Asia-Pacific Team of the Year: New Balance

L-R: Rory O’Hare, Angela Shi, Daniel McKinnon (all New Balance), Matthew English (Marks and Clerk)

Like all sportswear giants, New Balance (or NB) faces significant enforcement challenges worldwide. Yet, the company’s brand protection team is lean and nimble, comprising six associates (including the head of global brand protection in the United States), two senior counsel in the United Kingdom and China, and three paralegals split between the United States and China.

Reflecting on the challenges facing New Balance, Angela Shi, manager of brand protection, observes: “China continues to be the largest source of counterfeit issues for the New Balance brand and increased efforts toward thwarting the manufacture and distribution of counterfeits are a necessity. A number of litigations have been filed against parasite brands in the past year.”

To date, the company has experienced some notable successes in China. In 2017 the Suzhou Intermediate People’s Court ordered three Chinese defendants to pay Rmb10 million jointly (approximately $1.53 million) in damages and legal costs to New Balance for trademark infringement and unfair competition, one of the highest amounts granted to a foreign rights holder in a Chinese trademark infringement case to date. “Winning this case has given us confidence to continue our proactive brand protection strategy in China,” Shi confides. “Meanwhile, it sent a strong deterring signal to trademark infringers that NB’s brand properties are ‘non–negotiable’ where infringement of any kind cannot be tolerated.”

For Shi, this is a positive endorsement of the company’s efforts. “NB has set out an overall strategy for protection of its core brand properties and won several victories when defending its IP rights in China,” she enthuses. “This provides more and more evidence to show that our company can succeed within the Chinese courts and before the trademark office, with the right strategy and the right local advice.”

In all of these enforcement efforts, a targeted approach was adopted. “Rather than simply enforcing upon the largest volumes of counterfeits per raid, we’ve been working with the commercial teams to designate geographic locations that we want to ‘own’,” Shi explains. “In particular, every quarter we select a few key markets where we will enforce exhaustively in an attempt to flush that market of parasite brands. This strategy will allow us to move with might inside designated regions as opposed to taking a more scattergun approach that, in the past, emphasised enforcement by sheer volume.”

At every step along the way, engagement is critical to success in China – both with officials and partners in the field. On the former, Shi explains: “NB’s senior leaderships have paid visits to the State Administration for Industry and Commerce and the China Trademark Office directly to lobby for stricter examination of marks similar to ‘N’ and ‘NB’. In the meantime, NB continues to file oppositions and invalidation actions by routinely checking the activities of the applicants.”

With respect to external services suppliers, collaborations enable the New Balance team to increase their bandwidth and fight against infringement more effectively: “NB uses a number of global online enforcement service providers to work on a coordinated enforcement strategy that links and prioritises targets. The main advantage is that we can effectively combine online monitoring and enforcement into an entire brand protection strategy using online evidence to identify and build cases against important infringers, and file civil asset recovery cases or criminal cases based on payment records.”

Perhaps the most crucial allies in brand protection efforts reside within the corporate organisation itself. “Our small team has accomplished extraordinary results this past year and we really appreciate the confidence that the global senior leadership has in us,” Shi concludes. “Their trust and support is the motivation for us to move forward.”

Other nominees:

Chivas Brothers

Honeywell International

LG Display

Warner Bros Entertainment