Case Brief

(I) The plaintiff Transtek Medical and main requests

Guangdong Transtek Medical Electronics Co., Ltd. (hereinafter referred to as "Transtek Medical"), the plaintiff, was established in 2002. In 2011, the Transtek Medical started to create its own brand "Lifesense (樂(lè )心)" and formally entered the domestic smart health field, mainly engaging in health scales, sphygmomanometers, smart bracelets, and smart watches. In the fourth quarter of 2015, Lifesense for the first time surpassed Apple and became the second largest brand of wearable devices in China next only to Xiaomi, and was listed on the Shenzhen Stock Exchange in November 2016.

Transtek Medical has been using the trademark "樂(lè )心(LIFESENSE)" on health scales and sphygmomanometers since August 2011, but applied for registration of the trademark later: applied for the trademark "樂(lè )心(LIFESENSE)" on "scales" and other goods in Class 9 in April 2011 and gained the approval for registration in May 2012; applied for the trademark "樂(lè )心(LIFESENSE)" "sphygmomanometers" and other goods in Class 10 in March 2014 and gained the approval for registration in September 2016. Transtek Medical launched the "Lifesense" smart bracelet in August 2013 and the "Lifesense" smart watch in June 2014, and rapidly had a share in China's wearable device market. However, in Group 0901, Class 9, where smart wearable products are usually registered, the plaintiff's registered trademark "樂(lè )心(LIFESENSE)" designates only smart rings, smart glasses, wristband smart phones and other smart terminals, and does not include "smart bracelets" or "smart watches". In the first trial, Transtek Medical requested that the registered trademark "樂(lè )心(LIFESENSE)" shall be recognized as well-known in Class 9 scales and Class 10 sphygmomanometers and be protected across classes. At the same time, Transtek Medical claimed that "樂(lè )心(LIFESENSE)" constituted an unregistered well-known trademark on smart bracelet goods.

(II) The defendant Yanyan Trading and main defenses

Zhengzhou Yanyan Trading Co., Ltd. (hereinafter referred to as "Yanyan Trading"), the defendant, was established in 2008, filed application in October 2010, and was approved for registration of the trademark "樂(lè )心HIIN" in October 2011, on goods in Class 14 of wristwatches, alarm clocks, Jewelry and other goods.

In October 2019, the plaintiff, from the defendant's Tmall online store and business sites purchased with notarization a variety of "樂(lè )心HIIN" smart watches and smart bracelet products. The defendant argued that the defendant applied for registration and used the registered trademark priorly, used its own registered trademark legally, and smart watches and smart bracelets belong to the protection scope of its own registered trademark, which do not constitute trademark infringement.

Court Judgment

In March 2022, the Shenzhen Intermediate People's Court held in the first instance that, although the sued infringing product was designed in the form of a watch, by seeing the essence of the product and from the perspective of the product's actual function, performance and use effect, it belongs to the class of hand-held smart wearable products rather than a watch that only provides time function, and the defendant's defense of using its own registered trademark was thus not established. The plaintiff's unregistered trademark "樂(lè )心(LIFESENSE)" on the smart bracelet goods has been known to the relevant public, and should be recognized as unregistered well-known trademark. The sued infringing goods are essentially the same as the smart bracelet, and the trademarks are similar, infringing the plaintiff's unregistered well-known trademark. In the case that the unregistered well-known trademark is recognized in this case, there is no need to determine whether the registered trademark is well-known or not, and the cross-class protection.

In September 2023, the Guangdong High Court ruled in the second instance to uphold the Shenzhen Intermediate People's Court's judgment on the nature of the infringement, and ruled that the amount of compensations should be reduced where appropriate. The key points of the second instance judgment are as follows:

1. Regarding the question whether the defendant's use of its own registered trademark "樂(lè )心(LIFESENSE)" in Class 14 of "watches" was standard or exceeded the scope of the approved goods, the Guangdong High Court held that: the sued smart watch was not the same watch in class of goods that the defendant's trademark was approved for. The evidence on record was insufficient to prove the fact of the defendant's prior use on the goods of the sued smart watch, and there was no evidence to show that the defendant's registered trademark had certain reputation, so the protection scope of the defendant's registered trademark was insufficient to extend to smart watches and smart bracelets. The defendant's argument that smart bracelets and smart watches are covered by the protection scope of its registered trademark lacks factual and legal basis.

2. Regarding the question whether grounds for "樂(lè )心(LIFESENSE)" being the unregistered well-known trademark on the goods of "smart bracelet" were sufficient, the Guangdong High Court held there exists sufficient basis for the fact that Guangdong Lifesense and Shenzhen Lifesense's use of the unregistered trademark "樂(lè )心(LIFESENSE)" on the goods of "smart bracelet" before October 2019 had been known to the relevant public, had a high degree of market awareness, and had formed a good reputation.

3. Regarding the attributes of the sued infringing goods, the Guangdong High Court held that: based on the product specification and the situation of inspection in court, the main functions of the sued infringing goods were data processing and health monitoring, and it was necessary to download the APP in order to use all the functions. There was a clear distinction between the sued infringing goods and the goods in Class 14 of precious metals, jewelry, watches and other goods in terms of actual functions and use effects, and that it was not improper to determine that the sued infringing goods belonged to the same class of goods as the smart bracelets in the first instance.

Typical Significance

This case is a typical case of protecting "non-standard goods" excluded in the Classification Tables through an unregistered well-known trademark. The case determines the class and attributes of the sued infringing goods in the sense of trademark law through the specification and on-site inspection of the sued infringing goods, and analysis of the structure and function of the products, which provides a valuable reference for more future adjudication of trademark infringement involving manufactured goods of multi-functional combination and new composite material products.