Suntech Slowly Vanquishes an Eco-Mark Outlaw

March 1st, 2009 by Eric Lane Leave a reply »

suntechlogo.JPG

In a previous post, I wrote about the trademark troubles of Suntech Power Holdings (“Suntech”), a Chinese solar photovolatic (PV) module provider, who has been fighting an infringing thorn in its side on three continents. 

Suntech owns U.S. Trademark Registration No. 3,111,705 (suntechreg.pdf) (“’705 registration”) for its SUNTECH design mark (pictured above) for:

Solar batteries; electric accumulators for vehicles; accumulator boxes; battery boxes; plates for batteries; batteries for lighting; batteries; battery chargers; galvanic batteries; electric batteries

Suntech also has common law rights to the word mark SUNTECH in connection with solar PV modules and building integrated PV and has an application pending in the U.S. Patent & Trademark Office for the mark (suntechapp.pdf).  

Hong Kong based Shenzhen Xintian Solar Technology Co. and its subsidiary Sun Tech Solar (collectively “Sun Tech Solar”), have been using the trademarks SUN TECH and SUN TECH SOLAR in connection witht the sale of solar modules similar to Suntech’s products and operating a web site at the address www.solarsuntech.com.   

Last month Suntech announced that it had been granted a preliminary injunction (PI) in Germany.   The PI prohibits Sun Tech Solar and its distributors from selling “Suntech” brand solar products (see the earth2tech story here). 

The news release says there have been only ”isolated cases” of imitation products sold and suggests that knockoffs can be identified by closely comparing the logos and product names on the products sold with the genuine logos and names on the Suntech website.

Germany isn’t the only market where Suntech has enforced its trademark rights against fakes made by Sun Tech Solar.  As discussed previously in this space, Suntech sued its rival last year in San Diego for alleged infringement of the ’705 registration and its unregistered SUNTECH word mark.

In that case, the court granted a preliminary injunction (suntech_pi_order.pdf) ordering Sun Tech Solar to cease all use of the SUN TECH and SUN TECH SOLAR marks as well as any other confusingly similar marks in connection with solar modules in the U.S.  The injunction order came about a week before Sun Tech Solar was to show its wares at the Solar Power International 2008 Trade Show in San Diego.

But the company thumbed its nose at the court and its rival by displaying the SUN TECH SOLAR mark on its signs and promotional material at the Trade Show anyway and refusing to cease the infringing activity even after being served with a copy of the preliminary injunction.  The court found Sun Tech Solar in civil contempt and ordered the seizure of the infringing materials (suntech_seizure_order.pdf).

That suit ultimately resulted in a default judgment and a permanent injunction against Sun Tech Solar (suntech_default_order.pdf) because of the company’s continuing infringement and refusal to even show up in court.  The default order stated:

The Defendant has made it clear that it does not intend to cease infringing Plaintiff’s trademarks and refuses to acknowledge this litigation.

Even if Sun Tech Solar had hired attorneys, they wouldn’t have had much to work with on the law or the equities considering the infringer’s outlaw behavior.

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