Casio wins watch design patent infringement lawsuit

by | May 4, 2021 | Design patents |

Casio Computer Co., Ltd. is a Japanese electronics manufacturing company known for introducing the world’s first electric calculator in the 1950s and introducing the first mass-produced digital watches in the ‘70s.

Today, the company makes affordable keyboards, digital pianos, calculators, watches and more.

Sometimes Casio makes news as well, as it did earlier this year when the Shanghai Intellectual Property Court ruled in favor of the Japanese company against four defendants in a design patent infringement case.

Casio was awarded 8.8 million RMB ($1.37 million USD) in damages and expenses. The court also issued an injunction against Tornado Company, Small Company, Weishi Company and Huaxin Products Factory, ordering them to immediately stop infringing on Casio design patents.

The defendants’ roles

In its lawsuit, Casio alleged that the defendants had infringed on the design patents for three of its watches, using the SMAEL brand online and in physical stores since 2016. Casio said each of the four defendants played key roles in the process: Small Company is the registered agent of the SMAEL watch brand (a registered agent is an entity designated to receive legal documents on behalf of a business), Tornado Company holds the SMAEL trademark, while Huaxin Products Factory and Weishi Company are production plants.

The court said a person named Peng owns or is an investor in all four.

Casio alleged that together, the quartet of defendants produced and sold watches that infringed on three of its design patents for watches it sells for more than $150 each.

The other side of the story

The defendants argued that their products aren’t identical or even similar to the patent involved. They also argued that if infringement was established, they didn’t commit joint infringement, and they said that the compensation Casio sought was excessive.

They also pointed out that the prices of their products “are quite different” from the Casio products, and they claimed that their “products will not confuse ordinary consumers, nor will they cause economic losses to the plaintiff.”

The court’s ruling

The Shanghai IP court disagreed, finding that the product designs of the three SMAEL watches “were not substantially different” from the Casio designs. The court also found that because the defendants intended to infringe and because they cooperated with one another on the infringement, they jointly bear the legal responsibility for the infringement and would each compensate Casio for its losses.

The court said it obtained online sales data for the infringing products and then considered the following six factors to determine damages:

  • The extent of sales internationally and at home for infringing products.
  • The magnitude of infringement because the defendants’ venues were extensive.
  • The “strong design” of the patents and how they added to profits for the defendants.
  • The replication of the watch designs was clearly “obviously malicious” infringement.
  • The defendants’  would not provide records for the infringing products when court ordered.
  • Lastly, the court determined that “the plaintiff paid certain reasonable expenses to stop the infringement.”

(You can read the Shanghai Intellectual Property Court’s decision in simplified Chinese here. We used Google Translate to render the text in English.)

The compensation for damages and expenses for the three design patents were for approximately $120,000, $150,000 and $1,050,000.

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