China: Repetitive Litigation Based On The Principle Of Double Jeopardy Zhiming LI v. Wuhan Jinchen Industrial Co.,Ltd. (Article No. 29 From "China Patent Case Review 2015" by Beijing East IP Ltd.)

Children Toothbrush

Zhiming LI v. Wuhan Jinchen Industrial Co.,Ltd. Litigation Based on the Principle of Double Jeopardy (Civil Judgment (2011) Shan Zhong Fa Min San Chu Zi No.104 by Shantou Intermediate People's Court on September 3, 2012)

Repetitive litigation, as a legal concept, relates to the principle of double jeopardy (non bis in idem). The principle of double jeopardy is an important principle that is commonly involved in the civil legal practice, and is also an important principle in the Chinese legal system in accordance with two basic value goals of civil litigations, i.e., efficiency and justice. The principle originated from a basic legalprinciple and system about "consumption of litigious right" in the Roman law. The so-called consumption of litigious right refers to the fact that all of the litigious rights would be consumed due to a litigation dependency, and the second litigation dependency is not allowed for the same litigious right or petition right. That is, once a case is in a litigation dependency, a claim cannot be put forward with respect to this case.

Nowadays, this principle is not recorded definitely in the civil procedure law of China, and it is only prescribed in Article 124 (5), "with respect to cases in which a judgment, an order or a settlement has already taken legal effect, but either party brings a suit again, the people's court shall advise that party to file an appeal instead, except when the order of the people's court is one that permits the withdrawal of a suit".

It can be seen from this provision that the principle of double jeopardy should include at least two meanings: (1) the effect of litigation dependency, that is, the plaintiff cannot bring the suit twice, with respect to a case for which a suit has been brought, in the litigation dependency; and (2) res judicata, that is, once a judgment is made, the concerned parties cannot bring a suit with respect to the same case for which the judgment has been made.

The involved case made it clear that one situation should belong to the issue of "repetitive litigation" in patent infringement litigations, that is, if the infringer making the infringing product had borne the infringement liability for infringing the patent right in accordance with a previous effective litigation judgment, the following action should be deemed as a repetitive litigation and should not be tried again in principle, that is, the patentee brings a suit against the maker of the infringing product again for the infringement action of continuing to sell the same object (the same infringing product) caused by other parties.

The patentee of this design, Zhiming LI, holds a design patent No. ZL03319125.5, titled "Toothbrush Handle", which was granted and announced on September 17, 2003. On the same day of the announcement, the patentee authorized Guangdong Sugere Daily Chemicals Co., Ltd. ("Sugere Company" hereinafter, the legal representative of this company is Zhiming LI himself) to make and sell the patented product exclusively.

Thereafter, Zhiming LI found out that the children toothbrushes of Jinchen SW-02 sold by many sellers were suspected of infringing his design patent right, and these toothbrushes were produced by one of the defendants of this case, Wuhan Jinchen Industrial Co., Ltd. ("Wuhan Jinchen" hereinafter). With respect to the infringements, Zhiming LI had complained to the administrative agency and subsequently brought suits to the judicial organs.

The determination of whether the involved product falls into the protection scope of the design patent right is relatively simple and non-controversial. However, several time points and concerned parties made this litigation complicated and finally resulted in the problem of "repetitive litigations."

The following are the many time points and facts of this case that should be especially paid attention to:

(1) On September 2008, Zhiming LI complained to the Shantou Intellectual Property Office that the Shantou Wal-Mart infringed his patent for selling the children toothbrushes of Jinchen SW-02; and on January 9, 2009, Zhiming LI reached a settlement with the Shantou Wal-Mart, in which the Shantou Wal-Mart promised not to sell the children toothbrushes of Jinchen Sw-02 (the administrative procedure).

(2) On August 2009, Zhiming LI brought a suit to the Guangzhou Intermediate Court, suing Guangzhou Pinbo and Wuhan Jinchen infringed the involved patent for producing and selling the children toothbrushes of Jinchen SW-02. After the first and second instances, an effective judgment was delivered as the final civil judgment No.91 (2011) made by the third civil tribunal of the Guangdong High People's Court. The court found that Wuhan Jinchen infringed the involved patent right, and Wuhan Jinchen was ordered Wuhan Jinchen to stop making, selling, and offering to sell the products infringing the involved patent, and to pay RMB 60,000 (around USD 10,000). This judgment was legally effective on May 13, 2011 (the first litigation).

(3) On both May 14, 2011 and August 22, 2011, Sugere Company bought five children toothbrushes of Jinchen SW-02 in Shantou Wal-Mart through a notarization. Based on this purchase, Zhiming LI brought a suit to the Shantou Intermediate People's Court on September 27, 2011, suing Shantou Wal-Mart and Wuhan Jinchen infringed the involved design patent right (the present litigation).

(4) In addition, on December 30, 2008 and November 6, 2009, Wuhan Jinchen requested the Patent Reexamination Board ("PRB" hereinafter) to invalidate the involved design patent twice during the administrative procedure and the previous litigation; however the PRB finally maintained the patent's validity.

In the present litigation, the plaintiff, Zhiming LI, put forward the following claims: 1) ordering Shantou Wal-Mart to stop selling the children toothbrushes of Jinchen SW-02 immediately; 2) ordering Wuhan Jinchen to stop producing and selling the children toothbrushes of Jinchen SW-02; 3) ordering Wuhan Jinchen to destroy the mold for making the infringing products; 4) ordering Shantou Wal-Mart and Wuhan Jinchen to pay the economic loss of RMB 500,000 (around USD 80,000); and 5) ordering the two defendants (Shantou Wal-Mart and Wuhan Jinchen) to bear all of the costs occurred in the present litigation.

With respect to these claims, Shantou Wal-Mart argued that the sold products were obtained from a legal source, and thus it should not bear the compensation liability; and Wuhan Jinchen refused to appear in the court without presenting any justified reason.

On the basis of the above facts, the Shantou Intermediate Court held that:

(1) Shantou Wal-Mart should bear the civil liabilities, stop the damage and compensate the loss for its infringement, because (a) Shantou Wal-Mart knew that the producing and selling of the children toothbrushes of Jinchen SW-02 were not licensed by the patentee, and (b) Shantou Wal-Mart had made a settlement with Zhiming LI previously to promise not to sell the involved product, but breached its settlement by selling the infringing product again. Thus the actions of Shantou Wal-Mart did not satisfy as the situation stipulated under Article 70 of the Chinese Patent Law (2009), where any person, who, for production and business purpose, uses, offers to sell or sells a patent infringement product, without knowing that it was made and sold without the authorization of the patentee, shall not be liable to compensate for the damage of the patentee if he can prove that he obtains the product from a legitimate channel. Furthermore, in determination of the specific amount of compensation for the patent infringement, since the plaintiff did not provide any evidence to prove his loss or the infringement gains of Shantou Wal-Mart, the amount of compensation was RMB 20,000 (around USD 3,000) on the court's discretion; and

(2) as for Wuhan Jinchen, because Wuhan Jinchen had borne the compensation liabilities in the final civil judgment (2011) Yue Gao Fa Min San Zhong Zi No.91 by the third civil tribunal of the Guangdong High People's Court, the present litigation for Wuhan Jinchen related to the issue of "repetitive litigation," and additionally a second civil ruling (2011) Shan Zhong Fa Min San Chu Zi No.104 by the third civil tribunal of the Shantou Intermediate People's Court to reject the appeal.


According to the principle of double jeopardy, a repetitive litigation initiated with respect to a legally effective judgment, ruling, and settlement based on the same facts and reasons should not be tried twice.

As can be seen from the above inductions of the involved case, Wuhan Jinchen, one of the defendants of this case, had borne the compensation liabilities for its infringement and paid Zhiming LI RMB 60,000 (around USD 10,000), and should have stopped the behaviors of making, selling, and offering to sell the products infringing the involved patent according to the effective previous judgment, which was legally effective on May 13, 2011.

That is, the plaintiff had been compensated for the infringement of Wuhan Jinchen. Unless the plaintiff had sufficient evidences to prove that the children toothbrushes sold by the Shantou Wal-Mart on May 14, 2011 were made by means of the continuous infringement behavior of Wuhan Jinchen after the judgment made by the Guangzhou Intermediate Court was effective on May 13, 2011 (this is highly unlikely given the date), the children toothbrushes sold by Shantou Wal-Mart were still produced and made by means of the previous infringement behavior of Wuhan Jinchen (that is, the infringement behavior where the compensation liabilities had been borne according to the judgment from the Guangzhou intermediate court). Obviously, Wuhan Jinchen should not bear compensation liabilities twice for the same infringement, because this would violate the principle of double jeopardy. Therefore, in the judgment from the Shantou Intermediate Court, it was right and reasonable that the request of Zhiming LI for ordering Wuhan Jinchen to stop the infringement and pay the economic loss was related to the issue of "repetitive litigation."

On the other hand, from the perspective of the plaintiff, Zhiming LI, he should provide sufficient evidences to prove that the toothbrushes sold by Shantou Wal-Mart were made additionally after the previous judgment was effective, that is, he should prove that these products were made in a different infringement without being compensated when he decided to list Wuhan Jinchen as one of the defendants for the second time. In this case, the present litigation relates to a new type of infringement, and thus would not be regarded as the same litigation that had been judged, and therefore would not relate to the issue of "repetitive litigation."

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.