Baker & McKenzie Advises Harley-Davidson on a Groundbreaking Case Involving the Protection of Unregistered Trademark in China
Deal Announcement
January 28, 2010
Hong Kong, 28 January 2010 – Baker & McKenzie McKenzie’s award-winning intellectual property team recently advised Harley-Davidson in a groundbreaking case in China involving the protection of copyright in the unregistered trademark, namely “Ha Lei in CC” (Harley in Chinese). The case resulted in a victory for Harley-Davidson before the Beijing Higher People's Court (“HPC”), which upheld the initial Intermediate People’s Court ruling that Chrome Horse and the various related parties (the “defendants”) have committed trademark infringements and acts of unfair competition (including false advertisements). The Intermediate People’s Court had ordered, among other things, for the respective defendants to stop using "Ha Lei in CC" as an enterprise name and to cease any false advertisement activities. The initial judgment had also ordered the defendants to pay damages amounting to a total of RMB 165,000.
The HPC judgment is significant in that, the HPC took the view that due to the extensive publicity in China, the unregistered "Ha Lei in CC" mark has become a transliteration of “HARLEY”. As such, the use of "Ha Lei in CC" by the defendants' store infringed upon Harley-Davidson’s exclusive right to use the registered trademark, namely “HARLEY”.
The Baker & McKenzie team was led by head of the intellectual property group in Hong Kong and China, Loke-Khoon Tan and associate Andrew Sim.