On November 22, 2012, Shenzhen Da-Jiang Innovations Technology Co., Ltd. (hereinafter referred to as "DJI Technology") applied to register the "大疆” (Da-Jiang, DJI) trademark in respect of “aircraft” goods in Class 12, which was approved by the SIPO. After substantial uses and promotion, the registered trademark is qualified to be recognized as well-known trademark.
Shenzhen Da-Jiang Industrial Co., Ltd. (hereinafter referred to as "Da-Jiang Industrial") uses “大疆” (Da-jiang) as its business name and manufactures, sells, and promotes mobile phones that use the "大疆" logo. DJI Technology held that, although the mobile phone product labelled with “大疆”logo are different from the "aircraft" and other goods approved for use by the registered trademark of DJI, the "aircraft" product involved (DJI drone) is usually used in conjunction with a mobile phone, there is a certain association in between both; In addition, the registered trademark "大疆" shall constitute a well-known trademark, which can realize the protection of trademark rights across classes, therefore, the production, sale and promotion of mobile phones bearing the "大疆" logo shall constitute trademark infringement; the use of "DJI" in the business name constitute an unfair competition act. Therefore, DJI entrusted Unitalen Attorneys at Law to file a lawsuit against Da-Jiang Industrial for the above-mentioned charges.
The Beijing IP Court found that after the trial of the case, the "大疆" trademark of DJI had been qualified as a well-known trademark when the infringement indicted in this case occurred; therefore, Da-Jiang Industrial had constituted trademark infringement with production, sale, and promotion of mobile phones bearing the "大疆" logo, and unfair competition with the use of "大疆" in the business name. As a result, the following ordered were ruled out:
1.Da-Jiang Industry Co. Ltd. to immediately stop the infringement of the exclusive right to use the registered trademark involved, that is, to stop using the word "大疆" in the production, sales and publicity activities involved.
2.Da-Jiang Industry Co. Ltd. to immediately stop the improper conduct involved, that is, to stop using the business name containing "大疆".
3.Da-Jiang Industry Co. Ltd. to publish statements in the Guangzhou Daily and the company's official website for 30 consecutive days within 30 days of the effective date of this ruling to eliminate the adverse effects caused by infringement.
4.Da-Jiang Industry Co. Ltd. to compensate DJI Technology for economic losses of RMB 500,000 and reasonable expenses of RMB 134,302 within 10 days of the effective date of this ruling.
This case confirmed for the first time in the form of a judicial judgment that the popularity of the "大疆" trademark has met the benchmarks for recognition as a well-known trademark, determined the factors in the consideration for cross-class protection of well-known trademarks, and provided the basis for determining the occurrence of multiple infringements.