GEN Law is pleased to announce that it has successfully represented its client H.B. Fuller in securing well-known trademark protection in Shanghai courts, China also with the maximum statutory damages awarded under Chinese law. H.B. Fuller is the world’s largest pureplay adhesives manufacturer and is listed on the New York Stock Exchange, with headquarters in Saint Paul, Minnesota, USA. The case centered on a dispute between prior registered well-known trademarks and a later registered similar mark in a different class. This is the first time H.B. Fuller's marks have been recognized as well-known trademarks by Chinese courts — a very meaningful legal victory for the company in terms of combatting copycats, but also a strong proof of the brand’s high reputation in the market commercially.

“This outcome reflects our strong commitment to protecting our brand and supporting fair competition in the marketplace,” said Joanne Sum-Ping, Assistant General Counsel, H.B. Fuller. “We appreciate the professionalism of the Chinese courts. This decision reinforces our confidence in continuing to invest and grow in China while safeguarding the rights of our customers and partners.”

This is not an easy case, especially for a B2B brand. The defendants pre-emptively registered an identical English-language mark of “H.B. Fuller” combined with a highly similar Chinese version in Class 2 for paints, with evident bad faith and clear consumer confusion because they have been making and selling paints under this mark in Chinese market. At the earlier administrative stage, the oppositions and invalidation actions were unsuccessful, as the relevant trademark authorities found that the challenged Class 2 goods were dissimilar to H.B. Fuller’s adhesives in Class 1 and did not recognize the level of reputation necessary for cross-class protection. 

GEN Law then advised H.B. Fuller to file a direct civil lawsuit against the defendants claiming well-known status of its marks in China that should enjoy cross-class protection. GEN Law team and H.B. Fuller's legal department spent tremendous efforts in collecting evidence to prove the strong fame of the “H.B. Fuller” brand in both English and Chinese (including e.g. an extensive market research) as well as the defendants’ large infringing business scale.

After almost 5 years of legal proceedings, both the Shanghai IP Court in the first instance and the Shanghai High Court in the appeal found fully in H.B. Fuller’s favor, recognizing its well-known trademark status, granting a permanent injunction against all the defendants and ordering them to pay the record high RMB 5 million in damages. This is a landmark win for H.B. Fuller and delivers a strong deterrent message in the market against other potential infringers. Even more encouraging is that collection is almost secured to recover all the legal costs and beyond based on a successful preservation of the defendants’ bank accounts and other assets throughout the lawsuit.

GEN Law partners Jerry Xia and Pei Lv played a leading role in this case, with support from associate Yulu Wang.