The legal team of Wang Zongpeng and Chen Jinping successfully defended a company in a trademark infringement and unfair competition dispute, securing a favorable verdict in the case
Date: 2024-03-27In this case, the plaintiff holds prior exclusive rights to a registered trademark under Class 9, covering computer software and computer peripheral devices . The defendant, an internet company operating a self-developed app and related hardware equipment, was sued for trademark infringement and unfair competition. The plaintiff demands cessation of the use of a similar logo, alteration of the corporate name and domain name, and compensation of RMB 5 million for economic losses plus reasonable expenses . Established after the plaintiff, both parties have gained notable recognition within their respective business domains .
Key contextual considerations:
- 1.Trademark scope determination: The plaintiff’s exclusive rights are strictly confined to its approved goods/services under registration . Apps and hardware devices, as digital/technological products, may overlap with Class 9’s scope but require nuanced analysis of functional and market similarities .
- 2.Infringement criteria: The defendant’s logo would constitute infringement only if it causes consumer confusion through similarity in appearance, pronunciation, or conceptual meaning within overlapping/related goods/services .
- 3.Unfair competition claims: Require evidence of intentional exploitation of the plaintiff’s goodwill (e.g., mimicking corporate naming conventions or domain structures to mislead the public)
Sundial Law Firm (Wang Zongpeng and Li Menglin, representing the defendant, co-counseled with Chen Jinping) successfully defended the client in a trademark infringement and unfair competition dispute. The accused identifier served as both the client’s trade name and core business trademark. A loss would have forced comprehensive rebranding, diminished brand recognition and value, and market confusion, posing severe operational risks.
Case complexities included:
- 1.Infringement defense: Despite the plaintiff’s prior trademark rights and the defendant’s lack of pre-existing rights or registered trademarks for its core business, the team argued non-infringement by demonstrating dissimilarity of goods/services under the Similar Goods and Services Classification Table and negligible confusion risks.
- 2.Procedural challenges: The plaintiff concurrently initiated civil litigation and administrative actions (e.g., oppositions and invalidation petitions), requiring integrated expertise in trademark civil litigation and administrative procedures.
Legal strategy:
- Conducted thorough analysis of the client’s product mechanisms, trademark usage patterns, and trademark status.
- Demonstrated the client’s sustained investment and promotion, which established distinct market recognition for the accused identifier in technical service markets.
- Highlighted material differences in the parties’ core businesses and operational scopes to negate competitive overlap.
Both the Nanshan District People’s Court (first instance) and Shenzhen Intermediate People’s Court (second instance) held that:
- The accused identifier had acquired distinctiveness through the defendant’s prolonged and extensive use in technical services.
- Use of the similar mark on the client’s app and hardware devices posed no likelihood of confusion, thus not constituting trademark infringement.
- Use of the identifier in the corporate name and domain name did not violate unfair competition principles.
- All plaintiff’s claims were dismissed.
Outcome: Sundial’s victory safeguarded the client’s brand continuity and operational stability, reaffirming the firm’s exceptional capabilities in intellectual property litigation.
