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Apr 14,2020
Express n° 2 WHD Case: TM | US Golf Group Wins RMB 1 Million Damages in a Lawsuit against Copycat in China
The defendant is a headwear manufacturer named Huaxia Headwear, an OEM factory making all sorts of headwear products including golf hats. It was caught at the 2017 Canton Fair by the Golf Group distributing brochures that contained trademark of the Golf Group members. The Golf Group filed complaint with the exhibition office, and Huaxia agreed to immediately cease the infringement and promised to pay RMB1 million liquidated damages if they infringe any intellectual property rights of any of the Group members again. Unfortunately Huaxia didn’t follow their promise and was caught again at the 2018 Canton Fair. The Golf Group brought a lawsuit to Haizhu District Court in Guangzhou and asked for enforcement of the signed agreement. The court agreed with the Golf Group and ruled that the liquidated damages should be paid even though no substantial damages had been caused.
Huaxia appealed to Guangzhou IP Court arguing that the damages was way too high as no substantial harm had been caused to the member. The court ruled that the agreement, as a promise and guarantee not to infringe again, should be honored as Huaxia signed the agreement with full awareness on the consequence, and the fact that Huaxia repeatedly conducted the infringement despite of the existence of the agreement showed that Huaxia was ignorant or even hoping for triggering the consequence. The court further stated that the agreement is a guarantee under free will, and also a punishment for repeating infringement, therefore should be honored and enforced. The defendant has betrayed its promise and deserves no mercy, said the judge in the decision.
“This decision is quite encouraging as we have paid millions of dollars fighting counterfeits in China in the past over 15 years and this is the first time that meaningful damages are paid to us.” Said Mr. Stephen Gingrich, Vice President at Cleveland/SRI Golf. “We were pleased to see that hundreds of counterfeiters were arrested and put in jail in the past decade, and we are happy to see that part of our cost are paying back.”
“This is definitely a good sign that Chinese government is enhancing intellectual property protection after the trade agreement between China and the US was signed in January.” Commented Mr. Jason Yao, the attorney representing the Golf Group in China. “China just amended the Trademark Law for the fourth time and significantly increased the statutory damages. Hopefully we will see much higher damage awards more often in the near future.”
About the US Golf Manufacturers Anti-Counterfeiting Working Group
The US Golf Manufacturers Anti-Counterfeiting Working Group consists of six of the most well-known golf companies in the world—Acushnet Company, whose brands are Titleist, FootJoy and Scotty Cameron; Callaway-Odyssey; Srixon, Cleveland Golf and XXIO; PING; PXG, TaylorMade. Formed in 2004, the Group has supported the efforts of international law enforcement and government agencies to conduct raids and investigations of counterfeit operations, as well as raise public awareness of the issue. Since its inception, the Golf Group’s efforts led to the shutdown of more than 1,500 websites and authorities have seized more than two million counterfeit golf products.
By: Jason Yao