Unitalen Client Power Decker Won the First Instance Litigation Concerning Trademark Infringement and Unfair Competition – RMB 1M Indemnity Ordered to Punish Malicious Infringement

January 20, 2020

Recently, the Qingdao Intermediate People's Court of Shandong Province made a first-instance judgment. Unitalen client Power Decker Group Co., Ltd. (hereinafter referred to as “Power Decker Group”) won the in the litigation against Jining Shengxiang Wood Co., Ltd. (hereafter referred to as “Shengxiang Wood Co.”) and other five defendants in a trademark infringement and unfair competition dispute.

Case Summary

Power Decker Group, the plaintiff, is the prior owner of the "圣象" (pinyin as “Shengxiang”) trademark and business name. It enjoys exclusive rights to use the "圣象" series of registered trademarks on “flooring” products and so on in Class 19. After long-term extensive use and publicity activities, the "圣象" logo has been repeatedly recognized by the Trademark Office and courts as a well-known trademark on goods such as "flooring" since 2005.

The defendant Shengxiang Wood was established in 2010. It used "Jining Shengxiang Wood Industry Co., Ltd.", "Shandong Shengxiang Wood Industry Co., Ltd.", “Shengxiang Woods”, “Jining Shengxiang Flooring” and so on in its production and sales of wooden flooring products and packaging, in its business premises and its official website articles. Also it used the plaintiff’s registered trademark “圣象”and the long-existing English name "Powerdekor" as translation in ex-hibitions, brochures and business cards without authorization. In addition, the defendant used propaganda terms such as "CCTV strategic partners", "Chinese famous brands" and "quality for 20 years since 1996" in product packaging and website sales promotion. The above actions are intended to take advantage of the plaintiff's "圣象" trademark reputation and mislead consumers.

In the process of investigating and collecting evidence, Unitalen had discovered the other four subjects that shall be listed as defendants in this case, including the owner of the trademark "济象" (pinyin as “Jixiang”) , which was used in the infringing product, the legal representatives and shareholders of Jining Shengxiang Wood Industry and an associated company in Jining, who also used their personal bank account for receiving payments of product sales; a company in Qingdao that provided business card and sales invoice in the name of Shengxiang Wood during the sales of the infringing product. All of them were charged for joint tort liability.

Court Decision

After hearing, the court ruled the following orders:

Jining Shengxiang Wood Industry Co., Ltd. shall cease to infringe on the plaintiff's trademark rights and cease the unfair competition acts; the company name shall be changed, within 30 days of the verdict coming into effect, and the name shall not be identical or similar to “圣象”.

The amount of indemnity in this case is based on comprehensive consideration in distinctiveness and popularity of the plaintiff's trademark, the subjective maliciousness of the defendant, the duration and scope of the infringement involved, the sales volume of the goods involved, and the profit made, aiming to increase the compensation for malicious infringement. So that defendants shall compensate the plaintiff for the economic loss of 1 million yuan and the corresponding reasonable expenditure of 171,000 yuan.