Two Chinese enterprises clashed over trademark issues at an exhibition in the EU. One party found its trademark was infringed by the other and filed a lawsuit back in China. Can Chinese courts hear the case? Which laws shall apply? The Intermediate People’s Court of Suzhou delivered a clear answer: the court has jurisdiction and ruled the case in accordance with EU laws.
I. Similar Trademarks Spotted at the Exhibition
In May 2023, the Poznań International Renewable Energy Fair was held in Poland. While receiving customers at its booth, a photovoltaic company based in Wuxi noticed a highly similar logo — Sun-Nova New Energy — displayed on the posters of a neighboring booth run by another Chinese photovoltaic enterprise based in Taicang.
The Wuxi-based company owns the core trademark SUNOVASOLAR. It was registered in China in 2021 and extended protection to the EU via the Madrid System in 2022, approved for use on Class 9 goods including photovoltaic cells and modules. In other words, the trademark is fully protected within the EU.
Unable to resolve the dispute on site, the Wuxi company filed a lawsuit against the Taicang company with the Intermediate People’s Court of Suzhou after returning to China.
The defendant argued that the disputed trademark was used in Poland targeting European consumers and business entities, so a Chinese trademark registration could not support litigation in China. This raised a tricky legal question for the court.
II. Chinese Courts Have Jurisdiction
The Suzhou Intermediate People’s Court confirmed its jurisdiction over the case.
Pursuant to the Civil Procedure Law of the People's Republic of China, Chinese courts have jurisdiction as long as the defendant has a domicile within China, even if the infringing act takes place overseas. Since the Taicang company is a domestic enterprise, the case is subject to the adjudication of Chinese courts.
While jurisdiction was confirmed, determining the applicable laws became the core challenge of the case.
III. Ascertainment and Application of EU Laws
This case is distinctive in that the infringing act and its consequences occurred in Poland, the plaintiff’s trademark is registered under the EU framework, the involved parties are Chinese enterprises, and the litigation is heard by a Chinese court.
The court adopted the splitting rule stipulated in the Law on the Application of Law for Foreign-related Civil Relations, which divides intellectual property disputes into two parts:
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For the ownership and validity of intellectual property rights: the laws of the place where protection is claimed shall prevail. Since the trademark was registered in the EU, EU laws govern issues such as trademark validity and the scope of protection.
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For infringement liabilities, including the determination of infringement and the calculation of damages: Chinese laws shall apply.
To this end, the court launched the foreign law ascertainment procedure. Professors from the School of Intellectual Property, East China University of Political Science and Law issued a professional Foreign Law Ascertainment Opinion, elaborating on relevant provisions of the EU Trade Mark Regulation. After hearing statements from both parties, the court applied EU laws to define trademark ownership and protection scope, and adopted Chinese laws to rule on compensation liabilities.
IV. Infringement Confirmed under EU Laws
The court strictly applied the EU Trade Mark Regulation for trademark comparison.
The Taicang company defended that Sun-Nova was merely part of its enterprise name, and both sides mainly serve B2B professional buyers who would not be confused by similar signs due to rational purchasing decisions.
The court rejected this defense. The suffix SOLAR in the plaintiff’s trademark SUNOVASOLAR is a generic term in the photovoltaic industry with low distinctiveness, so SUNOVA constitutes the core distinctive element. The combination of Sun and Nova used by the defendant is highly similar to SUNOVA in both pronunciation and overall visual appearance, which is sufficient to cause confusion among relevant public under EU laws.
The court finally ruled that the Taicang company infringed the plaintiff’s EU trademark rights. In accordance with Chinese laws, the defendant was ordered to cease infringement and pay damages. The second-instance judgment upheld the first-instance ruling of 50,000 yuan in compensation.
Though the compensation amount is modest, the ruling carries far-reaching significance.
V. Three Reminders for Chinese Enterprises Going Global
1. Domestic trademark registration offers no protection overseas
Trademarks registered in China are only protected within Chinese territory. A Chinese trademark certificate cannot safeguard your rights if you use unregistered logos at overseas exhibitions. Enterprises shall complete trademark registration in target countries and regions in advance for overseas protection.
2. Complete EU trademark registration ahead of schedule
For enterprises planning to expand into the EU market, apply for EU trademark registration or designate EU member states via the Madrid International Registration System as early as possible. The registration process usually takes a long time, so do not delay the application until shortly before overseas exhibitions.
3. Preserve full evidence during overseas exhibitions
Prior to exhibitions, conduct trademark searches in host countries. During events, collect evidence of your own trademark use as well as suspected infringement by others via notarization, photos and videos. Sufficient evidence is critical for safeguarding legitimate rights once disputes arise.
Conclusion
The 50,000-yuan compensation is a small figure, yet this landmark ruling sends a powerful signal to all Chinese enterprises going global: Chinese courts are fully capable of handling cross-border trademark disputes, and will respect and apply local laws to protect legitimate rights and interests.
Clear rules will enable enterprises to march forward with greater confidence.
