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May 2018
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Chang Tsi & Partners represented Skechers v. Spieth & Wensky regarding the trademark “S” infringement case

Author: Ason Zhang, Zhiling Zhao

On Jan. 22th, 2018, the Fujian Province High Court ruled on the first instance of Skechers v. Spieth & Wensky regarding the trademark “S” infringement case. Skechers won the lawsuit and was awarded damages of RMB3 million. The case was reported by China Intellectual Property News, China Industry & Commerce News and Beijing Business Today. The China Industry and Commerce News cited in the report the evaluation of the case:

 

"This result has played a positive role in cracking down on infringement, safeguarding the legitimate rights and interests of trademark owners and consumers, and is conducive to promoting the regulation of intellectual property rights. This a positive development in the creation of a fair, legal, and healthy business environment."

 

The Defendant Spieth & Wensky, without Skechers authorization, used the variant of the mark licensed by Quanzhou Bohai Shoes Industry Co., Ltd. in the manufacture and distribution of products. The mark used was confusingly similar to Skechers famous “S” logo. The Defendant also copied the trade dress of Skechers famous product D’Lites, and misrepresented the source of their products. All these actions constitute trademark infringement and unfair competition. The first instance judgment overruled all of Skechers claims. At this crucial moment, Chang Tsi & Partners was entrusted to represent Skechers in the appeal. Chang Tsi analyzed the case and concluded that the main reason Skechers lost the first instance case was serious lack of evidence to prove the foundations of their claim. These include evidence to prove that:

 

1) The Defendant Quanzhou Bohai Shoes Industry Co., Ltd. participated in the infringement;

2) The famous status of the Skechers “S” trademark and D’Lites product design;

3) The widespread distribution of Skechers products in China;

4) That the local joint venture is affiliated with the Plaintiff Skechers;

5) The Defendant distributed sneakers that infringe the trade dress of D’Lites and misrepresented the source of their products.

 

The evidence submitted in the first instance was determined to be self-serving and incomplete.

The difficulty in the appeal was that Skechers had lost in the first instance due entirely to its failure to present sufficient evidence. Facing the Defendants’ growing aggression and pressure from losing in the first instance, Chang Tsi promptly developed a comprehensive strategy for the appeal after thorough study and legal research. In the appeal, Chang Tsi emphasized the relationship between the two Defendants and the trademark owner’s legal liability. We collected copious evidence to attest to the reputation of Skechers in China, and how the Defendants inappropriately used the licensed mark. We also stressed the bad faith of the Defendant in its infringement of other intellectual property rights. This strategy was a great success.

 

The appeal court finally ascertained that the Defendants’ conduct constituted trademark infringement and unfair competition. It revoked the first instance judgment and awarded all of Skechers claims in the appeal. The two Defendants were ordered to be jointly and severally liable for monetary compensation of RMB 3 million. Now the final judgment has become effective.

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