CHANG TSI
Insights
The Dongguan Intermediate People's Court of Guangdong Province recently issued its final judgment in the trademark infringement and unfair competition dispute brought by Edelman Shoe, Inc. ("Edelman") against Mr. Wang and Dongguan Aijing Trading Co., Ltd. The court dismissed the defendants' appeal and affirmed the first-instance judgment in its entirety. This concludes a multi-year enforcement effort by Edelman, represented by Chang Tsi & Partners, resulting in judgments in Edelman's favor at both the first and second instance.
The court held that the defendants had committed trademark infringement and unfair competition, and ordered them to: cease infringement of Edelman's "SAM EDELMAN" series trademarks; cease infringement of the trade dress associated with Edelman's "BAY" shoe style; cease false advertising; cease bad-faith trademark registration and copyright registration; issue a public apology; and pay damages and reasonable expenses totaling CNY 1,000,000.
This outcome reflects the results of Edelman's long-term enforcement efforts, and illustrates a broader pattern observed in the platform economy: a combination of bad-faith trademark registration, imitation of trade dress, exploitation of brand-driven traffic, and procedural harassment. The judgment reflects the continued development of judicial protection for intellectual property rights in China.
Edelman Shoe, Inc. is a subsidiary of Caleres, Inc., a global footwear group. Its Sam Edelman brand is known for stylish footwear, handbags, and boots, with distribution in 32 countries. Since entering the Chinese market in 2015, the brand has grown rapidly and built significant recognition among Chinese consumers.
This growing brand recognition, however, also attracted sustained free-riding conduct. Beginning in 2021, the defendants engaged in a coordinated scheme targeting Edelman's trademarks and products. On one hand, they made modifications to Edelman’s registered trademarks and logos, creating imitation marks that closely resembled the originals while attempting to avoid standard trademark examination criteria, and used these modified marks to register more than twenty similar trademarks and copyrights, apparently seeking to give their conduct an appearance of legitimacy. On the other hand, the defendants used these imitation marks extensively on their products and packaging, and across both offline retail locations and online platforms — including Taobao, WeChat, and Douyin (Chinese version TikTok)— and in some instances fabricated brand history or copied brand narratives, which had the potential to mislead consumers as to the origin of the goods.
This combination of altered-mark registration and multi-channel free-riding is not an isolated occurrence, but reflects a pattern seen in a number of brand enforcement matters: rather than direct copying alone, infringers increasingly construct a layered scheme — modifying marks, registering copyrights, and adopting brand narratives — that can create an appearance of legitimacy for their conduct.
In response to this sustained, multi-front infringement, Edelman pursued a coordinated enforcement strategy, including trademark opposition and invalidation proceedings, evidence preservation, administrative complaints, and civil litigation. As a result, several of the defendants’ trademark applications were disapproved for registration or later invalidated, and the infringing conduct was found unlawful by both the first- and second-instance courts. Trademark enforcement of this kind is often lengthy and resource-intensive, and this matter reflects the importance of sustained enforcement in protecting brand reputation and market position over time.
The second-instance court first confirmed that Edelman holds valid rights in Trademark Registration Nos. 4169315, 13386708, and 61364869 (collectively, the "SAM EDELMAN Series Marks"), all of which remain in force. The court found that the goods at issue fall within the same category as those covered by Edelman's registrations, that the marks used by the defendants on their products, packaging, and in promotional materials were confusingly similar to Edelman's registered marks, and that such use was likely to cause market confusion, establishing trademark infringement. An administrative penalty decision previously issued by the local AMR further corroborated that the defendants' physical retail locations prominently and extensively displayed similar marks, consistent with the civil evidence in the record.
One issue of particular note is how the court addressed a defense that has arisen in a number of similar disputes: the defendants argued that, because they held their own trademark registration, their use of the mark did not constitute infringement. The second-instance court rejected this defense, holding that:
"The defendants' trademark registration had already been declared invalid, and because invalidation has retroactive effect, the mark is deemed never to have conferred trademark rights from the outset. Accordingly, it cannot serve as a defense to infringement."
This finding indicates that registering a similar mark and later relying on that registration as a defense to an infringement claim is unlikely to succeed once the registration itself has been invalidated: a trademark registration certificate does not, by itself, immunize conduct from liability, and any use based on an invalidated registration remains subject to review for infringement on its own merits. As e-commerce, livestreaming, and social media commerce continue to grow, practices such as minor alterations to marks, near-identical naming, and bad-faith registration have become more common, with some parties using trademark applications, copyright registrations, or opposition proceedings in ways that interfere with a rights holder's ordinary business operations. In this matter, the court applied substantive rather than purely formal review of the defendants' registration-based defense, consistent with the broader policy objective of preventing the trademark and copyright registration systems from being used as tools of unfair competition.
Beyond the trademark claims, the court also reaffirmed that Edelman's "BAY" shoe style constitutes protectable trade dress — specifically, "product packaging or decoration that has acquired a certain degree of influence" — under China's Anti-Unfair Competition Law. The court found that the overall design of the "BAY" style, including its upper design, had become recognized among the relevant public as an indicator of product origin, and that the accused products were highly similar in overall color scheme, upper design, insole design, outsole design, and manner of trademark placement, constituting unfair competition.
This finding may be of interest to companies in the fashion and consumer goods sector more broadly. Infringing conduct in footwear, apparel, and cosmetics has increasingly shifted, in some instances, from direct copying of trademarks toward imitation of overall visual style or association with popular product lines, without necessarily attempting to pass off goods as identical to the original. This matter illustrates that, under Chinese law, an overall trade dress that is likely to cause consumer confusion as to origin, or that amounts to free-riding on another's commercial reputation, may fall within the scope of the Anti-Unfair Competition Law — providing an additional potential basis for enforcement beyond trademark rights alone.
The second-instance court also affirmed the damages award from the first-instance judgment. The court noted that although the rights holder's actual losses and the infringers' actual profits could not be precisely determined, the first-instance court's award of CNY 1,000,000 in statutory damages under Article 63(3) of the Trademark Law was reasonable, taking into account the recognition of the marks and trade dress at issue, the duration and scale of the infringing conduct, and the degree of bad faith involved. In addition to damages, the court ordered the defendants to cease the bad-faith trademark registrations and copyright registrations, and to issue a public apology.
This result is broadly consistent with a trend in which IP enforcement in China serves functions beyond compensating for proven loss, including maintaining fair competition and increasing the practical cost of infringement.
The infringing conduct at issue in this matter spanned trademark, copyright, trade dress, false advertising, and both online and offline sales channels. Edelman's enforcement strategy — pursuing trademark opposition and invalidation proceedings, evidence preservation across e-commerce and social media platforms, administrative enforcement, and civil litigation in parallel — addressed these different dimensions of the conduct concurrently.
This matter is consistent with a broader pattern in IP enforcement generally: within the platform economy, addressing systemic, multi-channel infringement often benefits from a coordinated approach across trademark strategy, platform monitoring, evidence gathering, administrative enforcement, and civil litigation, rather than relying on any single enforcement channel in isolation.
This matter — spanning bad-faith trademark registration, coordinated online and offline infringement, and imitation of both trademarks and trade dress — illustrates several practical considerations that may be relevant to brand owners operating in China:
• Early IP protection matters. Companies entering the market may wish to consider securing trademark, copyright, and trade dress protection early. Once a brand gains recognition, it can become a more likely target for free-riding, and addressing infringement after the fact is often more resource-intensive than proactive registration.
• Trade dress and overall brand presentation can warrant separate attention. Consumers often associate a brand with more than its trademark alone, including the visual style of a product, its packaging, and overall aesthetic. As this matter illustrates, the overall trade dress of a well-known product may itself be independently protectable.
• A proactive response to bad-faith registration can be more effective than a purely defensive one. Responding only may not fully resolve the underlying issue; pursuing opposition, invalidation, administrative enforcement, and civil litigation in parallel can more directly address the source of the bad-faith registrations.
• Coordinated online and offline enforcement is increasingly relevant. Infringing conduct frequently spans physical retail locations, e-commerce platforms, social media, and livestreaming channels simultaneously, which may call for coordinated monitoring, investigation, and enforcement across these channels.
From Edelman's discovery of the defendants' registration and free-riding scheme in 2022, to the first-instance judgment in Edelman's favor in 2025, to the final judgment now affirming that outcome on appeal, the timeline of this matter reflects certain practical realities of brand enforcement in China, including that infringement tactics continue to evolve and that a more professional, more patient, more systematic and comprehensive response is often required.
The final judgment reflects the outcome of Edelman's sustained commitment to protecting its brand, and may be of interest as a data point regarding how Chinese courts are currently addressing free-riding, traffic exploitation, and bad-faith registration practices.
Chang Tsi & Partners served as counsel to Edelman throughout this matter.
