Preventing Infringement at Its Source:The MICHAEL KORS Case Study

Source: IPR Daily

During the process of brand protection, timely and effective actions against malicious trademark registrations are crucial for safeguarding brand rights. More and more infringers are preemptively registering the copied logos they actually use as trademarks. These copied logos often undergo a series of meticulous modifications, such as rearranging characters or altering the proportions of the logo, ultimately bypassing examination standards and gaining registration. In practice, if a brand owner encounters an opposing party holding a valid but maliciously registered trademark during their enforcement actions, the difficulty and cost of defending their rights will significantly increase. Consequently, brand owners are compelled to expend considerable effort, frequently initiating trademark oppositions and invalidation procedures to eliminate malicious registrations. However, once infringers become aware of these actions, they often respond by submitting a large number of new trademark applications at a low cost. These new applications typically involve altered copying techniques, continually changing forms to enter the examination process, and attempting to secure registration through sheer luck. As a result, a protracted "war of attrition" unfolds, posing a significant challenge for brand owners in their efforts to trace the source and safeguard their rights.

Recently, Chang Tsi & Partners successfully represented the owner of renowned luxury handbag brand MICHAEL KORS━(Switzerland) International GmbH (hereinafter referred to as "Michael Kors Company"), helping them achieve a significant victory in brand protection. This success precisely addressed and overcame the aforementioned challenges and difficulties.

1. Case Overview

A Hong Kong company, UK MK Company, applied for the registration of several trademarks identical or similar to the "", "", and "MICHAEL KORS" series trademarks, such as "MICAREL KMOR", "MICAREL KMOR MK", as well as "", "", "", and "" trademarks. After these trademarks were approved, UK MK Company authorized Wenzhou Company and Suzhou Company to produce, sell, and promote backpacks with infringing marks. These backpacks not only bore infringing marks "", "", and "" but also used background patterns highly similar to the "MK monogram pattern" of Michael Kors Company, and the shape design of the backpacks was nearly identical to that of MICHAEL KORS brand bags.

In 2021, Michael Kors Company filed a trademark invalidation application with the China National Intellectual Property Administration (CNIPA) against the malicious registration of the "MICAREL KMOR" trademark owned by UK MK Company. In 2022, after examination, CNIPA declared the trademark invalid. Subsequently, UK MK Company, dissatisfied with the decision, filed a lawsuit with the Beijing Intellectual Property Court. Until February 2024, the Beijing High People's Court ultimately rejected UK MK Company's lawsuit, ruling that "MICAREL KMOR" and "MICHAEL KORS" are similar trademarks used on similar goods, which would cause confusion if coexisting in the market, and thus should be declared invalid. However, from 2021 to 2024, UK MK Company did not cease its malicious trademark applications, continuously submitting various altered designs, spanning from Chinese to English and across numerous categories. Meanwhile, backpacks with infringing marks were still being sold in the market as of March 2024.

In response to the above situation, Michael Kors Company commissioned Chang Tsi & Partners to send cease and desist letters to UK MK Company and Wenzhou Company, explaining the infringing actions and consequences, and demanding an immediate halt to all infringing activities. When the communication through the cease and desist letters failed, Michael Kors Company entrusted attorneys Simon Tsi and Michael Fu of Chang Tsi & Partners to file a lawsuit with the Changshu People's Court in Jiangsu Province, alleging trademark infringement and unfair competition. They demanded that the companies cease all infringing activities and compensate for economic losses and reasonable legal expenses totaling CNY 1 million.

2. Key Points of the Judgment

After a thorough trial, the Changshu People's Court in Jiangsu Province rendered a first-instance judgment, holding the following:

（1） Similarity of Trademarks: The "MICAREL KMOR" trademark shares the same initial letters as "MICHAEL KORS", with an identical number of letters and only minor differences in specific letters. The overall combination of letters is similar, leading to a resemblance in both structure and pronunciation. Additionally, the "", "", and "" marks used on the "MICAREL KMOR" bags produced and sold by the defendants are only slightly different from Michael Kors Company's "" and "" trademarks, differing merely in the addition of circles and the connected style of the letters M and K. The use of these infringing marks on bags is likely to cause confusion. The defendants' actions constitute an infringement of Michael Kors Company's exclusive rights to its registered trademarks.

（2） Unfair Competition: Evidence on record shows that Michael Kors Company has extensively and continuously used the "MK monogram pattern" on its bags, establishing a stable association between the pattern and its products. This pattern is recognized as a distinctive trade dress with a certain level of influence. The packaging of the infringing products uses a nearly identical "MK monogram pattern," which, under normal public attention, is highly likely to cause confusion or misidentification, constituting unfair competition.

（3） Malicious Registration: Michael Kors Company has extensively promoted the "MICHAEL KORS" series of trademarks, which have gained significant recognition and influence in the bag industry. Despite this, UK MK Company registered numerous trademarks identical or similar to the "MICHAEL KORS" series across various categories without providing reasonable explanations for their registration intentions or the meanings of these trademarks. Even after the "MICAREL KMOR" trademark was declared invalid, UK MK Company persistently applied for registrations of this and other altered trademarks. This forced Michael Kors Company to defend its rights through trademark oppositions, invalidation requests, administrative litigation, and the present civil lawsuit, thereby disrupting its normal business operations. UK MK Company's actions of malicious registration violate the principle of good faith, disrupt the normal trademark registration management order, damage fair market competition, and infringe upon Michael Kors Company's legitimate rights, constituting unfair competition. UK MK Company must immediately cease applying for registrations of trademarks identical or similar to "MICHAEL KORS", "", and "".

（4） Consideration of Circumstances: In this case, the court emphasized the following factors: (1) The case involves malicious, repeated, and source-based infringement with evident subjective malice; (2) The defendants sold infringing products through multiple channels both online and offline, causing actual consumer confusion and severe consequences. Considering the reasonable and necessary expenses incurred by Michael Kors Company to stop the infringement, the court fully supported its claim for CNY 1 million in compensation.

3. Our Lawyer’s strategy

This case is a typical example of trademark infringement and unfair competition, requiring creative legal solutions at every stage, including legal analysis, practical details, and case progression. Some notable points include:

（1） Service of Process on a Hong Kong Company: One of the defendants, UK MK Company, is not a China mainland-registered entity, which posed challenges for the court in serving legal documents. The legal team conducted in-depth research and eventually contacted a legal representative previously used by the defendant in mainland China to assist with the service of process.

（2） Coordination Between Trademark Administrative and Civil Litigation Procedures: The related prior trademark invalidation case took three years to resolve. Throughout this period, the legal team closely monitored the defendant's infringing activities and gathered relevant evidence. Upon receiving the second-instance judgment of the administrative litigation declaring the trademark invalid, the infringing trademark was promptly included in the civil lawsuit, significantly increasing the chances of success in this case.

（3） Preventing Malicious Trademark Applications at the Source: Beyond conventional methods such as invalidation declarations and trademark oppositions, the brand owner can also file a civil lawsuit against the malicious applicant under the Anti-Unfair Competition Law, holding them accountable for civil liabilities. Obtaining a court injunction can effectively prevent the emergence of malicious trademark applications from the outset.

（4） Division of Infringement Activities and Liability Allocation: Different parties, such as the registrant of the infringing trademark, the licensee of the infringing trademark, the manufacturer of the infringing products, and the distributors of the infringing products, each play distinct roles in the infringement. When asserting civil liability, the brand owner should carefully analyze the relationships, specify the roles, and make targeted claims.

Chang Tsi & Partners conducted a comprehensive assessment of the case details, continuously monitored the progress of the defendant's infringing activities, and decisively initiated civil litigation at the appropriate time. Through relentless efforts, the legal team not only helped the client obtain an injunction against malicious trademark applications but also persuaded the court to fully support the claim for CNY 1 million in compensation. This case provides valuable practical experience for handling similar cases in the future.

 Source: IPR Daily

Author：Simon Tsi, Michael Fu and Bonnie Wang from Chang Tsi & Partners