“THOM BROWNE” Brand Protection: Guangdong High Court Reverses and Awards RMB 7.58 Million in Damages

Recently, the Guangdong High People’s Court rendered a second-instance judgment in the case of Thom Browne Japan Co., Ltd. and Thombrowne (Shanghai) Trading Co., Ltd. v. Dongguan City Apparel Co., Ltd. and two other defendants regarding trademark infringement and unfair competition. The court ultimately ordered the three defendants to jointly and severally pay economic losses and reasonable enforcement expenses totaling more than RMB 7.58 million.

The plaintiff, Thom Browne Japan Co., Ltd., is the rights holder of the “THOM BROWNE” brand. The brand was founded in New York in 2001 by American designer Thom Browne, with the signature elements of classic four-stripe and red-white-blue grosgrain ribbon, enjoying high reputation in the global fashion industry. Thombrowne (Shanghai) Trading Co., Ltd. is responsible for the operation and promotion of the brand in China, having opened more than 30 stores in nearly 20 cities nationwide, as well as official flagship stores on platforms such as Tmall.

The defendants consisted of Dongguan City Co., Ltd., its Foshan branch, and Dongguan City Network Co., Ltd., which were affiliated enterprises. The plaintiffs alleged that the three defendants produced and sold clothing bearing marks such as “TBTHOM”, “TBTHOIVI”, “TBTHONN”, “TBThonn”, and “THOMBONZERO” across more than ten offline and online stores (covering platforms including 1688, Pinduoduo, Taobao, Tmall, JD.com, Douyin, and Kuaishou), and also used elements such as “vertical red-white-blue stripes of the same color four-stripe”, “TB”, and “NEWYORK” on their goods, constituting trademark infringement and unfair competition. Based on these claims, the plaintiffs filed a lawsuit with the Dongguan Intermediate People’s Court, requesting that the three defendants cease infringement and pay economic losses and reasonable expenses totaling RMB 10 million, as well as publish a statement to eliminate adverse effects.

The first-instance court found partial infringement, awarded RMB 5 million in damages, and held that no unfair competition was established. Both parties appealed to the Guangdong High People’s Court.

After trial, the Guangdong High People’s Court made substantive changes to several findings of the first-instance judgment. The court held that Thom Browne enjoys high reputation in the apparel industry. When determining whether marks are similar, the perspective of ordinary consumers must be adopted – after all, when consumers buy clothes, they do not compare letters word by word, but rather look at the overall impression. Following this reasoning, the court deconstructed the defendants’ “counterfeiting tricks” one by one:

“TBTHOM” contains “THOM”, and “TB” is also the initial of “THOM BROWNE”, making the overall mark look like a “simplified version of the famous brand mark”; in “TBTHOIVI”, the “IVI” is essentially a simple deformation of the letter “M” in “TBTHOM”, a change in form but not in substance; the same applies to “TBTHONN”, where “NN” is similarly an intentional imitation; “TBThonn” is even more perfunctory, merely altering the case of the letters; “THOM BONZERO” is highly similar in overall visual impression to “THOM BROWNE”, making it easy for ordinary people to confuse them.

Ultimately, the second-instance court found that all five accused marks constituted trademark infringement and also constituted unfair competition. The court ordered the three defendants to jointly and severally pay economic losses and reasonable enforcement expenses, totaling more than RMB 7.58 million – an increase of RMB 2.58 million from the first-instance award, sounding a wake-up call to all enterprises seeking to “free-ride on counterfeiting and imitation.”