Guangzhou Redsun Company Awarded CNY 50 Million (approx. US$ 7,000,000) in Trademark Infringement and Unfair Competition Case against ex-employee
Guangzhou Redsun Gas Appliance Co., Ltd. (‘Redsun Company’) has, since 1993, used ‘Redsun’ as both its corporate name, and the brand name for its highly regarded kitchen and bathroom products. Its registered trademark, ‘Redsun and Silhouette’, has been recognized as a well-known trademark by the Trademark Office.
The Defendant Shi is a former employee of Redsun Company. He left his position in Redsun Company’s marketing department in 2016, and established Guangdong Zhimei Electric Co., Ltd. (‘Zhimei Company’) to manufacture and sell REDSUNHOME integrated stoves and other products. Shi used the sales channels and outlets established by Redsun Company and its distributors for large-scale sales. Zhimei Company's stores sold both Redsun products and its own REDSUNHOME products and displayed two signboards: ‘Red Sun Kitchen and Bathroom’ (the same as signboards used at Redsun Company's store) and ‘REDSUNHOME’ signboards. In addition, Zhimei Company used Redsun Company's after-sales service cards and business cards, as well as misleading slogans such as ‘Redsun Kitchen and Bathroom Upgrade’, ‘Big Brand, New Image, New Model’ in its stores and WeChat public accounts.
In 2017, Redsun Company filed a lawsuit against Zhimei Company and four provincial distributors with the Guangzhou Intellectual Property Court. The Court of first instance determined that the Defendants had engaged in trademark infringement and unfair competition. It held that the infringement was obviously malicious and fully supported Redsun Company’s claim for compensation of CNY 50 million (approx. US$ 7,000,000). Zhimei Company and the other Defendants appealed to the Guangdong Higher People's Court.
The Guangdong Higher People's Court rejected the appeal. It held that before Zhimei Company began its operations, the ‘Redsun’ corporate name had a high reputation and was an "influential enterprise name" for the purposes of the Unfair Competition Law. Zhimei Company used various publicity and marketing methods to confuse the source of commodities, even claiming that Zhimei Company 's REDSUNHOME product was an upgraded version of the Redsun product, which was obviously malicious and could easily lead to confusion among the relevant public. The Defendants’ behaviour thus constituted unfair competition.
Zhimei Company’s use of the REDSUNHOME and ‘Redsun and Silhouette’ trademarks on relevant products (i.e. products in respect of which Redsun Company's ‘Redsun and Silhouette’ trademark was registered) and its use of the domain name ‘www.redsun-gd.com, constituted trademark infringement, causing Redsun Company extremely large economic loss. Further, Zhimei Company had refused to submit full and complete financial books in the lawsuit, which constituted obstruction of evidence, and had continued to sell infringing products after an injunction had been granted by the Court of first instance. This amounted to malicious infringement.
Zhimei Company was ordered to immediately stop the infringement, and compensate Redsun Company for economic loss in the sum of CNY 50 million (approx. US$ 7,000,000) and reasonable fees of CNY 450,000 (approx. US$ 63,696). The four provincial distributors were held jointly and severally liable with the Zhimei Company. So far, the award in this case is the highest that has been made in intellectual property disputes in the home appliance industry.
Shanghai Xuanting Company Succeeds in Unfair Competition and Information Network Communication Right Infringement Case
Recently, the Guangzhou Intellectual Property Court made a final judgment in Shanghai Xuanting Entertainment Information Technology Co., Ltd. (‘Xuanting’) v Guangzhou Shenma Mobile Information Technology Co., Ltd. ('Shenma’) and the Guangzhou Alibaba Literature Information Technology Co., Ltd. (‘Alibaba Literature’) holding the Defendants liable for unfair competition and infringement of the right to network dissemination of information provided for in Art.2 of the Regulation on Protection of the Right of Communication through Information Network).
Xuanting was the copyright owner of the works Triple Blood Song and School Flower's Personal Master (hereinafter collectively referred to as the works involved). In 2016, it discovered that users of the Shuqi Novels App, a successful e-book app, were able to read the works involved online, using Shenma Search. They were also able to download a large number of works, including the works involved, to their mobile phones for offline reading. The provider of Shenma Search was Shenma, and the provider of the Shuqi Novels App was Alibaba Literature. Xuanting company sued both Shenma and Alibaba Literature in the Tianhe District People's Court of Guangzhou City in Guangdong Province for infringement of the right to network dissemination of information in respect of the works involved.
The Tianhe District People's Court held that Shenma Search allowed the works involved to be read without Xuanting’s permission. Shenma had, therefore, made the works available through an information network and infringed Xuanting’s right of communication through an Information Network.
As to whether the Defendant Alibaba Literature constituted a joint infringer, the Court held that as Shenma Search was the only search engine embedded in the Shuqi Novels App, Alibaba Literature knew, or should have known, that it enabled users to read online or download the works involved. There was a common meaningful contact between Alibaba Literature and Shenma.. The Shuqi Novels App directly provided users with novels online, and users could choose to jump directly from the Shuqi Novels App to Shenma Search, which indicates that they have an in-depth cooperation. Moreover, the Shuqi Novels App used Shenma Search to broaden the user source and increase the number of visits, so Alibaba Literature shared the benefits with Shenma company. Therefore, Alibaba Literature was a joint infringer.
Both Shenma and Alibaba Literature appealed to the Guangzhou Intellectual Property Court.
The appeal was dismissed. The Court held that Shenma’s provision of the works involved, via the Shenma Search, without Xuanting’s permission. infringed Xuanting’s right to network dissemination of information. Alibaba Literature had engaged in in-depth cooperation with Shenma to make the works available via the Shuqi Novels App. This act of providing related services to Shenma constituted a joint infringement. Alibaba Liuterature was, therefore, jointly and severally liable.
无锡日升体育用品公司（下称日升公司）第8511637号诉争商标 “林书豪Jeremy S.H.L.”（下称：诉争商标）获准注册日为2011年8月7日，核定使用在第25类服装、童装、婴儿全套衣等产品上。2012年9月20日，林书豪提出无效宣告请求。2014年3月3日，原商标评审委员会作出第25692号裁定书，认定诉争商标的注册损害了林书豪的姓名权，裁定撤销诉争商标。日升公司不服被诉裁定，向北京市第一中级人民法院起诉。北京一中院判决驳回日升公司的诉讼请求。日升公司不服，向北京高院提起上诉。
American basketball player, Jeremy Lin, succeeds against trademark squatter
After a long-running battle, Michael Jordan recently prevailed over a trademark squatter. Now, Jeremy Lin, the first American of Chinese or Taiwanese descent to play for the NBA, has done the same.
In 2010, before Lin had become famous, Wuxi Risheng Sports Utility Co., Ltd, (‘Risheng’) a sports ball maker in eastern China, applied to register the following mark as a trademark in respect of clothing, children’s clothing and other products in Class 25.
The application was approved for registration in 2011. In September 2012, Lin sought to invalidate the registration on the ground that it infringed his name right. In March, 2014, the original Trademark Review and Adjudication Board of the SAIC (now the Trademark Office under the CNIPA) found in favour of Lin, declaring Risheng’s registration invalid. Risheng filed an administrative lawsuit with the First Intermediate People's Court of Beijing Municipality, which was unsuccessful. It then appealed to the Beijing Higher People’s Court.
Risheng’s appeal has been dismissed and the decision of the First Intermediate People’s Court upheld. The Beijing Higher People's Court held that Jeremy Lin was entitled to seek legal protection of his name rights in China. Before the application date of the disputed trademark, he was known to the Chinese public as the first Chinese basketball player to enter the NBA. It can be assumed that he already had a certain reputation among the Chinese public as did the Chinese translation of his name ‘Lin Shuhao’. Risheng applied for registration of the disputed trademark without permission, and its use of the mark would be likely to lead members of the relevant public to believe that relevant products bearing the mark had a specific connection with Jeremy Lin. Therefore, the Beijing Higher People's Court dismissed Risheng’s appeal and maintained the judgment of the first instance.
Gree awarded Compensation of CNY 40 Million (approx. US$ 5,600,000) in Patent Infringement action against Aux
Gree Electric Appliances, Inc., a major appliance manufacturer and the world’s largest residential air-conditioner manufacturer, headquartered in Zhuhai in Guandong province (‘Gree’), has succeeded before the Guandong Higher People’s Court in patent infringement proceedings against Ningbo Aux Air Conditioner Co Ltd (‘Aux’). The damages award in the case is one of the highest IP awards to date in the home appliance industry.
In 2017, Gree brought a patent infringement action before the Guangzhou Intellectual Property Court against Aux and Jingdon Trading Co., Ltd (‘Jingdon’). It claimed that Aux had intentionally and repeatedly infringed its patent for “an indoor air conditioner unit” (Patent No.: ZL200820047012.X) by making, selling, and offering for sale eight types of air conditioner, including KFR-35GW/BpTYC1+1, and that Jingdong had infringed its patent by selling and offering for sale the air conditioners manufactured by Gree. Gree sought an Order that Aux immediately cease the infringement and pay compensation of CNY 40 million (approx. USD 5,600,000), and that Jingdong cease selling and offering for sale the infringing air conditioners.
In April 2018, the Guangzhou Intellectual Property Court held at first instance that the alleged infringing product fell within the scope of Gree’s patent, and that Aux’s prior art defence could not stand. Gree had provided preliminary evidence of the gains Aux had made from the infringement, but, as the relevant books of account were mainly held by Aux, the Court ordered it to submit the relevant material within a specified time. Aux provided statistical data relating to only four types of the infringing product and refused to provide the original material on which the statistical data was based. The Court, therefore, decided to award damages on the basis of the evidence provided by Gree in relation to both online and direct sales. It ordered Aux to cease the infringement and compensate Gree in the sum of CNY 40 million (approx. US$5,600,000), and Jingdon Trading to cease the infringement.
Aux appealed to the Guangdong Higher People's Court. In 2019, the Guangdong Higher People's Court rejected the appeal and upheld the first instance decision.
Aux then lodged an Enforcement Objection Application with the Intermediate People's Court of Guangzhou City, pursuant to Art.224 of the Civil Procedure Law, requesting suspension of execution of the civil judgment and postponement of payment of the full amount of compensation. The Court rejected the application and Aux applied to the Guangdong Higher People’s Court for reconsideration.
In March 2020, the Guangdong Higher People's Court upheld the Intermediate People’s Court’s decision and proceeded to enter the ruling.