In Trademark Battle Against Former U.S. Marketing Agent Haynes and Boone Prevails for Chinese IP Firm

04/01/2014


In a dispute litigated from California to Oregon to the People’s Republic of China, Haynes and Boone, LLP lawyers have successfully defended a Chinese IP Firm’s trademark against the claims of its former U.S. marketing partner.

The latest victory for firm client AFD China Intellectual Property Law Office (AFD China) came March 28 after a three-day trial in an Oregon federal district court when a jury decided the former marketing agent, AFD USA, had no right to claim ownership of the “AFD” mark because AFD China was the first to use it in U.S. commerce.

In the Oregon litigation, AFD USA argued it deserved damages of more than $10,000,000 for AFD China’s alleged infringement. The court will address the remaining issues - declaratory judgments for AFD China and permanent injunctive relief - on Friday.

A cross-office team of Haynes and Boone lawyers assisted AFD China with this matter, Silicon Valley Partner Glenn Westreich, Dallas Partners Aimee Furness and Ben Mesches, and Dallas Associates George Graves and Jamee Cotton.

The case began in late 2004 when AFD China, a Chinese intellectual property firm in Beijing, engaged a marketing agent in the United States. That marketing agent formed a U.S. company with a similar name, AFD China Intellectual Property Law (USA) Office (AFD USA). The cooperation between the parties lasted about three years until the end of 2007. However, without notifying AFD China, the marketing agent, AFD USA, trademarked “AFD” in 2006 for itself.

Following the termination of the cooperation, AFD USA sued AFD China in the People’s Republic of China, complaining about money allegedly owed to AFD USA and claiming that AFD China wrongfully terminated the cooperation. The Chinese trial court, appellate court, and Chinese Supreme Court all found for our client, AFD China, and upheld the proper termination of the cooperation.

AFD USA then sued AFD China for trademark infringement, unfair competition, misappropriation of trade secrets, unjust enrichment, intentional interference with economic relations, and conversion in both federal court in the District of Oregon and California state court.

The California state court case was eventually dismissed. In the Oregon federal case, AFD China was successful in defeating all of AFD USA’s claims at the summary judgment stage except the trademark infringement claims – where the jury found in favor of our client, AFD China.

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