resolve in tackling infringement of our IP rights in China and globally. Our system of IP management and enforcement is second to none. With the support of Rouse and Lusheng Law Firm, we’ve secured a fair and proportionate ruling.”
Alfred Dunhill’s Chinese litigation in this case was supported by international IP consultancy firm Rouse and Chinese legal partner Lusheng Law Firm. Rouse’s Global CEO Luke Minford issued this statement following the ruling:
“This win for Alfred Dunhill is just reward for all their hard work protecting their brand in China. The decision should reinforce to other brand owners that China is finally getting serious about protecting foreign brands.”
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