Recently, the Suzhou Intermediate People's Court in Jiangsu Province delivered a final ruling on a trademark infringement and unfair competition case involving two Chinese photovoltaic companies. The court utilized the EU Trademark Regulation to evaluate the ownership and specifics of the disputed trademark, while also applying Chinese law to determine trademark infringement liability.
Case Overview
The court concluded that a company from Taicang had infringed upon the EU registered trademark rights of a Wuxi company by using related logos at an international exhibition in Poland. Consequently, the court upheld the initial ruling requiring the Taicang company to compensate the Wuxi company 50,000 yuan.
Both companies are players in the Chinese photovoltaic industry. The Wuxi company, established in 2016, has expanded its operations from selling individual components to encompassing the entire photovoltaic industry chain. Its main trademark, "SUNOVASOLAR," was registered in China in 2021 and subsequently applied for international registration through the Madrid system in 2022, covering 28 markets, including the EU and the US. The Taicang company, founded in 2020, primarily focuses on photovoltaic bracket products and operates under the English name "Sun-Nova New Energy."
In May 2023, the Taicang company showcased its "Sun-Nova New Energy" logo at a photovoltaic exhibition in Poland. The Wuxi company contended that this logo closely resembled its EU registered trademark "SUNOVASOLAR," and given that both companies target the photovoltaic power generation sector, it could lead to consumer confusion. As a result, the Wuxi company filed a lawsuit for trademark infringement and unfair competition.
The first-instance court, in accordance with Chinese law, ruled that the prominent use of the "Sun-Nova New Energy" logo in the promotional materials of the Taicang company constituted trademark infringement. The Taicang company was dissatisfied and appealed the decision.
Case Significance
This case is particularly significant as it involves trademark infringement that took place in Poland, yet the legal proceedings were conducted in a Chinese court. The appeal primarily centered on whether the use of the disputed logo by the Taicang company at a Polish exhibition constituted trademark infringement.
Regarding the applicable law, the Suzhou Intermediate Court acknowledged the international aspects of this case. China follows a partitioning system for conflicts related to intellectual property rights. This means that the ownership and specifics of intellectual property are determined by the law of the jurisdiction where protection is sought, rather than by the preferences of the parties involved. As such, matters concerning ownership, establishment, effectiveness, maintenance, exclusivity, duration, and termination of intellectual property must comply with the law of the jurisdiction providing protection.
Conversely, issues related to infringement liability, including principles of liability, injunctive relief, and damages, are governed by the law of the court selected by the parties. In this instance, since the trademark rights were granted under EU law, that law applies to the trademark rights in question, while the liability for infringement is subject to the laws of the People's Republic of China, as mutually agreed upon by both parties.
In summary, the court applied EU law to assess the ownership and specifics of the trademark rights, while utilizing Chinese law to evaluate trademark infringement liability.