Our Litigators of the Week are Finnegan, Henderson, Farabow, Garrett & Dunner partners Danny Awdeh and Douglas "Chip" Rettew, who notched a rare trademark infringement win in China on behalf of Under Armour. 

Working with Chinese co-counsel Chang Tsi & Partners, the Washington, D.C.-based duo prevailed first before the People's Higher Court of Fujian Province and now before the Supreme People's Court in Beijing. 

The high court affirmed the lower court's ruling that Chinese competitor Uncle Martian must cease the use of its copycat "UM" logo on its footwear and apparel and destroy all infringing products and documents. Additionally, the company will be required to pay nearly $300,000 in damages to Under Armour and publish a court-approved statement on the SINA/Webio website.

According to the firm, fewer than 1% of similar cases brought by U.S. companies in China achieve such results.

Awdeh and Rettew discussed the case with Lit Daily.

Lit Daily: Who is your client and what was at stake?  

Danny Awdeh and Chip Rettew: We and Chang Tsi in China represented Under Armour, which had become the subject of a large-scale copycat in China aiming to knock-off its products and logo, capitalizing on Under Armour's hard-earned reputation and tremendous goodwill in China.  

The litigation was against Fujiang Province Ting Fei Long Sports Products Co., Ltd. The company is doing business as "Uncle Martian," which, when transcribed in Chinese characters, mimics Under Armour's Chinese-character name. They were represented by Beijing Zhong Yin Law Firm. 

Under Armour has an incredible fan base in China and the Chinese market is very important to Under Armour. In addition to producing knock-off products, Uncle Martian opened retail stores and adopted marketing all designed to mimic and pass itself off as Under Armour. Thus, the size and scope of the infringement was considerable, and Under Armour acted vigorously to protect its brand and consumers.  

Take us back to the origins of the case, when Uncle Martian staged a high-profile fashion show in 2016 to announce its entry into the athletic apparel industry. How did you get involved and what were your first steps?  

Uncle Martian's fashion show ironically occurred on World Intellectual Property Day (April 26). It went viral almost immediately, prompting criticism around the world, including in China. 

 We began working with Under Armour right away to investigate the state of Uncle Martian's commercial activities and develop a strategy for obtaining preliminary injunctive relief before products hit the shelves.

We began collaborating with Chang Tsi in the early stages of the case.

China doesn't have a reputation as a great champion of intellectual property. What were your claims under Chinese IP law? What are the main differences with U.S. law?  

At the time Under Armour moved for a preliminary injunction, that type of relief was very rarely granted by courts in China. Even in the U.S., a preliminary injunction is an extraordinary remedy that's difficult to obtain. The reported instances of preliminary injunctions granted in IP cases in China was exponentially lower than in the U.S. at the time. As such, we faced a significant uphill battle.  

Under Armour's IP team worked tirelessly and quickly to develop a robust evidentiary record to support and justify the need for a preliminary injunction pending Uncle Martian's imminent commercial launch, which relief was ultimately granted. We had the benefit of partnering with the exceptionally talented Chang Tsi firm in China, whose work on the matter along with their considerable experience and familiarity with the local courts was invaluable.  

You both are based in Washington, DC. What challenges did litigating a case in China present?  

Other than late night and early morning conference calls, our location was irrelevant. We worked seamlessly with Under Armour's talented in-house attorneys in the U.S. and China as well as with the Chang Tsi firm.

Finnegan routinely handles trademark enforcement matters in China, and elsewhere. We are very familiar with the process and have attorneys in our firm fluent in Chinese who specialize in this area. So, we are able to work on U.S. time while our colleagues in China both at Under Armour and Chang Tsi ran with the case on China time. Passing the baton back and forth, we were able to keep the ball moving and efficiently and expeditiously prepare and submit our case.

Tell us more about your co-counsel Chang Tsi & Partners and how you worked together on the case.  

Chang Tsi is a standout firm with a deep and deeply talented bench of experienced litigators. They know the law and China courts inside and out. We worked closely together in collaboration with Under Armour's in-house team to develop Under Armour's strategy before the lower court, including preparing briefs and evidentiary submissions.  

What happened when you brought your case before the People's Higher Court of Fujian Province? In what ways was it similar/ different to a U.S. court?  

There is no discovery in China, which is obviously a huge difference from U.S. litigation. The burden thus fell on Under Armour to investigate Uncle Martian's activities and produce evidence supporting its claims. This is a tall order in general and particularly when positioning the case for rarely granted relief in the form of a preliminary injunction. Fortunately, our colleagues at Chang Tsi were equipped with savvy investigators, experienced in uncovering evidence from the most elusive sources. 

Chinese courts rarely rule in favor of a U.S. company against a Chinese entity in such cases. What were the keys to your success? 

Being prepared and being ready to aggressively defend our client's rights—even in the face of an uphill battle. This, of course, is only possible with a client like Under Armour who was ready and eager to protect its immensely valuable brand when threatened. It did this with an incredibly talented in-house team in the U.S. and China, a well-developed trademark portfolio and enforcement strategy, and outside counsel familiar with its global brand and business objectives.  

Does the decision send a message?

The Supreme Court's decision upholding the lower court's judgment sends an important message to would-be knockoffs and suggests that what was once a rare outcome may become a more common occurrence.    

Looking back, what are some of the lessons learned about how to litigate an IP case successfully in China? Any advice for companies facing similar situations? 

In our experience, those who have had the most success enforcing trademark rights in China have a well-designed plan to protect their legal and business interests in that important market. This does not necessarily mean spending a lot of money, but rather strategically planning ahead in terms of registering marks and thinking long term about how those marks will be used in China.  

What will you remember most about this case?  

I will never forget the shoes debuted in Uncle Martian's "fashion" show.  They were literally genuine Under Armour shoes that we believe were purchased at one of Under Armour's stores in China with decals of Uncle Martin's knock-off marks sloppily pasted over Under Armour's famous logos. Uncle Martian made very little effort to disguise them and brazenly believed that its actions would go unchecked. Not so.