China: Seagate Encounters Trademark Dispute On "FreeAgent"

Seagate Technology Public Limited Company (hereinafter referred to as "Seagate"), one of the world's largest hard drive manufacturers, recently involved in a dispute over trademark infringement in China. The Plaintiff (Du, an individual from Guangdong province) filed a trademark infringement lawsuit before the Futian District People's Court of Shenzhen City in Guangdong province claiming that the "FreeAgent" series hard drive products manufactured and sold by Seagate, its subsidiary, and its agent infringed upon his registered trademark "FREEAGENT." Recently, the First Instance Court dismissed all the Plaintiff's claims.

The Plaintiff claimed that Seagate and its subsidiaries used "FreeAgent" as trademark on its "FreeAgent" series hard drive products, which is identical to the Plaintiff's trademark registration of "FREEEAGENT" designated on computer peripheral equipment products, constituted trademark infringement. Synnex Technology International Trading (China) Co., Ltd. (hereinafter referred to as "Synnex") and Shenzhen Sundan Chain Share Co. Ltd. (hereinafter referred to as "Sundan"), as retailers of the "FreeAgent" series products, also infringed upon the Plaintiff's trademark registration.

It is understood that the trademark registration at issue is "FREEAGENT" with Registration No. 5836028 filed by the Plaintiff in Class 9 designated on goods such as computer, computer peripheral equipment and facsimile equipment in January 2007 and registered in October 2009.

The Defendants including Seagate argued as follows: The "SEAGATE FREEAGENT" mark owned by Seagate Technology LLC as the affiliate of Seagate, has obtained registration in Class 9 designated on computer peripherals, etc. The accused trademark "FreeAgent" on the "FreeAgent" series products is used in combination with the trademark registration and corporate name of their affiliate, including "Seagate in Chinese," "SEAGATE," and "GoFlex," which is obviously different from the Plaintiff's trademark registration, and thus will not cause confusion among the consumers. Therefore, the use of the logo "FreeAgent" by the Defendants on their "FreeAgent" series products does not constitute trademark infringement.

The Court held that the accused hard drive products were manufactured and sold by Seagate's affiliate Seagate Technology LLC, and the Plaintiff failed to prove that the Defendants including Seagate manufactured and sold the accused hard drive products. Thus, the Plaintiff's claim that the Defendants including Seagate shall be jointly and severally liable for the infringement lacked legal basis.

Moreover, the use of the accused trademark "FreeAgent"on the accused hard drive products and packaging thereof by Seagate Technology LLC consists of both upper and lower English case, which is different from the Plaintiff's registration of"FREEAGENT." The accused trademark "FreeAgent"is not used separately by Seagate Technology LLC, but used in combination with the primary mark and other serial trademarks. The size of the accused trademark "FreeAgent" is rather small, neither distinctive nor prominent. Through the comparison in terms of overall appearance, the prominent part, and in isolation, combining the degree of knowledge for English among the public in China, the fame of "Seagate" hard drive products in the industry, as well as the actual use of the Plaintiff's trademark, the use of the accused trademark "FreeAgent" on the accused hard drive products is not sufficient to cause confusion among the public regarding the source of the products. Based on the above, the manufacturing and selling of the accused hard drive products by the Defendants including Seagate does not constitute infringement upon the Plaintiff's trademark registration of "FREEAGENT." Synnex as the legitimate distributor and Sundan as the retailer of "Seagate" hard drive in China does not infringe upon the Plaintiff's trademark registration either. (Reporter: Feng XIAO)

Note:

The above is the English translation of the news reports in Chinese text. The URL link of Chinese text is as follows:
http://www.cneip.org.cn/companyshow.aspx?CateID=17&ArticleID=13922

Source: China Intellectual Property News

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