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
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
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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Singhania & Partners LLP, Solicitors and Advocates
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