[ThePaper.cn] DefendantsAre Ordered to Compensate RMB 3 Million for Selling Nearly 360,000 Copycat LUNA Facial Cleansing Brushes

October 16, 2019  ThePaper.cn

ByLi Jing,ThePaper.cn

Facial cleansing brush: Original vs. Copycat

Three companies producing and selling a facial cleansing brush were sued by the patent owner of LUNA facial cleansing brush, an internet hit product, for infringing the latter's design patent. The plaintiff requested the court to order the three defendants to stop the infringement and jointly compensate RMB 3 million.

On October 16, ThePaper.cn (www.thepaper.cn) learned from the Shanghai Intellectual Property Court(SIPC) that on September 29, the court made the first-instance judgment, ordering the three defendants:Zhuhai KingdomElectric Appliance Co., Ltd. (hereinafter referred to as “Zhuhai Kingdom”), Zhongshan KingdomElectric Appliance Co., Ltd. (hereinafter referred to as "Zhongshan Kingdom”), and Shanghai Zhuokang Co., Ltd. (hereinafter referred to as “Zhuokang”),to immediately stop infringingthe design patent named "Facial Cleansing Device (II)”and enjoyed by the plaintiff Foreo (Shanghai) Trading Co., Ltd. (hereinafter referred to as “Foreo”), the defendantsZhuhai Kingdom and Zhongshan Kingdom to compensate the plaintiff RMB 3 million for economic losses and reasonable expenses, and the defendant Zhuokang to bear joint and several liability within the scope of RMB 50,000.

The designs of the two facial cleansing brushesare basically the same

According to the SIPC, Foreo, the plaintiff, claimed that the facial cleansing brush made by Zhuhai Kingdom and Zhongshan Kingdom had infringed the design patent owned by it. Zhuokang, one of the distributors authorized byZhuhai Kingdom and Zhongshan Kingdom, promised to sell and sold thatinfringing product. So Foreo sued the three companies, requesting the court to order the three defendants to stop the infringement and jointly compensate RMB 3 million for its economic losses and other reasonable expenses, andthe defendant Zhuokang to bear the joint and several liability for compensation within the scope of selling the infringing product.

After hearing the case, the SIPC held that the plaintiff is the owner of the design patent named "Facial Cleansing Device (II)", and that no entity or individual could exploit that patent without the permission of the plaintiff during the term of the patent.

In this case, the facial cleansing brush accused of infringement and the plaintiff's patented product involved fall into the same category as they are both facial cleansing brushes. The former is basically the same as the latter in the overall appearance, the arrangement and distribution of the bristles and theraised arcs, and the positions of the button and the charging port. The differences between the two, which indeed exist, have no substantial impact on the overall visual effect.The design of the cleansing brushaccused of infringement falls into the protection scope of the plaintiff's design patent right.

The court found that the defendantsZhuhai Kingdom and Zhongshan Kingdomhad jointly manufactured and sold the infringing product involved, and Zhuhai Kingdomhad also promised to sell the infringing product, so both companies should be liable for stopping the infringement and compensating for the economic losses incurred.

The defendant Zhuokang continued to promise to sell and sell the infringing product in its online shop after being sued by the plaintiff, so it shall jointly and severally bear the liability for compensatingthe plaintiff for its losses and part of the reasonable expenses within the scope of selling the infringing product after receiving the complaint.

350,000 infringing products were sold in 16 online shops

During the trial, at the request of the plaintiff, the court issued an investigation order to its lawyer to collect fromZhejiang Tmall Network Co., Ltd. and Hangzhou Ali Baba Advertising Co., Ltd. the time of shops opened by the defendants Zhuhai Kingdom and Zhongshan Kingdom or opened with their authorization on Tmall andAlibaba, and the complete sales records of the infringing product in those online shops from the date of opening to the date of the hearing. Tmall and Ali Baba werehighly cooperative by providingeven the ID of everysingle product. It was found thata total of 358,074 infringing products had been sold in 16 relevant Tmall stores and the total sales had reachedRMB 35,262,990.

Using the calculation "358,074 (the total number of infringing products sold on the market) x 1380 (sale priceof the patented product) x 20% (reasonable profit of each patented product) x 30% (contribution of the patented design involved to the profit of the patented product)", the court concluded that the lossescaused by the defendants' infringement exceedRMB 3 million claimed by the plaintiff.

Meanwhile, the court believedthat the evidence submitted by the plaintiff showed that there were other sales channels for the infringing products besides the 16 online shops where the plaintiff counted the sales volume, and the plaintiff had also paid notary fees and attorney fees to stop the infringement. Therefore, the court eventuallydecided that the amount of compensation claimed by the plaintiff was sufficient and should be supported.