A Case study on Utility Model Infringement in China - International

A Simple Selfie-Stick Utility Model Patent Crushes Infringers in China

This particular case is between Winners’ Sun and Zhongshan Pinchuang Plastic
Products Co. Ltd (henceforth referred to as Pinchuang). Winners’ Sun sued Pinchuang
for patent infringement, arguing that Pinchuang was manufacturing infringing selfie sticks,
affixing different company’s logos onto the selfie sticks, and then selling the selfie sticks.
Winners’ Sun Plastic Electronics (Shenzhen) Co., Ltd. (henceforth referred to as Winners’
Sun) is the patentee of a utility model titled Integrated Self-Photographing Apparatus.
Winner’s Sun’s core business is selfie sticks, and it has grown that core business to 400
million within seven years. Winners’ Sun has been using this single, award-winning utility
model patent to file a massive number of lawsuits against manufacturers and sellers
nationwide (China) to protect its patent right. With patent number ZL201420522729.0
(‘729) and case number (2020) SPC IP Civil Final 357. The appellant (Defendant in the
original trial) is Zhongshan Pinchuang Plastic Products Co. Ltd, while the appellee
(Plaintiff in the original trial) is Winners’ Sun Plastic Electronics (Shenzhen) Co., Ltd.

The Guangzhou Intellectual Property Court (“Guangzhou IP Court”) affirmed that

Pinchuang was the manufacturer of the infringing products. After considering (1) the
infringing nature of the source of manufacturing and (2) Pinchuang’s intentional and
repeated infringement activities, the Court ordered Pinchuang to cease infringing
activities and compensate Winner’s Sun 1 million RMB. Dissatisfied with the verdict,
Pinchuang appealed to the Supreme People’s Court (SPC). Pinchuang has no objection
to the fact that the product infringed the patent ‘729. Pinchuang argued that it did not
implement the act of manufacturing the alleged infringing product. However, Winners’ Sun
provided a notarized video showing Pinchuang’s production of the alleged infringing
products. Pinchuang countered that the evidence was just an old promotional video they
recorded before, and did not prove that any new manufacturing activities. The court
disagreed, concluding there was new infringing activities because the new infringing
products were different from the one litigated in a previous case between the parties (No.
495). The product from the previous case No. 495 had a “JJi” trademark, whereas the
current accused infringing products did not have the trademark, the People’s Court
applies Article 11 Paragraph 1 and Article 65 of the Patent Law of the People’s Republic
of China, henceforth referred to as the Patent Law 2010 for statutory compensation,
consideration of the infringement and the circumstances of the infringement

The court will consider factors such as the value and profit rate of the infringer, the
operation status of the accused infringer, the subjective malice of the accused infringer,
and the compensation to the right holder in related cases.The SPC held in favor of
Winners’ Sun, handing it yet another legal victory. Despite repeated invalidation attacks,
Winners’ Sun’s utility model patent continues to hold strong and still remains valid. The
SPC also ruled that Pinchuang sold and manufactured the alleged infringing product, and
therefore is the source of the IP infringement. The court concluded that Pinchuang willfully
infringed the patents, continuing to manufacture and sell the products even after
defending two civil infringement lawsuits for breach of the same patents involved. The
court further judged that this action, combined with similar cases for several other
infringing products, reached the threshold demonstrating Pinchuang’s deliberate intent to
violate the patent right in this case. The court found Pinchuang’s activities to be a case of
serious infringement. The court also held that the statutory compensation amount should
be determined from a higher level within the range prescribed by law. As a result, the
appeal was rejected and the original verdict was upheld.

Reference:

China Patent Strategy. (2021). 2020 China Top 10 IP Cases: Winners’ Sun is truly a
Winner: A Simple Selfie-Stick Utility Model Patent Crushes Infringers in China.
https://chinapatentstrategy.com/a-simple-selfie-stick-utility-model-patent-
continues-crushing-it-against-infringers-in-
china/?fbclid=IwAR1PPam3g28bdiE5oBMUQYVZuJvTeOn4cIkSsg2J9F-
S3bRjTi5JqL567Sk