Santak Electronics (Shenzhen) Co., Ltd. ("Santak") is the registrant of the "SANTAK" mark with reg. no. 619938 and the "San Te in Chinese" mark with reg. no. 512383 in Class 9 for "uninterruptible power supplies; precision power supplies; regulated power supplies" and other goods.
Guangdong Taiqifeng Electronics Co., Ltd. ("Taiqifeng") operates www.vsasvntek.net, techfine.net. In these websites' company profile, product inspection reports uploaded on the website, downloaded color pages and other locations used the "VSASVNTEK" mark, and the company's brochure also used words such as "Produced by American International SUNTEK Power Supply Company" and "American International USASVNTEK Power Supply Co., Ltd." At the same time, in the "Foshan Nanshan Taiqifeng Electronics Co., Ltd." store on the Marco Polo website, the words "San Te in Chinese" and "American San Te in Chinese" were used in the company profile and product introduction. In the WeChat public account " Taiqifeng Electronics" operated by Taiqifeng, the "VSASVNTEK" mark was used on the promotional image. In the manufacture factories of Taiqifeng, there were also many packaging boxes with the "VSASVNTEK" trademark stored, and its products labeled with the "VSASVNTEK" mark are also sold on the market. The UPS power supply products sold by Chengdu Aipeisi Electronics Co., Ltd. ("Aipeisi") through its website were marked with the "VSASVNTEK" mark on the packaging and physical objects. In addition, Zhou is the operator of the Kemei Computer Accessories Business Department in Chancheng District, Foshan City. Zhou registered the "VSASVNTEK" mark with reg. no. 8059881 in 2010 for "inverters, batteries," etc., and authorized Taiqifeng to use. Santak filed an application for trademark cancellation and invalidation against this mark. After trial, the mark was declared invalid in 2019. In 2018, Zhou applied again to register the "VSASVNTEK" mark with. reg. no. 2250837 for "inverters, batteries," etc. Later, this later filed trademark was declared invalid through an invalidation action.
After trial, the People's Court found that the accused infringing marks "VSASVNTEK" and "USASUNTEK" and Santak's "SANTAK" were both composed of English letters, and the main part of the accused infringing mark "SVNTEK" and "SUNTEK" were similar to Santak's "SANTAK" in visual effects, fonts, etc. Since Santak's "SANTAK" mark has a high reputation on uninterruptible power supply products, using "VSASVNTEK" and "USASUNTEK" on uninterruptible power supplies will easily confuse the relevant public. Therefore, Taiqifeng's and Aipeisi's production and selling of the accused infringing product infringed on Santak's trademark right.
Zhou registered a trademark on identical or similar goods with Santak's registered trademark and licensed that trademark to other entities such as Taiqifeng for use on uninterruptible power supplies, batteries and other products. There is a competing relationship between Zhou and Santak. In this case, Zhou successively registered several trademarks that were similar to Santak's trademarks. Zhou's trademarks were declared invalid by the CNIPA, and the CNIPA had determined that Zhou knew Santak's registered trademarks, and his registration was "taking advantage of others, and his action has gone beyond normal production and operation needs, with obvious intentions to copy, plagiarize and imitate other people's prior trademarks." After long-term operation and extensive publicity, Santak and its registered trademarks gained a high reputation. As an operator of similar products in the same region as Santak, Zhou should be aware of this and reasonably avoid it. However, Zhou has repeatedly registered marks that were similar to Santak's registered trademark on similar goods and failed to provide sufficient evidence to prove source of creation to design the trademark. To sum up, Zhou's accused behavior violated the principle of good faith and generally accepted business ethics and was unfair. At the same time, Zhou's behavior exceeded the needs of normal production and operation, causing Santak to file trademark oppositions, invalidations, administrative lawsuits, and this civil lawsuit many times to safeguard its rights and interests, which to a certain extent interfered with Santak's normal production and operation, and caused actual damage to Santak. Therefore, Zhou's behavior constituted unfair competition.
As for the legal source defense of Aipeisi, the court found that the trademark involved in this case was relatively well-known. As a market operator "specialized in UPS uninterruptible power supplies," Aipeisi had to decide whether the goods it sold infringed on a registered trademark. Aipeisi failed to fulfill its reasonable duty of review, and there was some subjective fault. Therefore, Aipeisi's defense was dismissed.
In the end, the court decided that Taiqifeng should compensate Santak for economic losses and reasonable expenses for RMB 5 million (USD694,753). Zhou was jointly and severally liable for RMB 1 million (USD138,950). Aipeisi should compensate RMB 1.005 million (USD139,645).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
