Recently, the Shanghai Intellectual Property Court publicly pronounced judgments in two cases of trademark infringement and unfair competition disputes filed by Xiaomi Inc. and Xiaomi Communications Co., Ltd. against a Chaozhou-based company and others. In both cases, the court recognized the well-known trademarks, applied punitive damages under the law, and fully upheld the rights holders' claims for economic losses, awarding damages of 30 million yuan and 5 million yuan, respectively.

Case Brief

Xiaomi Company is the trademark owner of No. 8228211 trademark "小米" (Xiaomi) and No. 8911270 trademark " ", both of which are designated for use on goods in Class 9 including mobile phones. The Chaozhou-based company and others used the accused infringing marks such as "小米零度"(Xiaomilingdu) and " " that are similar to the trademarks involved on their smart toilets and shower products produced and sold. SU X is the registrant of No. 32483813 trademark   and authorized the Chaozhou-based company to use the trademark. Additionally, the Chaozhou-based company used "Xiao Ai Xiao Ai (小爱小爱)" as a voice wake-up and operation command on its toilet products produced and sold, which is highly similar to Xiaomi Company's "Xiao Ai Tong Xue (小爱同学)" voice wake-up command.

After accepting the commission, the lawyers of Unitalen thoroughly investigated the infringement behaviors of each defendant across multiple platforms. They conducted a detailed legal analysis and argumentation regarding their joint infringement behaviors. Additionally, at the outset of the case hearing, we applied to the court for obtaining sales data from multiple platforms. The data provided by the platforms indicated that the defendants reaped substantial profits from their infringing behaviors.

Court Judgment

After hearing, the Shanghai Intellectual Property Court held that, since the registered trademarks for right claims by Xiaomi Company were designated for use on goods in Class 9 including mobile phones, while the accused infringing marks were used on goods in Class 11 including smart toilets and shower products, and the goods in the two classes are neither identical nor similar, there is a need for determining whether the trademarks are well-known trademarks. Furthermore, when the accused infringing behaviors in the case occurred, the trademarks involved had been widely known to the relevant public in China through the use and promotion by Xiaomi Company, constituting well-known trademarks for use on goods in Class 9, including mobile phones. The accused infringing marks are likely to cause the relevant public to be misled regarding the source of the goods or to believe that their source is specifically related to the goods with Xiaomi Company's registered trademarks. Therefore, the Chaozhou-based company and SU X constitute trademark infringement. Xiaomi Company's "Xiao Ai Tong Xue" voice command has a high level of popularity and influence, falling within the scope of rights protection under Article 6 of the Anti-Unfair Competition Law. The "Xiao Ai Xiao Ai" voice wake-up and operation command may mislead the public into believing that there may be specific connections between related toilet products and Xiaomi Company in terms of product research and development, technical support, or authorization and cooperation, or believing that the toilet products can connect to the smart home service system of Xiaomi Company. Therefore, the Chaozhou-based company constitutes unfair competition. Given that the Chaozhou-based company and SU X specialized in infringement with apparent subjective malice and severe infringement circumstances, the court applied double punitive damages calculated based on their profits from infringement and upheld the full 30 million yuan damages claim of the plaintiff.

Significance of the case

In both cases, the courts reaffirmed that "小米"(Xiaomi) and " " are well-known trademarks, effectively safeguarding the legitimate rights and interests of the parties involved. This outcome also encourages market participants to abide by the principle of good faith and engage in fair competition during technological innovation. The cases were publicly reported and discussed in media programs such as Shanghai News Radio's "Legal Perspective on the World" program and Shanghai Media Group's "Case Focus" program.