Burberry’s Fight to Keep their Tartan Trademark in China

Burberry is once again engaged in a legal battle in China. This time, the UK luxury goods manufacturer is fighting to retain rights to its red and black tartan trademark. The company is in danger of losing the checkered pattern, which is almost synonymous with its brand, because they have not used it for the last three years.

Their registration for the trademark would not have expired until 2020, but due to its inexistent use in the past three years, competitors now stand the chance of owning it.

In Burberry’s case, their greatest threat to the ownership of the trademark is Polo Santa Roberta. The two companies have been engaged in legal feuds in the past years over trademark ownership. The most recent of which is the 2010 case Burberry won over Polo Santa Roberta’s use of confusingly similar check pattern designs.

Burberry is adamant about losing their tartan pattern in China, and for good reasons too. Last year, Chinese consumers were the biggest purchasers of luxury goods. Data compiled by news agency Bloomberg L.P. shows 39% of Burberry’s income is from the Asia Pacific. Connecting the dots presents the picture of China as a key market (possibly the most important) in the Asia Pacific region.

Up for grabs? Burberry is fighting to keep their tartan trademark.

Burberry and the Chinese Trademark Law

Article 44 of the Trademark Law of the People's Republic of China states that: “Where any person who uses a registered trademark has committed any of the following, the Trademark Office shall order him to rectify the situation within a specified period or even cancel the registered trademark: where the use of the registered trademark has ceased for three consecutive years.”
This means that any individual or organization can apply for the revocation of a trademark if it has not been used for the past three years. Currently, Polo Santa Roberta is increasing its campaign in Chinese courts to acquire the tartan pattern.

The Fight for the Trademark Right

The non-use petition usually takes one to two years to be decided by the Chinese court. If Burberry loses the battle, it will be a huge blow to its marketing strategy in the Asia Pacific region.
This recent case is not a unique one. It is quite common for individuals and businesses in China to keep track of the unused trademarks to petition for their cancellation. They are hoping to capitalize on the name the brand owners have or force them to purchase their registration.

This is a form of trademark squatting that is quite prevalent in China. There are newly proposed amendments to the Chinese trademark law but it does not seem to revise the non-use clause.

Protecting Your Own Brand

Big names are not the only targets of unscrupulous companies and individuals in China. Even small and mid-sized businesses are not safe. Losing a trademark is a huge roadblock to growth. If somebody gains “lawful” ownership of your trademark, you will no longer be able to manufacture, sell, or do research in China.

China is a rising giant, it has now moved past its slumbering days. If you plan to expand in the country, you need the help of a legal team that can help protect your rights. China has one of the most complex trademark laws and it is best that you engage the help of a local firm to do business successfully.