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Case 2:19-cv-01948 Document 1 Filed 11/06/19 Page 2 of 21
4 1051, et seq.; for common law trademark infringement and unfair competition.
5 2. This Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. §§
6 1119 and 1121, and pursuant to 28 U.S.C. §§ 1331, 1338, and 1367, because this action presents
7 questions arising under the trademark laws of the United States to which Congress has granted
8 exclusive subject matter jurisdiction to the federal courts. This Court has supplemental jurisdiction
13 4. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b), (c), (d),
14 and 1400(b) because MingFar does business in Nevada, has committed acts of infringement in
16 THE PARTIES
17 5. SATA is a German corporation established in 1907 and organized under the laws
18 of Germany.
19 6. Upon information and belief, Taizhou Xingye Pneumatic Tools Co., Ltd. is a
20 Chinese company located at Tiandu Industrial Zone, Fuyin Street, Xianju City, Zhejiang Province,
21 China.
22 GENERAL ALLEGATIONS
23 Background on SATA
24 7. SATA is a leading manufacturer of paint spray guns, paint spray gun reservoirs,
25 and related equipment principally used to paint automobiles.
26 8. SATA’s products are designed and manufactured in Germany and are sold to
27 distributors worldwide.
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1 9. Over the past century, SATA has been a leader in the production of paint spray
2 guns, paint spray gun reservoirs, and related equipment. SATA’s paint spray guns are highly
3 valued, well known for their quality, performance, and durability, and are used by professional car
4 repair businesses, automobile manufacturers, yacht and boat builders, carpenters, painters,
6 10. SATA offers a wide variety of paint spray guns, including handheld spray guns and
7 spray guns for automatic painting systems.
8 11. SATA’s strong reputation and goodwill in the industry are further bolstered by its
9 strong commitment to aiding users of SATA products through a training center for in person
10 trainings, free online and telephone services, such as tips for painting, a forum for discussion,
12 12. Due to the quality of its products and its international reputation for technological
13 innovation, SATA has achieved extensive sales throughout the United States and the world. In
14 the United States, SATA annually sells in excess of 100,000 paint spray guns and paint spray gun
15 reservoirs annually. Over the last five years, on average, SATA enjoyed annual sales in the United
16 States in excess of $15 million dollars. Internationally, SATA has annual sales in excess of $95
17 million dollars.
18 13. SATA also has prominently and extensively advertised and promoted products and
19 services offered under the SATA Marks, throughout the United States and the world, through such
20 varied media as the internet, newspapers and magazines, and point-of-sale displays. SATA also
21 operates websites at the <sata.com> and <satausa.com> domain names. As a result, SATA has
23 14. For many years, SATA has expended millions of dollars annually in advertising
24 and promoting and marketing the SATA Marks in the United States.
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Case 2:19-cv-01948 Document 1 Filed 11/06/19 Page 4 of 21
5 U.S. Trademark Registration No. 3,153,260, (incontestable), a design mark for the
6 color green as applied to the plate of the grip base of the spray gun which can be
7 seen below and from three sides of the grip having a thickness of about 3-10 mm
8 and a length and width of about 10-20 mm, covering “paint spray guns”;
9 U.S. Trademark Registration No. 3,072,417, (incontestable), a design mark for a
10 band of red color extending around the circumference of a paint reservoir for a
11 paint spray gun, the band of red color extends around the circumference of the
12 paint reservoir directly under the screw cap and has a width of approximately 5-
13 20 mm, covering “PAINT SPRAY GUNS AND PARTS THEREOF”;
14 U.S. Trademark Registration No. 2,770,801 (incontestable), a design mark for a
15 green band of color extended around the circumference of a paint spray gun air
16 cap ring, the green band being narrower than the air cap ring, covering “paint
17 spray guns”;
18 U.S. Trademark Registration No. 2,774,593 (incontestable), a design mark for a
19 blue band of color extended around the circumference of a paint spray gun air cap
20 ring, the blue band being narrower than the air cap ring, covering “paint spray
21 guns”;
22 U.S. Trademark Registration No. 2,793,583 (incontestable), a design mark for a
23 band of [any] color extended around the circumference of a paint spray gun air
24 cap ring, the color band being narrower than the air cap ring and of a color that
25 contrasts with the air cap ring, covering “paint spray guns”;
26 U.S. Trademark Registration No. 4,920,510 (“1000”);
27 U.S. Trademark Registration No. 4,920,511 (“2000”);
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5 16. All of the marks are used to identify paint spray guns.
6 17. Through a long period of usage by SATA, the SATA Marks are well-known and
7 famous to customers and potential customers. The SATA Marks serve as an indicator of the origin
13 registered with the United States Patent and Trademark Office. In this case, there are four (4)
14 design patents at issue: U.S. D644,716, U.S. D548,816, U.S. D552,715, U.S. D552,213
15 (hereinafter the “SATA Patents”). Attached hereto as Exhibit B are true and correct copies of the
16 SATA Patents.
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Case 2:19-cv-01948 Document 1 Filed 11/06/19 Page 6 of 21
1 Relevant Description
2 Ornamental design of the SATAjet 4000 B SATA paint spray gun.
3 U.S. D548,816 (“‘816 Patent”)
4 Claim: The ornamental design for a paint spray gun, as shown and described.
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Relevant Description
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FIG. 1 is a first perspective view of a first embodiment of the ornamental design of SATA’s
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minijet 3000 paint spray gun according to the present invention;
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U.S. D552,715 (“‘715 Patent”)
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Claim: The ornamental design for a paint spray gun, as shown and described.
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Case 2:19-cv-01948 Document 1 Filed 11/06/19 Page 7 of 21
1 Relevant Description
2 Ornamental design of the SATAjet 3000 SATA paint spray gun.
3 U.S. D 552,213 (“‘213 Patent”)
4 Claim: The ornamental design for a paint spray gun, as shown and described.
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15 Relevant Description
19 separate actions in the People’s Court of the People’s Republic of China (“Chinese Actions”).
20 21. The Chinese Actions resulted in judgments for SATA, holding that MingFar had
21 infringed on SATA’s Chinese trademarks “jet 1000” and “SATA,” as well as SATA’s Chinese
22 patent for its QCC paint cup connection. True and accurate English translations of the judgments
24 22. MingFar is undoubtedly aware and familiar with SATA’s intellectual property,
25 many of which have been previously asserted against it, and nevertheless chose to display and
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4 represent everything from air conditioning to computer systems, to paint/coating body repair, hand
5 tools, and similarly situated companies. Exhibitors at AAPEX generate business (i.e., buy and sell
6 products) and develop and maintain business relationships with key customers and suppliers.
7 24. Typically, exhibitors will take orders and then ship them from their home countries.
8 25. AAPEX is currently being held between Tuesday, November 5, 2019, and
9 Thursday, November 7, 2019, at the Sands Expo in Las Vegas, Nevada, and features thousands of
10 exhibitors and exhibitor booths.
11 Discovery of Infringement
12 26. On Tuesday, November 5, 2019, SATA representatives attended the APPEX trade
13 show.
14 27. While at the show, SATA representatives observed MingFar advertising and
15 offering for sale paint spray guns, paint spray gun reservoirs, and related products at AAPEX
17 28. MingFar had several pieces of marketing material including a product pamphlet.
18 29. The pamphlet identifies MingFar’s products by name, picture, and product number.
19 30. The pamphlet was advertising, offering for sale, and selling MingFar’s paint spray
20 guns and related products.
21 31. SATA took photographs of the Infringing Products being advertised in the
22 pamphlet. True and accurate copies of the photographs are attached hereto as Exhibit D.
25 33. True and accurate website screenshots of the Infringing Products are attached
26 hereto as Exhibit E.
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1 34. This website allows United States customers to browse and request information
2 regarding importing infringing guns directly.
3 35. Furthermore, MingFar was directing U.S. tradeshow customers to access its
4 website to review its complete list of products, including several of the counterfeit paint spray
5 guns.
6 36. MingFar uses the SATA Marks, specifically the “1000”, “2000”, “3000”, and
7 “4000” Marks, as identification of MingFar’s infringing paint spray guns.
8 37. MingFar is a foreign company that outside of online sales does not appear to have
9 a known or regular presence in the United States. Once AAPEX is over (this Thursday), MingFar
10 will leave the United States, presumably with orders for the Infringing Products that infringe
11 SATA’s trademarks, and will continue to sell the Infringing Products from its business location in
12 China to customers located all over the world, including the United States.
13 38. One of SATA’s major business challenges and a significant threat to its market is
14 the manufacture and sale of infringing and copyright products from China.
18 40. The chart below details generally the model of the counterfeit spray gun
19 (collectively “Infringing Products”), and a non-exhaustive list of the specific SATA intellectual
20 property assets being infringed.
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MINI 3000P U.S. Trademark No. U.S. Design Patent
24 4,920,512 for the mark D548,816 for the design
“3000” of the SATA minijet
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U.S. Trademark No. 3000
26 2,774,593 for a blue ring
at the air cap ring of a
27 spray gun
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1 41. For purposes of example only, and without limitation, below is a comparison
2 showing a genuine SATAjet 1000 B compared to the counterfeit paint spray gun made (M-1000G),
3 distributed, and sold my MingFar. As seen in the photos, MingFar has intentionally designed the
4 counterfeit paint spray to mimic the appearance and feel of the genuine SATA paint spray gun,
5 and in the process has infringed several of SATA’s intellectual property rights.
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20 COUNT I - TRADEMARK COUNTERFEITING - 15 U.S.C. § 1114
21 42. SATA hereby realleges and incorporates by reference each and every allegation set
23 43. MingFar has used spurious designations that are identical with, or substantially
25 44. MingFar has intentionally used these spurious designations, knowing they are
26 counterfeit, in connection with the advertisement, promotion, sale, offering for sale and
27 distribution of the Infringing Products.
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1 45. MingFar’s use of the SATA Marks to advertise, promote, offer for sale, distribute
2 and sell the Infringing Products bearing infringing trademarks was at all times and is currently
4 46. MingFar’s unauthorized use of the SATA Marks on and in connection with
5 MingFar’s advertisement, promotion, sale, offering for sale, and distribution of the Infringing
7 47. MingFar’s unauthorized use of the SATA Marks is likely to: (a) cause confusion,
8 mistake and deception; (b) cause the public to believe that the MingFar’s Infringing Products are
9 legitimate, and/or that the Infringing Products are authorized by, sponsored by, or approved by
10 SATA, or that MingFar is affiliated with, connected to, associated with, or in some way related to
11 SATA; (c) result in MingFar unfairly benefiting from SATA’s advertising and promotion; and (d)
12 result in MingFar unfairly profiting from SATA’s reputation and trademarks all to the substantial
13 and irreparable injury of the public, SATA, the SATA Marks, and the substantial goodwill they
14 represent.
17 49. By reason of the foregoing, MingFar is liable to SATA for: (a) statutory damages
18 in the amount of up to $2,000,000 for each mark counterfeited as provided by 15 U.S.C. § 1117(c)
19 of the Lanham Act, or, at SATA’s election, an amount representing three (3) times SATA’s
20 damages and/or MingFar’s illicit profits; and (b) reasonable attorneys fees, investigative fees, and
22 50. SATA is also entitled to temporary, preliminary, and permanent injunctive relief,
23 including an order permitting the seizure of all “goods and counterfeit marks . . . the means of
24 making such [counterfeit] marks, and records documenting the manufacture, sale, or receipt of
2 52. Without SATA’s authorization, license, or consent, MingFar has knowingly used
3 and continues to use in commerce the SATA Marks in connection with the manufacturing,
4 adverting, promoting, importing into, and selling in the United States the Infringing Products.
5 MingFar has used the SATA Marks with the knowledge of, and the intent to call to mind and create
6 a likelihood of confusion with regard to, and/or trade off SATA’s fame and the registered SATA
7 Marks.
8 53. MingFar’s use of the SATA Marks is likely to: (A) confuse, mislead, or deceive
9 customers, purchasers, and members of the general public as to the origin, source, sponsorship, or
10 affiliation of MingFar and SATA and/or the Infringing Product and SATA’s products; and (B) is
11 likely to cause such people to believe in error that the Infringing Products have been authorized,
12 sponsored, approved, endorsed, or licensed by SATA or that the Infringing Products are in some
14 54. SATA has no control over MingFar’s use of the SATA Marks and cannot control
15 the fact that the MingFar is using the SATA Marks to create the Infringing Products. Therefore,
16 SATA’s reputation and goodwill have been and continue to be damaged – and the value of the
17 SATA Marks jeopardized – by MingFar’s continued use of the SATA Marks and colorable
18 imitations thereof. Because of the likelihood of confusion between the Infringing Products and
19 the SATA Marks, any defects, objections, or faults found with the Infringing Products will
20 negatively reflect upon and injure the exceptional reputation that SATA has established for the
21 products and services it offers in connection with the SATA Marks. As such, MingFar is liable to
23 55. MingFar’s acts alleged above have caused, and if not enjoined will continue to
24 cause, irreparable and continuing harm to SATA’s trademarks, business, reputation, and goodwill.
25 SATA has no adequate remedy at law as monetary damages are inadequate to compensate SATA
26 for the injuries caused by MingFar to its trademarks, business, reputation, and goodwill.
27 56. As a direct and proximate result of MingFar t’s conduct, SATA has suffered and
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1 continues to suffer damages to its valuable SATA Marks, and other damages in an amount to be
2 proven at trial.
6 58. SATA is entitled to temporary, preliminary, and permanent injunctive relief, as well
7 as an award of MingFar’s profits, actual damages, enhanced profits and damages, costs, and
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1 no adequate remedy at law, including at least substantial and irreparable injury to the goodwill and
3 63. On information and belief, MingFar’s use of colorable imitations of the SATA
4 Marks has been intentional and willful. MingFar’s bad faith is evidenced at least by MingFar’s
5 use of marks identical to the SATA Marks on the Infringing Products. SATA is entitled to
6 injunctive relief, and SATA is also entitled to recover MingFar’s profits, actual damages, enhanced
7 profits and damages, costs, and reasonable attorneys’ fees pursuant to 15 U.S.C. §§ 1125(a), 1116,
8 and 1117.
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1 that are confusingly similar to products bearing the SATA Marks, infringes SATA’s exclusive
3 69. MingFar’s acts alleged above have caused, and if not enjoined will continue to
4 cause, irreparable and continuing harm to SATA’s trademarks, business, reputation, and goodwill.
5 SATA has no adequate remedy at law because monetary damages are inadequate to compensate
6 SATA for the injuries caused by MingFar to its trademarks, business, reputation, and goodwill.
7 70. On information and belief, MingFar’s use of colorable imitations of the SATA
8 Marks has been intentional and willful. MingFar’s bad faith is evidenced at least by MingFar’s
9 use of marks identical to the SATA Marks on the Infringing Products. SATA is entitled to
10 injunctive relief, and SATA is also entitled to recover MingFar’s profits, actual damages, punitive
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2 76. MingFar’s infringement of SATA’s design patents has caused SATA to suffer
3 damages in an amount to be determined at trial.
8 1114; (iii) willfully used false designations of origin and/or engaged in unfair competition in
9 violation of 15 U.S.C. § 1125(a); (iv) willfully violated SATA’s common law rights in the SATA
10 Marks; and (v) willfully infringed the SATA Patents in violation of 35 U.S.C. §§ 171 and 289;
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by MingFar, its agents, servants, employees, attorneys, and all others in active concert or
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participation with any of them;
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C. An order from the Court demanding the website hosts take down the infringing
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websites;
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D. A finding that this is an exceptional case within the meaning of 15 § U.S.C. 1117(a);
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E. An award of damages adequate to compensate SATA for the trademark
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infringements that have occurred pursuant to 15 U.S.C. § 1117(a), which amount shall include
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MingFar’s profits, SATA’s damages, and the costs of the action;
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F. At SATA’s election, either: (1) an award of damages adequate to compensate
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23 SATA for the intentional acts of trademark counterfeiting that have occurred, pursuant to 15
24 U.S.C. § 1117(b), which amount shall include three times MingFar’s profits or SATA’s damages
25 (whichever is greater), together with reasonable attorneys’ fees; or (2) statutory damages in the
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amount of: (i) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods
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or services sold, offered for sale, or distributed, as the Court considers just; or (ii) if the Court finds
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1 that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per
2 type of goods or services sold, offered for sale, or distributed, as the Court considers just;
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G. An award of damages adequate to compensate SATA for the patent infringements
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that have occurred pursuant to 35 U.S.C. § 284, or an award of MingFar’s profits from its
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infringements pursuant to 35 U.S.C. § 289, whichever is greater, together with prejudgment
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8 H. Such other and further relief as this Court deems just and proper.
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1 VERIFICATION
Pursuant to NRS 15.010(5)
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4 plaintiff name in the foregoing complaint and knows the contents thereof; that the pleading is true
5 of his own knowledge, except as to those matters stated on information and belief, and that as to
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1 EXHIBIT TABLE
2 Exhibit Description
3 A Trademark Registration Certificates
4 B Patents
5 C Chinese Judgments
6 D Catalog Photos
7 E Website Screenshots
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EXHIBIT A
EXHIBIT A
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EXHIBIT B
Patents
EXHIBIT B
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USOOD644716S
(12) Gehrung
United States Design Patent (10) Patent No.: US D644,716S
(45) Date of Patent: Sep. 6, 2011
(54) PAINT SPRAY GUN FIG. 3 is a front view of the paint spray gun of FIG. 1.
FIG. 4 is a rear view of the paint spray gun of FIG. 1.
(75) Inventor: Ralf Gehrung, Stuttgart (DE) FIG. 5 is a left side view of the paint spray gun of FIG. 1.
FIG. 6 is a right side view of the paint spray gun of FIG. 1.
(73) Assignee: SATA GmbH & Co. KG, Komwestheim FIG. 7 is a bottom view of the paint spray gun of FIG. 1.
(DE) FIG. 8 is a top view of the paint spray gun of FIG. 1.
FIG. 9 is a front perspective view of a second embodiment of
(**) Term: 14 Years a paint spray gun according to the present invention.
FIG. 10 is a rear perspective view of the paint spray gun of
(21) Appl. No. 29/385,200 FIG. 9.
FIG. 11 is a front view of the paint spray gun of FIG. 9.
(22) Filed: Feb. 10, 2011 FIG. 12 is a rear view of the paint spray gun of FIG. 9.
FIG. 13 is a left side view of the paint spray gun of FIG. 9.
(30) Foreign Application Priority Data FIG. 14 is a right side view of the paint spray gun of FIG. 9.
FIG. 15 is a bottom view of the paint spray gun of FIG. 9.
Aug. 12, 2010 (DE) ......................... 40 2010 OO4 341 FIG. 16 is a top view of the paint spray gun of FIG. 9.
(51) LOC (9) Cl. .................................................. 23-01 FIG. 17 is a front perspective view of a third embodiment of
(52) U.S. Cl. ...................................................... D23A226 a paint spray gun according to the present invention.
(58) Field of Classification Search ................. D23/213, FIG. 18 is a rear perspective view of the paint spray gun of
D23/223, 226; 239/525-526, 600, 690, 691 FIG. 17.
See application file for complete search history. FIG. 19 is a front view of the paint spray gun of FIG. 17.
FIG. 20 is a rear view of the paint spray gun of FIG. 17.
(56) References Cited FIG. 21 is a left side view of the paint spray gun of FIG. 17.
FIG.22 is a right side view of the paint spray gun of FIG. 17.
U.S. PATENT DOCUMENTS FIG. 23 is a bottom view of the paint spray gun of FIG. 17.
D314.421 S * 2/1991 Tajima et al. ................ D23,226 FIG. 24 is a top view of the paint spray gun of FIG. 17.
(Continued) FIG. 25 is a front perspective view of a fourth embodiment of
a paint spray gun according to the present invention.
Primary Examiner — Robin V Webster FIG. 26 is a rear perspective view of the paint spray gun of
FIG. 25.
(74) Attorney, Agent, or Firm — Martin Fleit; Paul D. FIG. 27 is a front view of the paint spray gun of FIG. 25.
Bianco; Fleit Gibbons Gutman Bongini & Bianco PL FIG. 28 is a rear view of the paint spray gun of FIG. 25.
(57) CLAM
FIG. 29 is a left side view of the paint spray gun of FIG. 25.
FIG. 30 is a right side view of the paint spray gun of FIG. 25.
The ornamental design for a paint spray gun, as shown and FIG. 31 is a bottom view of the paint spray gun of FIG. 25:
described. and,
FIG. 32 is a top view of the paint spray gun of FIG. 25.
DESCRIPTION The stippling used on the air cap ring and on the handle
represents a Surface having a color. In particular, where the
FIG. 1 is a front perspective view of a first embodiment of a stippling is the same, the color is the same and where the
paint spray gun according to the present invention. stippling is different, the color is different.
FIG. 2 is a rear perspective view of the paint spray gun of FIG.
1. 1 Claim, 24 Drawing Sheets
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 3 of 59
US D644,716S
Page 2
U.S. PATENT DOCUMENTS D552,715 S *ck 10/2007 Schmon et al. .............. D23,226
6,626,382 B1* 9/2003 Liu ............................... 239,569 RST SS * 12/2008
D583,013 $299. Wang
Hang ............ ...... D23,226
D23,226
6,845,924 B2* 1/2005 Schmon ... 239,526 D604.394 S *ckck 1 1/2009 Wang ........................... D23,226
7,017,838 B2* 3/2006 Schmon ... 239,526 D607.086 S * 12/2009 Kosaka ........................ D23,226
7,083,119 B2* 8/2006 Bouicetal 239,345 D614,731 S ck 4/2010 Wang ... ... D23,226
7, 175,110 B2 * 2/2007 Vicentini . 239,526 7.823.806 B2 * 11, 2010 Schmon 239,600
D538,886 S * 3/2007 Huang ........ D23,226 wal - www Ya. K. J. 4 W. J. W. K. wiki.J.J. W.J.
D552,213 S * 10/2007 Schmon et al. .............. D23,226 * cited by examiner
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F.G. 1
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FG. 2
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FG. 3 F.G. 4
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FIG 5
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s
D
F.G. 6
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FIG. 7 F.G. 8
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FG. 9
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F.G. 1 O
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s
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F.G. 13
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F.G. 14
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F.G. 15 FG 16
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F.G. 17
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FG. 18
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led Sl
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 19 of 59
FIG 21
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 20 of 59
FG. 22
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F.G. 25
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 23 of 59
F.G. 26
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 24 of 59
FG. 29
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FIG. 3O
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 27 of 59
F.G. 31 F.G. 32
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 28 of 59
USOOD548816S
FIG. 1
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 30 of 59
FG. 2
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 31 of 59
F.G. 3
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 32 of 59
s' W)
FG. 7
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 35 of 59
USOOD552715S
(12) Schmon
Unitedet States
al.
Design Patent (10) Patent No.: US D552,715 S
(45) Date of Patent: Oct. 9, 2007
(54) PAINT SPRAY GUN Primary Examiner Robin Webster
(74) Attorney, Agent, or Firm—Martin Fleit; Paul D.
(75) Inventors: Ewald Schmon, Grafenberg (DE): Bianco; Fleit Kain Gibbons Gutman Bongini & Bianco P.L.
Albrecht Kruse, Fichtestrasse (DE)
(57) CLAM
(73) Assignee: SATA GmbH & Co. KG,
Kornwestheim (DE) The ornamental design for a paint spray gun, as shown and
described.
(**) Term: 14 Years
(21) Appl. No.: 29/252,736 DESCRIPTION
(22) Filed: Jan. 26, 2006 FIG. 1 is a first front perspective view of a first paint spray
gun of the Subject invention;
(30) Foreign Application Priority Data FIG. 2 is a first side view thereof
Jul. 28, 2005 (EM) ................................ OOO378815 FIG. 3 is a second side view thereof;
(51) LOC (8) Cl. ................................................. 23-01 FIG. 4 is a front view thereof
(52) U.S. Cl. ...................................... D23A226 FIG. 5 is a rear view thereof;
(58) Field of Classification Search . ... D23/223, FIG. 6 is a bottom view thereof;
D23/226; 239/525–6, 690-1, DIG. 14 FIG. 7 is a top view thereof;
See application file for complete search history.
FIG. 8 is a first front perspective view of a second paint
(56) References Cited spray gun of the Subject invention;
U.S. PATENT DOCUMENTS FIG. 9 is a first side view thereof
D305,057 S * 12/1989 Morgan ..................... D23,226 FIG. 10 is a second side view thereof;
D314.421 S * 2/1991 Tajima et al. ... D23,226 FIG. 11 is a front view thereof;
D405.503 S * 2, 1999 Endo ........... ... D23,226 FIG. 12 is a rear view thereof
D409,719 S * 5/1999 Kaneko ....... ... D23,226
6,585,173 B2 * 7/2003 Schmon et al. ............. 239,526 FIG. 13 is a bottom view thereof, and,
6,626,382 B1 9/2003 Liu ............................ 239,569 FIG. 14 is a top view thereof.
7,017,838 B2 * 3/2006 Schmon ...................... 239,526
* cited by examiner 1 Claim, 14 Drawing Sheets
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 36 of 59
&
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 39 of 59
It is certified that error appears in the above-identified patent and that said Letters Patent is
hereby corrected as shown below:
Title Page; item (75) under Grafenberg (DE), change the inventor's city of residence
from “FichtStraSSe to --STUTTGART--.
WDJ
JON. W. DUDAS
Director of the United States Patent and Trademark Office
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 51 of 59
USOOD552213S
FIG. 1
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 53 of 59
FIG 2
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FIG 3
Case 2:19-cv-01948 Document 1-2 Filed 11/06/19 Page 55 of 59
It is certified that error appears in the above-identified patent and that said Letters Patent is
hereby corrected as shown below:
Title Page
Item (75) under Grafenberg (DE), change the inventor's city of residence from
“FichtStraSSe to --STUTTGART--.
WDJ
JON. W. DUDAS
Director of the United States Patent and Trademark Office
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 1 of 24
EXHIBIT C
Chinese Judgments
EXHIBIT C
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 2 of 24
Civil Judgment
No. 302 (2016), First Instance, Intellectual Property Division,
Plaintiff SATA GmbH & Co. KG (hereinafter referred as SATA) brought suit in this
court alleging that Taizhou Mingfar Air Tools Co., Ltd.. (hereinafter referred as
Mingfar) infringed its trademark right. After filing this case on July 12, 2016, this
court duly formed a collegiate panel and held an open trail on September 27th, 2016.
Ge Hong Bin, attorney of SATA and Hu Shuai Ling, attorney of Mingfar attended
court. This case is terminated now.
Defendant Mingfar is the company which produce air and electric tools, spray guns
and similar tools, and Mingfar produce and sell spray guns for paints. According to
the information of SATA agency, Xianju Branch of Zhejiang Market Supervision
Administration conducted raid action on the factory of Mingfar on October 21, 2014
and seized lots of spray guns including nine spray guns whose packing boxes and the
gun body are labeled with “jet 1000” trademark and seven spray guns with “jet 1000”.
During the action, officials made the inspection record and seized some copy spray
guns. On July 29, 2015, Xianju Market Supervision Administration issued the
No.40(2015) penalty decision on the trademark infringement and unfair competition
of Mingfar. To protect the legal rights and interests, plaintiff SATA initiated
litigation and requested this court to order the defendant Mingfar: 1. to stop infringe
No. G871660 “jet 1000” trademark right, namely, to stop use the involved trademark
on the produced and sold spray gun as well as packing box for business. 2. to
compensate SATA RMB 80,000 for its financial loss and RMB 10,000 for the lawyer
fee to stop the infringing act; 3. to pay the litigation fee of this case.
To bolster its claims, within the time limit for adducing evidence, the plaintiff SATA
provided the following evidences:
Evidence 1: Trademark certificate and the printed information from TMO database.
This evidence is used to proved that plaintiff is the registrant of No. G871660 “jet
1000” trademark, and its first period of validity is from May 31, 2006 to November
30, 2015, the trademark is valid by renewal now.
Evidence 2: The No. 40 (2015) penalty decision and pictures of seized infringing
spray guns. This evidence is used to prove that Xianju Branch of Zhejiang Market
2
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 4 of 24
Evidence 3: The Lawyer fee invoice. This evidence was used to prove plaintiff pay
RMB 20,000 to protect the rights.
Evidence 4: The SATA company profile, awards, the fairs which SATA attended from
2011 to 2016, the advertising materials to prove the RMB 8,000,000 payment on 36
kinds of magazines including Auto Maintenance and Repair, Traffic Study in five
years; the product brochure which prove the ping-pong champion is the spokespeople
of goods, the action records in Canton Fair, to prove SATA have good reputation;
Evidence 5: The pictures about production workshop interior in Mingfar factory and
the Mingfar exhibition booths in fairs in Beijing and Shanghai. This evidence was
used to prove that Mingfar have widely sales channels and Mingfar has malicious and
sever infringing acts since the exhibition fair is after the official raid action.
Evidence 6: The collected No. 40 (2015) penalty decision, inspection records, pictures,
contract and the seized spray gun by this court according to the request of plaintiff.
This evidence is used to prove that Mingfar has the patent infringing acts, the high
sales record of spray gun with involved patent and Mingfar has strong production
capacity.
Mingfar has no objection to the authenticity of the above evidences which are provide
by plaintiff SATA during the cross-examination.
3
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 5 of 24
On the basis of the statements of both parties and the evidences which had been
verified, this court validated the following facts:
Plaintiff SATA is the registrant of No. G871660 trademark at Class 7. The
trademark is valid from May 31, 2006 to November 31, 2015 and it is still be valid by
the renewal.
According to the request of the plaintiff, this court collected the related evidence for
the case No.40(2015) penalty decision, includes the sample of SATAjet 1000 and
4
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 6 of 24
During the trial, this court compared above two spray guns and the involved
trademark, the plaintiff asserted that the “jet 1000” trademark is used at the two guns
which are produced and sold by the defendant, so the defendant use the same
trademark on the same goods, constitutes the trademark infringement. The
defendant Mingfar has no objection to the comments of the plaintiff.
This court was of the opinion that: this case was a trademark infringement dispute, the
plaintiff SATA is a company registered in Germany, the defendant Mingfar is a
company registered in Zhejiang AIC, in accordance with Civil Procedure Laws of
People’s Republic of China, Stipulation by the Supreme People’s Court on Some
Issues Concerning the Jurisdiction over Foreign-related Civil and Business Case and
Written Reply for Zhejiang Taizhou Intermediate People’s Court has the Jurisdiction
to Try the Foreign-related Civil and Business Case, this court had the jurisdiction over
this case. The plaintiff and defendant has no objection to the jurisdiction of this
court. The plaintiff SATA file litigation according to China laws and the defendant
has no objection that the plaintiff choose China laws to settle the disputes, so this case
could be settled by China laws. According to the Trademark Law of the People’s
Republic of China, the registered trademark will be exclusive, namely, the trademark
holder has the exclusive right of the trademark once registered, and other company or
person could not use the trademark without the permission of registrant.
The plaintiff has the exclusive right of No. G871660 trademark and this trademark is
still be valid, the exclusive trademark right of the plaintiff shall be protected by laws.
5
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 7 of 24
By comparing the involved infringing SATA jet 1000 and MY-100G spray guns which
are from the defendant and the registered trademark, the two goods use the “jet 1000”
logo which is identical with the “jet 1000” registered by the plaintiff and they are the
goods which the trademark registered. Thus, the defendant produce and sell the
goods with “jet 1000” which infringe the exclusive trademark right of the plaintiff,
and the defendant shall bear the civil liability, includes stop the infringement,
compensate for the financial loss according to the laws. . The defendant asserted
that there are only seven seized spray guns used the trademark of the plaintiff among
the 876 sold MY-100G spray guns, since the guns are the same series goods and the
defendant has no evidence to prove this claim, this court decided not to adopt the
defense. The plaintiff SATA does not provide effective evidence to prove the
detailed financial loss or the defendant Mingfar’s detailed earnings via infringement
during the infringement and the trademark license fee for reference. Thus, this
court ascertained the compensation amount as RMB 50,000 in consideration of
following aspects including popularity registered trademark, the infringing goods
production, the sales price and the date begin to produce and sell infringing goods, the
business scale, scope, the sales amount, infringement nature and the rational fee for
the plaintiff to stop the infringing acts, etc. In accordance with Paragraph 1 and 3 of
Article 57, Paragraph 3 of Article 63 of Trademark Law of of the People's Republic of
China; Paragraph 1 and 2 of Article 16, Article 17 and Paragraph 1 of Article 21 of
Interpretation by the Supreme People’s Court on Some Issues Concerning the
Application of Laws in the Trial of Trademark Infringement Dispute Cases and Article
64 of the Civil Procedure Law of the People’s Republic of China. , this court ruled
that:
1. The defendant Mingfar shall cease infringing the No. G871660 trademark right of
plaintiff SATA;
2. The defendant Mingfar shall compensate RMB 50,000 to the plaintiff SATA for
the financial loss and expenses of right protection within 10 days after this
judgment takes effect.
6
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 8 of 24
If the defendant fails to fulfill his obligations with respect to pecuniary payment
within the period specified,he shall pay double interest on the debt for the belated
payment in accordance with Article 253 of Civil Procedure Law of the People’s
Republic of China.
In regard to the litigation fee of RMB 2,050, SATA shall bear the burden of RMB 450
and Mingfar shall bear the burden of RMB 1,600.
SATA dissatisfied with the judgment may, within 30 days upon receipt of the
judgment, or Mingfar dissatisfied with the judgment may, within 15 days upon receipt
of the judgment, submit the appeal petition and the duplicates according to the
number of persons in the other party or of the representatives thereof to this court, and
file an appeal to the Supreme People’s Court of Zhejiang Province. (The acceptance
fee for the appeal petition shall be paid based on the part of the amount of the appeal
for which the appellant refused to accept the judgment of the first instance. The
account is registered in Xihu Branch of Hangzhou Agricultural Bank of China. If
the acceptance fee may not be paid within 7 days after expiration of the appeal, the
appeal will be automatically withdrawn.)
Judge: Ye Xiang
7
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 9 of 24
Civil Judgment
No. 301 (2016), First Instance, Intellectual Property Division,
Plaintiff SATA GmbH & Co. KG (hereinafter referred as SATA) brought suit in this
court alleging that Taizhou Mingfar Air Tools Co., Ltd.. (hereinafter referred as
Mingfar) infringed its invention patent. After filing this case, this court duly formed
a collegiate panel including Juge, Yuan Xiao Zhen and Wu Li Xin as well as people’s
juror, Wang Ling Li and held an open trail on September 27th, 2016. Ge Hong Bin,
attorney of SATA and Hu Shuai Ling, attorney of Mingfar attended court. This case
is terminated now.
gun and the Claim 17 is about the paint cup for spray gun. All the technology
features in these independent claims explained the protection extent of the involved
patent. After the involved patent is approved, SATA produce the spray gun with the
patent technology and sell the goods in China and worldwide. Defendant Mingfar is
the company which produce air tools including spray gun and electric tools.
According to the report of SATA agency, Xianju Branch of Zhejiang Market
Supervision Administration conducted raid action on the factory of Mingfar on
October 21, 2014 and seized lots of spray guns which infringe the trademarks of
SATA. During the action, officials make the inspection record and seized some copy
spray guns. On July 29, 2015, Xianju Market Supervision Administration issued the
No.40(2015) penalty decision on the trademark infringement and unfair competition
of Mingfar. SATA learned that the seized spray guns by the officials have the same
technology as the Claim 1, Claim 11 and Claim17 of involved patent, so the spray gun
from Mingfar fall in the extent of the protection on the independent claims of
involved patent, constitutes the identical infringement. To protect the legal rights
and interests, plaintiff SATA initiated litigation and requested this court to order the
defendant Mingfar: 1. to stop infringe No. ZL02802949.6 invention patent right,
namely, to stop producing, selling and offering to sell the patent-infringing spray gun;
2.to destroy equipment and molds that were used for manufacturing the
patent-infringing product; 3. to compensate SATA RMB 10,000 (change to RMB
300,000 before the hearing) for financial loss; 4. to pay the litigation fee of this case.
To bolster its claims, within the time limit for adducing evidence, the plaintiff SATA
provided the following evidences:
Evidence 1: Patent Register of Invention Patent and Invention Patent Specification
2
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 11 of 24
(Patent No. ZL02802949.6). This evidence was used to prove the protection scope
of the involved patent and showed the fact that SATA was the owner of the involved
patent and the involved patent was valid.
Evidence 2: The No. 40 (2015) penalty decision and some pictures of seized
infringing spray gun. They showed the infringing guns which seized on the raid
action by the Xianju Branch of Zhejiang Market Supervision Administration on
October 21, 2014. The guns could be found the technical feature of involved patent.
This evidence was used to prove Mingfar produce and sell the spray guns and the
spray gun fall within the extent of protection of the involved patent right.
Evidence 3: The Lawyer fee invoice. This evidence was used to prove plaintiff pay
RMB 20,000 to protect the rights.
Evidence 4: The SATA company profile and awards, etc. This evidence was used
to prove SATA attends several fairs from 2011 to 2016 to enhance the SATA
reputation domestic and overseas; the advertising materials to prove the RMB
8,000,000 payment on different magazines in five years; the product brochure which
prove the ping-pong champion is the spokespeople of goods and SATA have good
reputation; the action records in Canton Fair.
Evidence 5: The pictures about production workshop interior in Mingfar factory and
the Mingfar exhibition booths in fairs in Beijing and Shanghai. This evidence was
used to prove that Mingfar have widely sales channels and Mingfar has malicious and
sever infringing acts since the exhibition is after the official raid action.
Evidence 6: The No. 40(2015) penalty decision and the seized product sample; This
evidence was used to prove that, 1, Mingfar has the patent infringing acts; 2, The high
sales record of spray gun with involved patent and Mingfar has strong production
capacity.
3
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 12 of 24
Since the defendant have no objection to the authenticity on the plaintiff’s evidences,
this court ascertained their authenticity. In regard to Evidence 1, the patent register
certificate and patent specification, this court ascertained the legitimacy and
authenticity, which shall prove the fact that the plaintiff has the involved patent right
and legal status of the involved patent right. In regard to Evidence 2 and 6, the
certificates are issued by officials, this court ascertained the legitimacy. In regard to
Evidence 3 provided by the plaintiff, this court ascertained the fees for this case could
be used as evidence but the expenses for rights protection should be within a rational
scope. This court would assess the compensation on the merits of the actual
situation. In regard to Evidence 4 and Evidence 5, this court ascertained the
legitimacy and it could prove the pending facts, the authenticity is also ascertained
since the defendant have no objection to the authenticity.
On the basis of the statements of both parties and the evidences which had been
verified, this court validated the following facts:
On December 10th, 2002, plaintiff SATA applied a patent application named “paint
spray gun and the connection used for the gun and the paint cup with the connection”
to SIPO and the patent application was approved on October 5th, 2005. The involved
patent number is ZL02802949.6. The involved patent has three independent claims,
the Claim 1 is about spray gun, the Claim 11 is for the connection on the material
supply device for the spray gun and the Claim 17 is about paint cup for the spray gun.
The officials make the written inspection record and seized some trademark infringing
spray guns during the action. On July 29, 2015, Xianju Market Supervision
Administration made the No. 40(2015) penalty decision on the defendant because of
the defendant’s trademark infringement and unfair competition. According to the
penalty decision, the defendant produce 876 pcs of MY-100G spray gun and the sales
price is RMB 180 for each one, the sales amount is RMB 157,680 in total. The
defendant has no objection on the penalty decision and the No. 40(2015) penalty
decision is already valid. The plaintiff found the MY-100G spray guns which are
produced by the defendant have the same technical features which are protected by
the involved Patent Claims 1, Claim 11 and Claim 17. The involved spray guns fall
in the extent of protection of the independent claims, constitutes the identical
infringement, so file the litigation in this court.
According to the request of the plaintiff, this court collected the related evidence for
the case No.40(2015) penalty decision, includes the sample of MY-100G spray gun.
During the trial, both parties applied comparison between the technical solution of
seized MY-100G spray gun and the technical solution of the involved patent.
According to the verifying, the necessary technical feature of spray gun in Claim 1 is
that, a paint spray gun with a gun body and a material supply device that can be
connected to one another by means of a spiral wedge connection, wherein the spiral
wedge connection includes a spiral wedge element that is arranged on the
circumference of an essentially hollow-cylindrical connecting part of the material
supply device, and a corresponding counter element on the gun body. The spiral
wedge element contains a gap and extends over more than half of the circumference
of the connecting, and by the fact that the counter element is arranged on a one-sided
projection situated above a receiving bore of the gun body. The Claim 11 is that, the
material supply device with spiral wedge element which could be connected to the
corresponding element on the gun body. The spiral wedge element extends over
5
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 14 of 24
more than half of the circumstance of the connection. The Claim 17 is that, the paint
cup for the spray gun includes the connection which is explained from Claim 11 to
Claim 16.
By verifying the technology, the technical features of the involved infringing goods is
that, with gun body and material supply device namely the paint cup, the gun body
and paint cup are connected by the spiral wedge connection. The connection includes
a spiral wedge element and a corresponding counter element. The spiral wedge
element contains a gap and extends over more than half of the circumference of the
connection, and by the fact that the counter element is arranged on a one-sided
projection situated above a receiving bore of the gun body. The spiral wedge
element is outer screw thread with more than half of circle, and the corresponding
element is the bulge for the screw thread.
The Claim 11 is that, the connection on the material supply device for the spray gun,
includes the spiral wedge element and the corresponding counter element on the
involved infringing goods. The Claim 17 is about the paint cup for the spray gun,
includes the connection of involved infringing goods.
After verifying, the plaintiff SATA thought that all the technical features of the
involved patent were contained in the technical solution of the patent-infringing
product; the defendant Mingfar has no objection.
This court was of the opinion that: this case was a invent patent infringement dispute;
SATA was a legal person in Germany; Mingfar was a legal person registered in
6
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 15 of 24
Taizhou City, Zhejiang Province; in accordance with Civil Procedure Law of the
People’s Republic of China, Interpretation by the Supreme People’s Court on Some
Issues Concerning the Application of Laws in the Trial of Patent Infringement Dispute
Cases and Law of the People's Republic of China on Application of Laws to
Foreign-Related Civil Relations, this court had the jurisdiction over this case. Both
parties have no objection on this court’s jurisdiction. The plaintiff SATA filed the
litigation in this court according the Chinese laws and the defendant Mingfar has no
objection that the plaintiff to deal with the dispute according to Chinese laws, thus
this case shall apply Chinese laws.
As the patent right (patent number of ZL02802949.6) named “paint spray gun and the
connection used for the gun and the paint cup with the connection” which is owned by
SATA, was both valid and stable and was fulfilled the payment of patent annual fee,
the above patent right shall be protected by Chinese laws. No entity or individual
may, without the authorization of the patentee, exploit the patent, that is, make, use,
offer to sell, sell or import the patented product. In accordance with Article 59 of
Patent Law of People’s Republic of China: “The extent of protection of the patent
right for invention or utility model shall be determined by the terms of the claims.
The description and the appended drawings may be used to interpret the claims.”
Thus, all the technical feature of involved goods shall be compared with all the
necessary technical feature which is explained at the patent claims, to confirm
whether the involved infringing goods fall within the extent of the protection of the
patent right. If the technical feature of involved goods includes all the feature
mentioned at the patent claims, the involved goods fall in the extent of the protection
of the patent right. If there is one or more than on technical feature is different to the
essential technical feature by words, but they could be confirmed as the same feature
by the verifying, the involved goods fall in the extent of the protection of the patent
right. By technical comparison, the technical feature of involved goods is identical
with the feature which is mentioned at Claim 1, Claim 11 and Claim 17 of the patent
of the plaintiff, so the involved spray gun fall in the extent of the protection of the
7
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 16 of 24
Claim 1, Claim 11 and Claim 17 of the patent right, so it constitutes the identical
infringement. With the purpose of business, Mingfar produce, sell, offer to sell the
involved infringing spray gun with the same patent of the plaintiff, infringe the patent
right of the plaintiff SATA. Mingfar shall be stop its infringing acts and compensate
for the financial loss. The plaintiff SATA claimed that Mingfar shall stop the patent
infringement and compensate for the economic loss, this court support this legitimate
claim.
In regard to the compensation amount, the plaintiff SATA does not provide effective
evidence to prove the detailed financial loss or the defendant Mingfar’s detailed
earnings via infringement during the patent infringement and the valid patent
licensing fee for reference. Thus, this court ascertained the compensation amount
inconsideration of following aspects including infringing goods production, sales
prices, the production and sales starting time, sales scale, scope, amount, infringement
nature, the authorization time of the involved patent, the rational fee for the plaintiff
to stop the infringing acts, etc.
1. The defendant Mingfar shall cease infringing the invention patent right named
“paint spray gun and the connection used for the gun and the paint cup with the
connection” (Patent No. ZL02802949.6)
8
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 17 of 24
2. The defendant Mingfar shall compensate RMB 120,000 to the plaintiff SATA for
the financial loss and expenses of right protection within 10 days after this
judgment takes effect.
3. Reject other requests of SATA .
If the defendant fails to fulfill his obligations with respect to pecuniary payment
within the period specified,he shall pay double interest on the debt for the belated
payment in accordance with Article 253 of Civil Procedure Law of the People’s
Republic of China.
In regard to the litigation fee of RMB 5,800, SATA shall bear the burden of RMB
1,000 and Mingfar shall bear the burden of RMB 4,800.
SATA dissatisfied with the judgment may, within 30 days upon receipt of the
judgment, or Mingfar dissatisfied with the judgment may, within 15 days upon receipt
of the judgment, submit the appeal petition and the duplicates according to the
number of persons in the other party or of the representatives thereof to this court, and
file an appeal to the Supreme People’s Court of Zhejiang Province. (The acceptance
fee for the appeal petition shall be paid based on the part of the amount of the appeal
for which the appellant refused to accept the judgment of the first instance. The
account is registered in Xihu Branch of Hangzhou Agricultural Bank of China. If
the acceptance fee may not be paid within 7 days after expiration of the appeal, the
appeal will be automatically withdrawn.)
Judge: Wu Li Xin
9
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 18 of 24
Civil Judgment
No. 303 (2016), First Instance, Intellectual Property Division,
Plaintiff SATA GmbH & Co. KG (hereinafter referred as SATA) brought suit in this
court alleging that Taizhou Mingfar Air Tools Co., Ltd.. (hereinafter referred as
Mingfar) infringed its trademark right. After filing this case on July 12, 2016, this
court duly formed a collegiate panel and held an open trail on September 27th, 2016.
Ge Hong Bin, attorney of SATA and Hu Shuai Ling, attorney of Mingfar attended
court. This case is terminated now.
worldwide, the involved trademark has good reputation and being famous domestic
and worldwide.
Defendant Mingfar is the company which produce air and electric tools, spray guns
and similar tools, and Mingfar produce and sell spray guns for paints. According to
the information of SATA agency, Xianju Branch of Zhejiang Market Supervision
Administration conducted raid action on the factory of Mingfar on October 21, 2014
and seized lots of spray guns including nine spray guns whose gun body and packing
boxes with “SATA” trademark. During the action, officials make the inspection
record and seized some copy spray guns. On July 29, 2015, Xianju Market
Supervision Administration issued the No.40(2015) penalty decision on the trademark
infringement and unfair competition of Mingfar. However, defendant does not
compensate for the finial loss of plaintiff because of the trademark infringement, even
continue to be infringing. To protect the legal rights and interests, plaintiff SATA
initiated litigation and requested this court to order the defendant Mingfar: 1. to stop
infringe No. G631215 “SATA” trademark right, namely, to stop use the involved
trademark on the produced and sold spray gun as well as packing box. 2. to
compensate SATA RMB 80,000 for its financial loss and RMB 10,000 for the lawyer
fee to stop the infringing act; 3. to pay the litigation fee of this case.
To bolster its claims, within the time limit for adducing evidence, the plaintiff SATA
provided the following evidences:
Evidence 1: Trademark certificate and Notarization (No. 7311(2016), Guangzhou
Haizhu Notary Office). This evidence is used to proved that plaintiff is the registrant
of No. G631215 “SATA” trademark, and its period of validity of latest renewal is
2
Case 2:19-cv-01948 Document 1-3 Filed 11/06/19 Page 20 of 24
Evidence 2: The No. 40 (2015) penalty decision and pictures of seized infringing
spray guns. This evidence is used to prove that Xianju Branch of Zhejiang Market
Supervision Administration seized copy guns in the production factory of defendant
and made penalty decision on the defendant because of its trademark infringement.
The spray gun and packing boxes which are produced and sold by the defendant are
labeled with involved trademark, constitutes the trademark infringing acts.
Evidence 3: The Lawyer fee invoice. This evidence was used to prove plaintiff pay
RMB 20,000 to protect the rights.
Evidence 4: The SATA company profile, awards, advertising materials, the product
brochure and action records in Canton Fair from 2011 to 2016, to prove that involved
trademark of plaintiff has good reputation.
Evidence 5: The pictures about production workshop interior in Mingfar factory and
the Mingfar exhibition booths in fairs in Beijing and Shanghai. This evidence was
used to prove that Mingfar have widely sales channels and Mingfar has malicious and
sever infringing acts since the exhibition fair is after the official raid action.
Evidence 6: The collected No. 40(2015) penalty decision, inspection records, pictures,
contract and the seized SATAjet1000 and MY-100 spray gun by this court according
to the request of plaintiff. This evidence is used to prove that Mingfar has the patent
infringing acts, the high sales record of spray gun with involved patent and Mingfar
has strong production capacity.
3
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Mingfar have no objections to authenticity on the all evidences which SATA provided.
By examination, this court ascertained the authenticity and legitimacy of Evidence 1
to 4 and Evidence 6. These evidences could prove the pending facts, but whether the
trademark used by defendant is identical or similar with involved trademark which is
registered by plaintiff, this court will confirm by the comparison. The expenses for
rights protection should be within a rational scope. This court would assess the
compensation on the merits of the actual situation. In regard to Evidence 5, this
court does not accepted the unsubstantial evidence because the pictures and notice
could be prove that defendant use the involved trademark during the exhibition fairs.
On the basis of the statements of both parties and the evidences which had been
verified, this court validated the following facts:
Plaintiff SATA is the registrant of No, G631215 trademark on spray tools and
machines for paints and materials and oil-water separator at Class 7. The trademark
is valid from November 7, 2014 to November 7, 2024 by the renewal and it is still be
valid. On October 21st, 2014, Xianju Branch of Zhejiang Market Supervision
Administration conducted raid action on the factory of the defendant Mingfar and
seized nine spray guns whose gun body and packing box with “SATA” trademarks,
and made the No. 40(2015) penalty decision.
This court was of the opinion that: this case was a foreign trademark infringement
dispute, in accordance with Article 6 of Interpretation by the Supreme People’s Court
4
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Plaintiff SATA is the registrant of No. G631215 trademark and the trademark is valid.
SATA has the exclusive right of this trademark at the approved goods and the
trademark right shall be protected by Chinese laws. In accordance with Paragraph 1
and 3 of Article 57 of Trademark Law of People’s Republic of China “without the
authorization of trademark registrant, use the trademark identical with registered
trademark on the same goods and sell the goods infringe exclusive right of trademark,
is the acts of infringe the exclusive right of trademark”. The spray guns and their
packing boxes which are on sales by defendant Mingfar and seized by Xianju Branch
of Zhejiang Market Supervision Administration are labeled with “SATA” trademark,
identical with the No. G631215 trademark registered by the plaintiff. The involved
goods belongs to the approved product of No. G631215 trademark, constitutes the
same goods, so the acts of defendant Mingfar damages the exclusive right of
trademark of plaintiff. The defendant shall bear the civil liability, includes stop the
infringement, compensate for the financial loss according to the laws.
Since the spray guns and packing boxes seized by Xianju Market Supervision
Administration has no information of the producer, the plaintiff could not prove the
defendant produce the involved infringing product, so the defendant shall not be
confirmed as the producer directly though defendant could not inform the source of
involved infringing goods. This court shall confirm the compensation amount by
sales acts. The plaintiff SATA does not provide effective evidence to prove the
detailed financial loss or the defendant Mingfar’s detailed earnings via infringement
5
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during the patent infringement. Thus, this court ascertained the compensation
amount as RMB 30,000 in consideration of following aspects including popularity
and use of registered trademark, infringement nature, period, effects and the rational
fee for the plaintiff to stop the infringing acts, etc. In accordance with Paragraph 1
of Article 3, Article 56, Paragraph 1 and 3 of Article 57, Paragraph 3 of Article 63 of
Trademark Law of of the People's Republic of China; Paragraph 1 and 2 of Article 16
and Article 17 of Interpretation by the Supreme People’s Court on Some Issues
Concerning the Application of Laws in the Trial of Trademark Infringement Dispute
Cases, this court ruled that:
1. The defendant Mingfar shall cease infringing the No. G631215 trademark right of
plaintiff SATA;
2. The defendant Mingfar shall compensate RMB 30,000 to the plaintiff SATA for
the financial loss and expenses of right protection within 10 days after this
judgment takes effect.
If the defendant fails to fulfill his obligations with respect to pecuniary payment
within the period specified,he shall pay double interest on the debt for the belated
payment in accordance with Article 253 of Civil Procedure Law of the People’s
Republic of China.
In regard to the litigation fee of RMB 2,050, SATA shall bear the burden of RMB 680
and Mingfar shall bear the burden of RMB 1,370.
SATA dissatisfied with the judgment may, within 30 days upon receipt of the
judgment, or Mingfar dissatisfied with the judgment may, within 15 days upon receipt
of the judgment, submit the appeal petition and the duplicates according to the
number of persons in the other party or of the representatives thereof to this court, and
file an appeal to the Supreme People’s Court of Zhejiang Province. (The acceptance
fee for the appeal petition shall be paid based on the part of the amount of the appeal
for which the appellant refused to accept the judgment of the first instance. If the
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acceptance fee may not be paid within 7 days after expiration of the appeal, the appeal
will be automatically withdrawn.)
Judge: Wu Li Xin
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EXHIBIT D
Catalog Photos
EXHIBIT D
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EXHIBIT E
Website Screenshots
EXHIBIT E
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JS 44 (Rev. 06/17) CIVIL COVER SHEET
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
Dickinson Wright PLLC
100 W. Liberty Street, Suite 940
Reno, NV 89501 (775) 343-7500
II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
’ 1 U.S. Government ’ 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State ’ 1 ’ 1 Incorporated or Principal Place ’ 4 ’ 4
of Business In This State
’ 2 U.S. Government ’ 4 Diversity Citizen of Another State ’ 2 ’ 2 Incorporated and Principal Place ’ 5 ’ 5
Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State
The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as
required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of
Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
I.(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and
then the official, giving both name and title.
(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
condemnation cases, the county of residence of the "defendant" is the location of the tract of land involved.)
(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
in this section "(see attachment)".
II. Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X"
in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.
Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment
to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes
precedence, and box 1 or 2 should be marked.
Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the
citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity
cases.)
III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this
section for each principal party.
IV. Nature of Suit. Place an "X" in the appropriate box. If there are multiple nature of suit codes associated with the case, pick the nature of suit code
that is most applicable. Click here for: Nature of Suit Code Descriptions.
VI. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service
VII. Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P.
Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket
numbers and the corresponding judge names for such cases.
Date and Attorney Signature. Date and sign the civil cover sheet.
Case 2:19-cv-01948 Document 1-7 Filed 11/06/19 Page 1 of 2
To: (Defendant’s name and address) TAIZHOU XINGYE PNEUMATIC TOOLS CO., LTD., d.b.a Taizhou
MingFar Air Tools Co. Ltd.
Tiandu Industrial Zone, Fuyin Street
Xianju City, Zhejiang Province, China
Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
whose name and address are: DICKINSON WRIGHT PLLC
Steven A. Caloiaro
100 W. Liberty Street, Suite 940
Reno, NV 89501
If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
You also must file your answer or motion with the court.
CLERK OF COURT
Date:
Signature of Clerk or Deputy Clerk
Case 2:19-cv-01948 Document 1-7 Filed 11/06/19 Page 2 of 2
PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
’ I left the summons at the individual’s residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date) , and mailed a copy to the individual’s last known address; or
’ Other (specify):
.
My fees are $ for travel and $ for services, for a total of $ 0.00 .
Date:
Server’s signature
Server’s address