Weekly China Brand Protection News

November 28, 2024

Casio GA-110 Series Watches Recognized as a Product with Certain Influential Trade Dress

Casio Computer Co., Ltd. (Casio) filed a lawsuit against Shenzhen Tesgao Watch Co., Ltd. and Guangzhou Teyuan Watch Co., Ltd., alleging unfair competition. Casio claimed that the trade dress of its GA-110 series watches constituted a “product with certain influence” under trade dress and provided evidence, including product comparison images of other watch brands, to demonstrate the distinctiveness of the GA-110’s design. Casio also submitted media reports, audit reports, and other documentation to prove the high reputation of the GA-110 trade dress.

After reviewing the case, the court found the following:

1. Regarding whether the trade dress of the GA-110 watches in question constitutes a product with certain influence protected by the Anti-Unfair Competition Law:

First, in this case, Casio provided substantial evidence regarding its continuous use, geographical reach, sales volume, or advertising efforts related to the GA-110 watches in question. According to the evidence, as early as 1983 and 1992, Casio had registered the trademarks “Casio in Chinese and CASIO” (Reg. No. 174465) and “G-SHOCK” (Reg. No. 584013), respectively, with the “Casio in Chinese and CASIO” trademark recognized as a well-known trademark for electronic watches. Additionally, data showed that in the 2021 Top 10 Electronic Watch Brands ranking, Casio in Chinese/CASIO ranked first. The GA-110 watches in question belong to the “G-SHOCK” series under Casio, which falls within the influence of the Casio and “G-SHOCK” brands. Casio also submitted evidence on the online and offline sales networks for the GA-110 watches in question, various news media reports and promotional materials on the GA-110 watches and related commercial activities, videos related to GA-110 watches posted on multiple video platforms, and advertising monitoring reports regarding the GA-110 watches issued by Meihua Net, demonstrating that Casio had conducted sustained and widespread promotion of the GA-110 series watches in question. Through more than a decade of meticulous operation and promotional maintenance by Casio, the GA-110 products in question achieved high sales in mainland China and substantial market recognition, sufficient to establish them as products with certain influence.

Second, Casio provided evidence identifying nine common design features of the GA-110 series watches, which can exist independently from their inherent nature. Furthermore, based on comparison images submitted by Casio of other branded watches in the market, it was evident that the design features in question were clearly distinct from the shapes of other watches and did not constitute generic designs in the watch category. Additionally, these designs were not intended to achieve a specific technical effect or give the product substantial value. Tesigao Watch Co. and Teyuan Watch Co. failed to submit evidence proving that others had used designs identical or similar to this trade dress on identical or similar products before Casio. Therefore, the trade dress of the GA-110 products in question possessed high originality and distinctiveness.

Third, through long-term promotion and use by Casio, the GA-110 watches in question achieved high popularity among relevant consumers. During the more than ten years of sales of the GA-110 series watches in question, apart from differences in color schemes, the main elements of the trade dress remained essentially the same. The overall style was consistent and featured stable design characteristics. Relevant consumers who saw the trade dress of these products could associate them with specific models of Casio watches, thereby serving the function of identifying the source of goods. Even after the patent protection period for the appearance design of the trade dress in question had expired, Casio continued selling the series through promotions such as celebrity endorsements and collaborations in 2020 and 2021. Several Weibo links with over ten thousand shares displayed the styles of the GA-110 series products in question. Casio’s efforts and investment in managing and maintaining the trade dress should be considered for their positive effects on maintaining the influence of this series. Additionally, according to audit reports submitted by Casio, between 2019 and 2020, the sales proportion of the GA-110 model in question within the G-SHOCK series and the entire Casio brand did not show significant decline, demonstrating that the market recognition and reputation of the GA-110 model in question were not diminished by the emergence of similar products in the industry and that the series continued to have sustained influence.

In summary, the court determined that the trade dress of the GA-110 watches in question, which is the basis for Casio’s claim, constituted a trade dress with certain influence protected by the Anti-Unfair Competition Law.

2. Regarding whether the actions of Tesigao Watch Co. constitute unfair competition:

Apart from adding color, the trade dress of the infringing products was essentially identical to the trade dress of Casio’s product with certain influence. Tesigao Watch Co. and Teyuan Watch Co. confirmed that the infringing products were 1:1 replicas of Casio’s trade dress design. Thus, the court determined that Tesigao Watch Co. and Teyuan Watch Co. had used Casio’s trade dress without authorization. The use of a trade dress by Tesigao Watch Co. on identical products, which was visually indistinguishable from Casio’s trade dress with certain influence, could mislead consumers into believing there was an economic connection between the infringing products and Casio, despite differences in price, quality, consumer class, and manufacturer name or trademark. According to evidence submitted by Casio in the second instance, some consumers could not distinguish between the infringing products and Casio’s branded products, causing actual confusion. Even if a small number of consumers could identify the brand as Tesigao Watch Co., the use of a trade dress highly similar to Casio’s would likely mislead consumers into associating the product with the GA-110 series trade dress, harming Casio’s market reputation and causing damage to its rights and interests. Therefore, the court ruled that the actions of Tesigao Watch Co. constituted unfair competition.

The court, taking into account factors such as the sales volume and prices of Tesigao Watch Co. and Teyuan Watch Co. through various channels, their involvement in fake reviews, their degree of subjective fault, the nature and circumstances of other infringing actions, and the reasonable expenses incurred by Casio for this case, determined that Tesigao Watch Co. and Teyuan Watch Co. should jointly compensate Casio for economic losses and reasonable expenses totaling RMB 3 million (USD410,000).

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