In a recent trademark infringement lawsuit against an internationally reputed and renowned hard drive manufacturer (Hard Drive Manufacturer), Futian District People’s Court of Shenzhen City (the Court) affirmed that the products of the Hard Drive Manufacturer do not infringe upon the Plaintiff’s trademark registration, thus the Court dismissed all the Plaintiff’s claims including claimed damages of RMB 1.5 million (around US$ 250,000). Mr. Jason WANG, partner at Beijing East IP Law Firm, represented the Hard Drive Manufacturer in this litigation.

On January 5, 2007, the Hard Drive Manufacturer filed a trademark application for the English brand of its latest portable hard drive as serial trademark. On January 8, 2007, the Hard Drive Manufacturer exhibited for the first time such latest portable hard drive at the world-renowned International Consumer Electronics Show (CES). The CES is an annual exhibition held in Las Vegas, United States, and is one of the largest and most widespread influential trade fair for consumer electronic products; the show is also the premier window for all major electronics corporations to announce their new products, demonstrate their hi-tech capability and initiate future lifestyle.

On January 9, 2007, the day after the Hard Drive Manufacturer’s debut of its latest portable hard drive, the Plaintiff filed a trademark application in China for the registration of the abovementioned English brand, which was approved for registration on October 21, 2009. Meanwhile, the Plaintiff applied for other trademarks, such as “Google in Chinese”, but most of them were either opposed by corresponding right holders or have been void.

From January 6to January 9, 2007, various major media websites in China have deployed extensive coverage regarding the Hard Drive Manufacturer’s English trademark; even more coverage of the Hard Drive Manufacturer’s English serial trademark were reported from January 9, 2007 (application date of the Plaintiff’s trademark registration)to October 21, 2009 (registration date of the Plaintiff’s trademark registration). The Hard Drive Manufacturer filed the trademark application in China for the combination trademark of its primary English trademark and its English serial in April 2010, but was opposed by the Plaintiff. In December 2012, the Chinese Trademark Office dismissed the opposition filed by the Plaintiff and approved the registration of the Hard Drive Manufacturer’s combination trademark with its validity began as of May 2011.

In June 2011, the Plaintiff filed a trademark infringement lawsuit before the Court. The Court suspended the adjudication in December 2012, and the adjudication resumed in June 2014. On December 1, 2014, the Court rendered the decision as the First Instance Court, and dismissed the Plaintiff’s claims in the litigation.

The Court held as follows: the Hard Drive Manufacturer’s use of the accused trademark on the accused hard drive and packaging thereof consists of both upper and lower English case, which is different from the Plaintiff’s registration of the English trademark (all upper case); the accused trademark is not used separately, but used in combination with the Hard Drive Manufacturer’s primary mark and other serial trademarks. Moreover, the size of the accused English trademark is rather small, neither distinctive nor prominent. Through the comparison in terms of overall appearance, the prominent part, and in isolation, and combining the degree of knowledge for English among the public in China, the Hard Drive Manufacturer’s fame in the industry, as well as the actual use of the Plaintiff’s trademark, the Court held that the Hard Drive Manufacturer’s use of the accused English trademark on the accused hard drive does not infringe upon the Plaintiff’s registration of its English trademark.

Prior to this trademark infringement, the Hard Drive Manufacturer had also been involved in one of the earliest patent troll cases in China, that case lasted 6 years from 2002 to 2008. Beijing East IP Ltd. represented for the Hard Drive Manufacturer and prevailed in that patent infringement case, successfully invalided the Plaintiff’s patents in the First and Second Instances of the patent invalidation proceedings.