29 January 2021
Mijia trademark infringement dispute case of second instance concluded
Date: 2020-11-20
Previously, Hangzhou Lian'an Security Engineering Co., Ltd. (hereinafter referred to as Hangzhou Lian'an) believed that seven companies including Xiaomi Communication Technology Co., Ltd. (hereinafter referred to as Xiaomi Communication) and Xiaomi Technology Co., Ltd. (hereinafter referred to as Xiaomi Technology) infringed its No. 10054096 "MIKA Mijia" trademark exclusive rights, therefore filed a lawsuit with the Hangzhou Intermediate People's Court on this ground. The court determined that the defendant’s infringement was established and ordered the defendant Xiaomi Communication to pay the plaintiff a total of RMB 12,103,767 for economic losses and reasonable expenses. The defendant Xiaomi Technology shall bear joint liability for 6,803,767 yuan of the amount of compensation to the defendant Xiaomi Communication in the preceding paragraph. At the same time, The other 5 defendants were ordered to stop the infringement immediately. Xiaomi Technology and Xiaomi Communication were dissatisfied, so they appealed to the Zhejiang Higher People's Court.
The court of second instance held that: First of all, the alleged infringing goods are the same or similar goods to the goods approved for use by the trademark involved. Secondly, for the relevant domestic public, the main part of the trademark involved in the case is the Chinese "Mijia". The accused infringement mark and the main identifying part of the trademark involved are exactly the same in shape, meaning, and pronunciation. The constituent elements are similar. Thirdly, regarding the possibility of confusion, Xiaomi Communication Company used the "Mijia" logo on the same or similar products that is similar to the "MIKA米家" trademark involved in the case of Lian'an Company, which is likely to cause confusion among the relevant public and constitute an opposition to Lian'an Company. Infringement of the exclusive right to use the registered trademark involved.
In addition, the “MIJIA” trademark was used on the alleged infringing goods and the outer packaging or on the sales page at the same time. The above are registered trademarks owned by Xiaomi Technology. Based on this, it can be determined that the source of the alleged infringing goods pointed to by these trademarks is Xiaomi Technology. Xiaomi Communication is the commissioned manufacturer of the alleged infringing goods. The alleged infringing goods are mainly sold through the websites operated by Xiaomi Technology Company, Tmall online stores and offline stores. It can be concluded that the two appellants have joint infringement intentions. Contacted and jointly implemented the act of manufacturing and selling the alleged infringing goods, resulting in damages, and Xiaomi Technology and Xiaomi Communication constituted a joint infringement.
In summary, the court of second instance ordered Xiaomi Communication and Xiaomi Technology to immediately stop infringing on the exclusive right to use the registered trademark "MIKA Mijia" enjoyed by Hangzhou Lian'an No. 10054096, and sentenced Xiaomi Communication to compensate Hangzhou Lian'an for economic losses of RMB 3,000,000. The reasonable expenses paid to stop the infringement are 103,767 yuan, totaling 3,103,767 yuan. Xiaomi Technology shall be jointly and severally liable for all the above compensations.
Appeal Court Confirms Xiaomi's infringement of MIKA Trademark
The Zhejiang Higher People's Court, upholding the decision of the Hangzhou Intermediate People's Court, has held that Xiaomi Communications Co., Ltd (Xiaomi Communications) and Xiaomi Inc infringed Hangzhou Lian'an Security Engineering Co., Ltd's (Hangzhou Lian'an) exclusive right to the'Mika米家' trademark (No. 10054096). (See here for a note on the Hangzhou Intermediate People's Court decision)
The Zhejiang Higher People's Court held: (1) the products in relation to which the Xiaomi companies used the allegedly infringing mark were identical or similar to the goods in respect of which Hangzhou Lian'an's trademark was registered. (2) The relevant consumers would recognise the distinctive part of Xiaomi's trademark as the Chinese characters'米家' (Mi Jia); in addition, the font, meaning, pronunciation and constituent elements of the mark were identical or similar to the main part of Hangzhou Lian'an's registered trademark ; and (3) the mark being used by Xiaomi was, therefore, likely to cause confusion among the relevant public and constituted an infringement of Hangzhou Lian'an's exclusive trademark rights.
Further, the likelihood of confusion was compounded by the manner in which Xiaomi was using its'米家' (Mi Jia) trademark ie on the products themselves and their outer packaging, and in sales materials: such use would lead consumers to believe that Xiaomi Inc was the source of the products, and Xiaomi Communications the manufacturer. The two Xiaomi companies had cooperated in their use of the trademark and were, therefore, jointly liable for trademark infringement.
The Court ordered Xiaomi Communications and Xiaomi Inc. to cease the infringement, and ordered Xiaomi Communications to pay the Plaintiff CNY 3,000,000 (approx. US$ 463,000) as compensation for economic loss and CNY 103,767 (approx. US$16,000) for reasonable expenses, in total CNY 3,103,767 (approx. US$480,000). The defendant Xiaomi Inc. was jointly and severally liable.
Second-instance case of Siemens Software Company v. Wofu Company for copyright infringement
Date: 2020-12-01
Siemens Industrial Software Co., Ltd. (hereinafter referred to as Siemens Software Company) believes that the software involved in the case used by Guangzhou Wofu Mould Co., Ltd. (hereinafter referred to as Wofu Company) for product design and manufacturing infringes the copyright of its NX series software, so it is a copyright infringement For this reason, a lawsuit was filed in the court, demanding the defendant to compensate 2.7 million yuan. The court of first instance, based on Siemens Software’s application, made a preservation ruling against Wolff, but Wolff took resistive measures to obstruct the court’s preservation work, resulting in the termination of the preservation work. The court of first instance determined that Wolff’s infringement was established and ordered Wolff to stop the infringement and compensate Siemens Software for economic losses of 500,000 yuan and other reasonable expenses of 100,000 yuan. Both parties dissatisfied with the judgment and appealed to the Supreme People's Court.
The Intellectual Property Court of the Supreme People's Court held that after the trial, the Court of First Instance has stated that the refusal of preservation will bear the adverse consequences, and Wofu still takes countermeasures to obstruct the court’s preservation work. In the case where it has been confirmed that some of the preserved computers have installed the software involved, according to the relevant judicial interpretation, it can be presumed that the unsuccessfully preserved computers have installed the software involved, and Wofu will resist this fact when determining the infringement damages The behavior of court evidence preservation shall also be considered. In the end, the court fully supported Siemens Software’s request for damages based on the number of infringing software found and the price of genuine software, and made a second-instance verdict, which changed the judgment of Wolff to compensate Siemens Software for economic losses of 2,612,827 yuan and The reasonable cost is 100,000 yuan.
Siemens Industry Software (Shanghai) Co, Ltd Succeeds on Appeal in Copyright Infringement Action against Guangzhou Wofu Mold Co.,Ltd. Damages Increased for Failure to Comply with Preservation Order
Siemens Industrial Software (Shanghai) Co., Ltd. (Siemens) brought a copyright infringement action against Guangzhou Wofu Mold Co., Ltd. (Wofu) alleging that it was using software that infringed the copyright in the Siemens NX series software. It sought compensation of CNY 2.7 million (approx. US$415,000) and applied for a preservation order.
The Court of First Instance ruled that Wofu had infringed Siemens' copyright, and granted a preservation order. It ordered Wofu to cease the infringement immediately and pay compensation of CNY 500,000 (approx. US$76,500) for economic loss and CNY 100,000 (approx. US $15,300) for reasonable expenses. Both parties appealed to the Supreme People's Court.
On appeal, the IP Court of the Supreme People's Court upheld the infringement decision. Further, it noted that even after the Court of First Instance had explained that failure to abide by the preservation order would have adverse consequences, Wofu had gone ahead and taken steps to avoid the order. As some of the preserved computers had the relevant software installed, it could be presumed that the computers that had not been preserved would also have had the software installed. This, together with Wofu's obstructive behaviour, should be considered when making the decision on infringement compensation.
The Court approved Siemens's claim for damages, calculated on the basis of the price of genuine software and the number of copies of infringing software and ordered Wofu to pay compensation of CNY 2,612,827 (approx. US$400,000) for economic loss and CNY 100,000 (approx. US$15,300) for reasonable expenses.
The first instance of the electronic map infringement dispute case was concluded, and the court ordered Baidu to compensate more than 65 million yuan
Date: 2020-11-23
Beijing NavInfo Technology Co., Ltd. (hereinafter referred to as NavInfo) discovered that Beijing Baidu Netcom Technology Co., Ltd. (hereinafter referred to as Baidu Netcom), Baidu Online Network Technology (Beijing) Co., Ltd. (hereinafter referred to as Baidu Online), Baidu Cloud Computing Technology (Beijing) Co., Ltd. (hereinafter referred to as Baidu Cloud Computing Company), after the completion of the related map project cooperation, still provides its services to the public through mobile terminals such as "Baidu Map", "Baidu Carlife" and "Baidu Navigation". For electronic maps, NavInfo believes that the act seriously infringed on its legal rights to the relevant electronic maps and constituted unfair competition, so it filed a lawsuit with the Beijing Intellectual Property Court for this reason.
The Beijing Intellectual Property Court held that: First, the electronic map claimed by NavInfo has a form of graphic work expression that should be protected by copyright, meets the originality requirements within the scope of the creation space of map works, and constitutes a map work under the Copyright Law; , Baidu Netxun and others used the map involved in the case on software such as "Baidu Maps" without permission, infringing the copyright of NavInfo's electronic maps; Moreover, NavInfo claimed that the case was not involved. The act of fair competition and the aforementioned copyright infringement are essentially the same act, and the relevant rights and interests have been protected by the copyright law, and the anti-unfair competition law is no longer evaluated.
To sum up, the Beijing Intellectual Property Court made a first-instance judgment, ordering the defendant to stop the infringement, and to compensate the plaintiff for economic losses and reasonable expenses totaling 65,426,597.5 yuan.
Baidu Ordered to Pay Compensation of CNY 65 Million (approx. US$10,000,000) to Navinfo in First Electronic Map Infringement Case
NavInfo Co.,Ltd. (NavInfo), a leading Chinese provider of electronic maps and related technology, discovered that several Baidu companies-Beijing Baidu Netcom Science and Technology Co.,Ltd. (Baidu Netcom), Baidu Online Network Technology (Beijing) Co.,Ltd. (Baidu online company) and Baidu Cloud Computing Technology (Beijing) Co.,Ltd. (Baidu cloud computing company)-were continuing to provide the Navinfo e-maps to the public via Baidu map, Baidu Carlife and Baidu navigation, even though a licence agreement between the parties had expired in 2017. NavInfo commenced an action for copyright infringement and unfair competition in the Beijing Intellectual Property Court.
The Court held that: (1), the electronic maps met the Copyright Law originality requirement and were capable of copyright protection; (2) the Baidu companies use of the maps without permission infringed Navinfo's copyright; and (3) because the alleged unfair competition involved the same behaviour as the copyright infringement, it was not necessary to consider the unfair competition claim.
The Court ordered the Defendants to cease the infringement immediately and held them jointly liable to compensate NavInfo for economic loss and reasonable expenses, in the sum of CNY 65,426,597.5 (approx. US$10,000,000).
The decision has not been appealed.
"Schneider" trademark infringement and unfair competition disputes of the first instance
Date: 2020-12-21
Schneider Electric Europe (hereinafter referred to as Schneider Electric Company) found that Schneider Elevator Company prominently uses the same or similar logos as "Schneider" and "Schneider" (hereinafter referred to as the cited trademark) in its daily operations, and uses domain names containing "Schneider" characters Schneider Electric believes that the above actions are likely to confuse the public and mistakenly believe that Schneider Elevator Company and its products are related to the plaintiff, so it filed a lawsuit with the Suzhou Intermediate People's Court of Jiangsu Province on the grounds of trademark infringement and unfair competition.
The court held that: First, the trademarks "Schneider Electric" and "Schneider Electric" are well-known in the market and are well-known to consumers. They have the factual basis for being recognized as well-known trademarks and the necessity of determining well-known trademarks. The products such as elevators and escalators designated for use by the alleged infringement marks and the products such as circuit breakers and switches for which the trademark involved is well-known are closely related and overlapped in terms of function, use, sales channels, etc., which can easily cause the public to confuse the source of the products Or misunderstanding, it is necessary to protect the plaintiff’s trademark across categories. Secondly, Schneider Elevator Company uses "Schneider" as the name of its company name and uses it in its business operations, and uses a domain name similar to "Schneider Electric", which belongs to unauthorized use of other people's company names and well-known trademarks, which is enough to cause confusion to the relevant public , Disrupting the normal social and economic order and damaging the legitimate rights and interests of Schneider Electric, thus constituting unfair competition. Finally, Schneider Elevator Company has been infringing for 10 years. The infringement is intentional and the circumstances of infringement are serious. Punitive compensation should be applied to it in accordance with the law.
In summary, the court ordered Schneider Elevator Company to stop infringement and unfair competition, and to compensate Schneider Electric Company for economic losses and reasonable expenses totaling more than 40 million yuan.
Both parties disagree with the judgment, so they appealed to the Jiangsu Higher People's Court. Currently, the case is in the second instance.
Punitive damages awarded in trademark infringement and unfair competition action brought by Schneider Electric in the Jiangsu Suzhou Intermediate People's Court. Both parties appeal
Schneider Electric SA (Schneider Electric), a well-known European multinational company providing a range of energy and automation digital solutions, discovered that a Chinese company established in 2010, Suzhou Schneider Elevator CO.,LTD.( Schneider elevator company), was using a logo identical with or similar to its registered trademark, and the name'Schneider' in its domain name.
Schneider Electric's registered trademark.
Mark used by the Defendant, Schneider elevator company
The Court held that: (1) the cited trademark'Schneider' and the equivalent Chinese characters "Schneider" are well known by consumers. The mark can and should be recognized as a well-known trademark and given cross-class protection. In any event, the Defendant's goods, in relation to which it is using the logo, are closely related to Schneider Electric's well-known circuit breakers and switches in terms of function, use, and distribution channels. It is, therefore, likely that members of the relevant public will be confused as to the origin of the goods; (2) Schneider elevator company adopted the Chinese characters'Schneider' as its enterprise name and used it in its daily operation, as well as in its domain name. This is likely to confuse the relevant public, disturb the normal social and economic order,and damage the legitimate rights and interests of Schneider Electric, and amounts to unfair competition; and (3) considering Schneider elevator company had been infringing for 10 years, its intention to infringe was obvious, and the infringement circumstances serious, an award of punitive damages was appropriate.
Accordingly, the Court ordered Schneider elevator company to cease the infringement and unfair competition immediately, and pay compensation of CNY 40 million (approx. US$6,000,000) for economic loss and reasonable expenses.
Both parties have appealed to Jiangsu Higher People's Court.
Nick Redfearn, Deputy CEO, Rouse
nredfearn@rouse.com
