Recently, led by Wenzhou Intermediate People’s Court, the Top 10 Cases of IP Rights Protection in Wenzhou for the Year 2020 were selected from the great many cases involving protection for IP rights that were recommended by members of the Wenzhou Joint Conference on Intellectual Property Protection, after rounds of screening and solicitations for comments from the members.

The trademark infringement and unfair competition case that Watson & Band represented for the rights owner against a pneumatic equipment company, an automation equipment company and two individuals in Shanghai, was successfully selected into the said Top 10 Cases.

[Reasons for Selection]

With the high-speed development of the Internet era, a great many lawbreakers opened stores on online platforms out of the purpose of “free rides” on well-known trademarks and sold infringing products in those stores. Due to the diversified means of infringement, the unspecific scope of the infringement, the uneasily eliminated influences of the infringement, enormous losses could easily be caused to the legitimate rights owners. In this case, through determination of the infringement upon the well-known trademark and based on the analysis of the sales revenue of the online store, the court finally granted 2,100,000 RMB as the compensation that the infringing parties must pay for their infringement. Such judgment showed the court’s equal protection for the legitimate rights and interests of both domestic and foreign parties, the strengthened penalties upon malicious infringement upon the exclusive rights to use registered trademarks and the strong deterrent effect on similar infringement upon trademark rights.

[Case Briefing] The plaintiff is a world renowned company engaging in the R&D, manufacturing and sale of pneumatic equipment. Its registered trademark was recognized as a well-known trademark by the TRAB of the SAIC in 2011. The defendants, two companies and their legal respective representatives, without authorization of the plaintiff, promoted and displayed the plaintiff’s said trademark on their official websites and in their stores on Alibaba, and labeled marks that were identical or similar to the plaintiff’s trademark on the physical products they sold, the product packaging and the stickers of the products. Furthermore, one of the defendants even used the plaintiff’s introduction on its brand on its own official website and linked the website to the plaintiff’s official website, and asserted itself to be “a distributor of the Japanese xxx branded products” in its online store. During the three years from 2016 to 2019, the two defendant companies gained sales revenue from the infringing products sold in their online stores in the total amount of 4,430,000 RMB. The plaintiff believed that the two defendant companies had infringed its exclusive rights to use the registered trademark and constituted unfair competition and therefore sued them before the court, pleading that (i) the defendants cease their infringement; (ii) the defendants transfer the infringing domain names to the plaintiff; (iii) the defendants publish apologies on Yueqing Daily to eliminate the influences of the infringement; (iv) the defendants pay compensation for the plaintiff’s economic losses in the amount of 3,000,000 RMB. Both sides disagreed and filed appeals with the Intermediate Court. During the appeal, the plaintiff withdrew its appeal. The judgment and ruling has taken effect now.

Watson & Band’s team for this case:

Joe Liu (Partner)

Ru Ling (Attorney at Law)