Unitalen Client AUPU Won an 8-Year Fight against AOPU

June 30, 2017

AUPU bath master is an innovative product developed by Hangzhou Aupu Electric Co., Ltd. (hereinafter referred to as “Hangzhou Aupu”), with multiple functions including lighting, ventilation and heating. Their trademark 奥普 (AUPU in Chinese) was registered in June 1998 and recognized as a well-known trademark for hot air Bath Devices and bath heaters goods in Class 11.


In March 2002, Zhejiang Ruian Qicai Trade Co., Ltd. registered trademark  under No. 1737521 (hereinafter as AOPU 奥普), in respect of "metal building materials, metal towel racks", etc. in Class 6, which was transferred for several times and had not been put into use until Hangzhou Aupu’s 奥普 1+N bath ceiling was launched in 2005 became a best-selling product. Perceiving a business opportunity here, Zhejiang Modern New Energy Co., Ltd. (hereinafter as "Modern New Energy") acquired the AOPU 奥普 mark in 2009 and used it massively on integrated ceiling products through licensing and franchising. The severe collision between AOPU Integrated Ceiling and AUPU bath master inevitably led to a legal fight that lasted for 8 years.


The first battle: with the AOPU integrated ceiling seriously disrupting the normal operation of Hangzhou Aupu, Hangzhou Aupu sued the licensees and distributors of Modern New Energy for trademark infringement and unfair competition in Zhengjiang and Beijing respectively, noting that the defendants deliberately highlighted 奥普to take advantage of HANGZHOU Aupu’s business reputation. During 2011-2012, Hangzhou Intermediate People's Court, Zhejiang High Court and Beijing No.2 Intermediate People's Court affirmed the defendants’ conducts as constituting infringement and unfair competition. Modern New Energy then changed its market strategy by giving up the use of “AOPU Integrated Ceiling” on goods of lighting, ventilating and heating in Class 11 while strictly using the AOPU 奥普 mark on metal ceiling in Class 6. At the same time, Modern New Energy decided to launch a counterattack on Hangzhou Aupu’s use of “奥普 1+N” on bath ceiling in Class 6. 

The third battle: When Hangzhou Aupu sought trademark registration of 奥普集成吊顶 (AUPU integrated ceiling) and 奥普集成浴顶 (AUPU integrated bath ceiling) et al, Modern New Energy raised oppositions based on its trademark No. 1737521  AOPU 奥普. After the procedures of opposition, opposition review and two instances of judicial appeal, Hangzhou Aupu finally obtained the trademark registrations.


The fourth battle: At the same time, through opposition, opposition review and judicial appeal, Hangzhou Aupu successfully stopped Modern New Energy’s from expanding its scope of goods in Class 6.


The second battle: In 2010, Modern New Energy sued Hangzhou Aupu’s affiliate company for infringing trademark No. 1737521 AOPU 奥普. Suzhou Intermediate People’s Court, Jiangsu High Court and later Jiangsu High Court all considered defendant’s use of 奥普on ceiling and panel as exceeding the scope of Hangzhou Aupu’s own registration for “奥普”, thus infringing trademark No. 1737521 AOPU 奥普. Per defendant’s request for re-trial, the Supreme People’s Court heard the case, concluding that the scope and level of protection extended to a registered trademark shall be consistent with the contribution made by the right owner to the trademark’s distinctiveness and reputation, and that the defendant disclosed sufficient information to achieve a clear distinction on the sources of goods thus would not create confusion or the consequence of taking advantage of other party’s business reputation. Accordingly, the retrial verdict dismissed all the claims of Modern New Energy.


The fifth battle: To bring an end to the war, Hangzhou Aupu applied to Trademark Review & Adjudication Board (hereinafter referred to as “TRAB”) for invalidation of trademark No. 1737521  AOPU 奥普 owned by Modern New Energy. After nearly 6 years of review, TRAB decided that, despite the well-known status of Hangzhou Aupu’s cited mark, due to the lack of bad faith evidence and the dissimilarity between two parties’ goods, the disputed mark which had been registered for more than 5 years and co-existed with Hangzhou Aupu’s cited mark for 13 years shall be maintained. In disagreement, Hangzhou Aupu filed an administrative litigation before Beijing IP Court. In June 2016, Beijing IP Court made a ruling, affirming the well-known status of Hangzhou Aupu’s cited mark, the bad faith nature of disputed trademark registration, the close relationship between two parties’ goods, and the likelihood of confusion and misidentification to be caused by the disputed mark, which was further affirmed by Beijing Higher People’s Court during the appeal procedure initiated by Modern New Energy and TRAB.


Thus far, Unitalen helped Hangzhou Aupu win a comprehensive and thorough victory in the serial trademark infringement and trademark right affirmation cases.