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A few days ago, Qualcomm Incorporated was sued by Shanghai Gotop Semiconductor Ltd. before Shanghai High Court for trademark infringement and unfair competition regarding the Chinese character trademark “ 高通”. Qualcomm was asked for RMB 100 million damages. This is another trademark dispute between a domestic and foreign company seeking tremendous damages after the fight between Apple Inc. and Shenzhen Proview Scitech regarding the trademark “IPAD” was ended.
Qualcomm was translated into Chinese as “高通 ”, pronounced as “gao tong”, which is identical to the Chinese name of the plaintiff, Shanghai Gotop.
The registration information of Shanghai Administration for Industry & Commerce shows that Shanghai Gotop Semiconductor Ltd. was incorporated on June 6, 1996. According to the database of the Trademark Office, Shanghai Gotop has five registered trademarks* containing the Chinese characters “Gao Tong”, filed from August 8, 1992 to January 12, 2004, covering image transmission, phonetic telecommunication, advertisement, computer database, information transmission, computer telecommunication, etc.
Regarding the count of trademark infringement, it seems that the products/services covered by the five registered trademarks of the plaintiff Shanghai Gotop overlap or are similar to the business of Qualcomm Incorporated in China, so the latter may likely infringe upon some of these trademarks. However, among the up to 500 registered trademarks* and trademark applications filed by Qualcomm Incorporated in China, there are only 2 registered trademarks and 4 pending applications containing the two Chinese characters “Gao Tong”. It looks not that difficult for Qualcomm to select other trademarks from its trademark pool if the court orders Qualcomm infringe upon the plaintiff’s trademarks, without affording huge royalties.
As to the unfair competition count, according to the trademark laws and regulations, as well as the decision of H.J. Heinz Company, the plaintiff shall request the court to determine its trademarks are well-known trademarks by proving with evidence that its “Gao Tong” trademarks has been well known and itself has been well known at the time that Qualcomm Incorporated used the two Chinese characters in its Chinese name. Also, the plaintiff still has to prove that the two companies target same consumers or clients, thus use of the two Chinese characters in its Chinese name by Qualcomm Incorporate would have misled the relevant public to believe the correlation between them.
As to the claim of 100 million damages, the plaintiff has burden to prove that profits made by the defendant or the losses suffered by the plaintiff during the period of trademark infringement are close or equal to this amount. Otherwise, if the infringement is concluded, the court shall discretionally decide a number according to the trademark law in consideration of the nature the trademarks, willfulness of the defendant, extent and activities of the infringement activities, as well as the necessary reasonable expenses the plaintiff spends for the lawsuit.
We will be paying attention to the development of this case.
* Sources: Trademark Office Website http://sbj.saic.gov.cn/sbcx/