CHANG TSI
Insights
Recently, the team led by Tracy Shen from Chang Tsi & Partners achieved a significant victory on behalf of the renowned multinational corporation Johnson Controls and its fire protection brand, Tyco, in a landmark trademark infringement and unfair competition lawsuit. The First People's Court of Dongguan (first instance court) ruled that the defendant, Dongguan Taike Firefighting Apparatus Co., Ltd. (now renamed Dongguan Qunan Fire Technology Co., Ltd., hereinafter referred to as "Dongguan Taike" or the "defendant"), had constituted trademark infringement and unfair competition. The court ordered the defendant to immediately stop all infringing activities including using the infringing company name, and compensate the plaintiff for economic losses and reasonable expenses totaling CNY1.5 million (approx. USD 220,000). The Dongguan Intermediate People's Court dismissed the defendant’s appeal and upheld the original judgment, and the judgment has entered into force.
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The successful case represents a milestone in the comprehensive protection of the Tyco brand in China, playing a significant role in purifying the market and deterring potential infringers for Johnson Controls and its affiliated entities including Tyco (collectively referred to as the "plaintiff").
Tyco's products have been present in the Chinese market since 1996. As a leading manufacturer and supplier of fire suppression systems, Tyco’s products are involved in projects nationwide. The plaintiff attaches great importance to the protection of its intellectual property and has since 2004 applied for multiple trademarks "泰科"(TYCO in Chinese) and "TYCO" under various classes in China. Due to extensive sales and prolonged use, the "泰科"(TYCO in Chinese) and "TYCO" marks have achieved high recognition and reputation within the fire equipment industry and are widely known among the public.
The defendant, Dongguan Taike Firefighting Apparatus Co., Ltd., was established in 2014 in Dongguan, Guangdong Province. Since their inception, they have engaged in business operations by misappropriating, plagiarizing, and imitating the prior registered trademarks and trade names of Tyco. The defendant not only deliberately registered and used "泰科"(TYCO in Chinese) as its trade name but also extensively utilized the "泰科"(TYCO in Chinese), "TYKO", "泰科永安” (TYCO Yong An), "泰科消防”(TYCO Fire Protection), "泰科广消” (TYCO Guang Xiao), “泰科牌”(TYCO Brand) and other variations in offline operations such as on products and business premises, as well as in activities including their official website and online stores. Furthermore, the defendant falsely claimed online that “it inherited the world's top 500 and the leader in the security and protection industry - Tyco Security" attempting to further mislead the relevant public and cause market confusion.
After receiving instructions, the Chang Tsi team meticulously analyzed the case, comprehensively learnt the client's needs, and tailored detailed strategic recommendations. Initially, Chang Tsi sent a Cease & Desist letter to Dongguan Taike, demanding the cessation of all infringing activities. After multiple rounds of communication and warnings proved futile, the client decided to file a civil lawsuit to the First People's Court of Dongguan. Prior to filing the lawsuit, to ensure a smooth enforcement, Chang Tsi successfully froze the deposit of nearly CNY 2 million (approx. USD 280,000) through property preservation. Additionally, through trademark opposition and invalidation proceedings initiated by Chang Tsi, the defendant’s applications for marks such as "TYKO", "泰科广消” (TYCO Guang Xiao), and "泰科永安” (TYCO Yong An) were either rejected or declared invalid.
After two years of battles, the lawsuit, which involved a wide range of infringements and various types of infringement, finally has reached a conclusive verdict. By systematically reviewing the facts, and leveraging methods such as trademark prosecution, property preservation, onsite and online investigations and evidence collection, the Chang Tsi team, led by Tracy, successfully stopped the defendant’s infringing activities, effectively cleaning up the market and curbing the infringers.
With regard to the compensation, the amount of CNY1.5 million (approx. USD 220,000) determined by the First People's Court of Dongguan is among the highest in recent intellectual property cases handled by district courts in Dongguan City. Furthermore, through the collaboration of the JC’s global legal team and local market team, Chang Tsi submitted substantial evidence of using the trademarks and brand recognition. Consequently, the court acknowledged the high reputation of “泰科"(TYCO in Chinese) and "TYCO" trademarks' in long term of use and operations, providing substantial support for the client's ongoing enforcement and brand protection actions.
In recent years, Johnson Controls and its affiliated entities, including the Tyco brand, have been intensifying their efforts to protect intellectual property in the Chinese market through civil, administrative, and criminal channels. Chang Tsi shall remain committed to delivering comprehensive, tailored, and high-quality intellectual property legal services for clients.
