Trademark Infringement: Don’t imitate Vans Sidestripe

California brand Vans is the label that springs to mind when you think of skate shoes. Vans’ two most recognizable design elements are the “Off the Wall” logo - usually located on the tongue or heel tab of its shoes, with its text set within an old-school skateboard – and the Sidestripe trademark, which runs along the side of the sneakers. The Sidestripe, sometimes referred to as the “jazz stripe”, appeared for the first time in 1967.

Recently in China, Vans succeeded in a litigation case which confirmed the trademark infringement against Vans’ registered trademark for Sidestripe, namely No.8606383 “”.

Vans claimed the trademark protection for No. 8606383 “” in class 25 covering shoes and other goods since September 14, 2011. As a distinct mark of the Vans brand, it has enjoyed high reputation and economic value through long-term use and promotion.

The Defendant was established on September 22, 1999, and its business scope include manufacturing and sales of shoes.

On September 6, 2017, the Ruian City Market Supervision Administration Bureau (“Ruian MSA”) inspected the defendant’s business premises and found 1950 pairs of shoes bearing the same logo with Plaintiff’s trademark on the spot. Again, on September 16, 2019, Ruian MSA seized 930 pairs of shoes with the “” logo produced by the Defendant. Later on October 23, 2020, Ruian MSA found 540 pairs of shoes with the “” and “” logos produced by the defendantand 1200 uppers with the “” logo again.

The Court deemed the alleged infringing product prominently used the "", "", "" and other logos on the shoe surface, which is a trademark use behavior. Such logos constitute similar mark to Plaintiff’s trademark No.8606383 “” and sufficiently confusing.

Photo by Victor Filemon Lopez Sanchez from Pexels

The use of similar trademarks on producing and selling the alleged infringing products constitutes the trademark infringement against Plaintiff’s trademark right, and should bear civil liability for stopping the infringement and compensating for losses.

Regarding the amount of compensation, since the Plaintiff failed to prove the losses suffered by the infringement, the benefits the Defendant received due to the infringement, and the amount of trademark license fees, thus the statutory compensation should be applied to this case.

When determining the amount of compensation, the multiple and serious circumstances of the infringement shall be fully considered. After being punished in an administrative penalty for infringement, the Defendant continues to commit the same or similar infringement again. The subjective maliciousness is obvious and the circumstance is serious, thus the punitive damages should be applied.

Therefore, the court finally determined that the defendant should compensate the plaintiff’s economic losses totaling RMB 1,000,000 (including reasonable expenses).

Photo by Maria Fernanda Pissioli on Unsplash

Comments on Vans case

Vans’ trademark protection for its iconic distinctive element provides more legal bases when defending the rights against the counterfeiters or/and infringers. This reminds the rights holders not to ignore the iconic elements on the product. If there is a function of distinguishing the source of goods, trademark protection for corresponding logo should be taken into consideration as early as possible to provide more powerful support for future rights protection.

Secondly, what is worth discussing is the application of punitive damages. On March 3, 2021, the Supreme People's Court (SPC) released a Judicial Interpretation on the Application of Punitive Damages in the Trial of Civil Cases Involving Infringement of Intellectual Property Rights, which further clarifies how to apply the punitive damages in judicial practice. The aforementioned Vans case is a typical situation where punitive damages are applied according to the Judicial Interpretation.

According to the Judicial Interpretation, the trial on punitive damages mainly follows the following sequence for the time being:

Determining the established of infringement → Judging subjective intention* → Judging the seriousness of the circumstances* → Determining the compensation base → Determining the multiple of compensation (1 to 5)

Note: Undoubtedly, subjective intention and serious circumstances are the mainfactors to determine the punitive damages. In practice, it is inevitable that there are overlaps between "intention" and "serious circumstances", which need to clarify in the future jurisprudence and cases.  

Key elements from practice perspective

With the issuance of law including punitive damages and corresponding judicial interpretation, more and more cases start applying punitive damages. In the context of strict protection of intellectual property rights, it is worth thinking about how to obtain punitive damages in litigation for the right holder.What you can do includes but is not limited to the following actions:

1. Sending C&D letter to the infringer before the lawsuit

If the infringer still does not stop the infringement after receiving the letter from the right holder, it may be preliminarily determined to be "intentional".

2. Applying administrative complaints activelyAccording to the Judicial Interpretation, if the same or similar behavior is executed again after administrative punishment, it can be determined that the “circumstance is serious”.

3. Enriching the types of infringement evidence

In some cases, if the infringer commits the infringement by means of unfair competition, it can be regarded as serious circumstance. For example, the use of the registered trademarks as domain names, corporate name, and similar decorations to conduct false publicity. Therefore, if it is found that the behaviors of infringer may constitute unfair competition, the right owner shall fix such evidence together and actively claim in the litigation.

4. Actively initiating criminal-related civil litigationAccording to the Judicial Interpretation, the defendant committed acts of piracy and counterfeiting of registered trademarks is “intentions”. In some cases, reaching the criminal standard may directly meet the "serious circumstances". Therefore, the possibility of obtaining huge compensation judgments in criminal-related civil lawsuits has greatly increased, which encourage the right owner to initiating criminal-related civil litigation actively.