Liability for damages arising from malicious IP litigation

In revising the Regulations on Cause of Action for Civil Cases by the Supreme People’s Court in 2011, the newly added cause of action being a “dispute over the liability for damages arising from malicious claims by intellectual property litigation” acts as a judicial response to this new type of malicious prosecution case in the field of intellectual property rights. In this column, the author has taken a successful case represented recently by the agency company concerning the liability for damages arising from malicious claims by intellectual property litigation as an example to introduce the relevant problems in such cases.

In June 2014, the first defendant in this case applied for the design patent numbered ZL201430181353.7, which was authorized in October 2014. The key concern regarding the patent at issue shows that there is a “jumping deer” logo on the upper right of the cylindrical body of the patent. That logo is the registered trademark of Deere Company, an affiliated company of the plaintiff in this case, John Deere China Investment. The plaintiff John Deere China was authorized to use this trademark in China. Meanwhile, the shape and design of the patent at issue is basically the same as the outer cylindrical packaging used by the plaintiff for lubricating oil sold in China. Furthermore, the plaintiff had used the lubricating oil with the outer cylindrical packaging in the form of advertisements in publications in 2010.

In December 2014, the administrative decision handed down by Jiamusi Municipal Department for Industry and Commerce was determined that the use of the “jumping deer” trademark in the outer packaging of the lubricating oil sold by the outsider had violated the exclusive rights to use the registered trademark of Deere Company, the affiliated company of the plaintiff. These infringing products had been purchased from an outsider company. The outsider company and the second defendant in this case John Deere (Dandong) Petrochemical shared the same legal representative, who together with the first defendant of this case acting as the agent of the outsider company had taken part in the hearing of the administrative case, and in the statement of defense recognized that these alleged infringing products had been purchased.

Shi Yakai is an attorney-at-law at Sanyou Intellectual Property Agency