Sinco Technologies Pte Ltd. v. Sinco Electronics Co. Ltd.

Background

Sinco Technologies Pte Ltd. brought claims against XingKe Electronics (Dongguan) Co., Ltd., formerly doing business as Sinco Electronics (Dongguan) Co., Ltd., and three individuals: Mui Liang Tjoa, Cher Yong (also known as Cy Ng), and Liew Yew Soon (also known as Mark Liew). The claims identified for the jury were trademark infringement, false advertising, and passing off. The court noted that a separate state-court lawsuit involving some of the same parties was pending, but instructed the jury not to speculate about that case.

Court’s Proposed Instructions

The court modified its proposed preliminary and final jury instructions based on the parties’ comments. The instructions explained the jury’s duties, the treatment of evidence, the burdens of proof, witness credibility, implicit bias, trademark infringement, false advertising, passing off, affirmative defenses, and damages.

For trademark infringement, the proposed instructions required Sinco to prove that its mark was valid and protectable, that it owned the mark, and that the defendants’ use was likely to confuse reasonably prudent purchasers. The parties agreed that Sinco owned the “SinCo” mark and that it was valid. The court also instructed on likelihood of confusion using the Ninth Circuit’s multi-factor test, including initial-interest confusion.

The court added a common-law passing-off instruction. Under that instruction, Sinco would have to prove that the defendants knowingly falsely represented to purchasers that XingKe’s goods were Sinco’s, that a reasonably prudent purchaser would likely have been deceived, and that Sinco suffered competitive injury. The court stated that the passing-off claim was not preempted by the federal trademark statute and that punitive damages could be available for that state-law claim.

The court stated that it would not submit Sinco’s claim under California Business and Professions Code section 17200 to the jury because the claim was equitable and therefore for the court to decide. It also intended not to separately instruct on false designation of origin or common-law trademark infringement because the parties had agreed those claims used the same test as trademark infringement. The court asked the parties to consider whether to drop the false-advertising claim because of overlap with passing off.

Affirmative Defenses and Damages

The court included an abandonment defense based on the alleged failure to exercise adequate quality control over goods sold under a license. It ruled that the defendants would have to prove abandonment by clear and convincing evidence. The court also addressed the parties’ dispute over whether certain individuals were Sinco’s employees and noted that the parties agreed Singapore law governed that issue. The court declined to include a proposed continuous-prior-use defense because the defendants were not asserting it.

The proposed damages instructions distinguished among actual damages, the defendant’s profits, statutory damages against the individual defendants for alleged counterfeiting, and punitive damages for passing off. The court declined to give a mitigation instruction because the defendants had not asserted that affirmative defense in their answers. It also stated that attorneys’ fees were for the court, not the jury, to decide.

Disposition

The court issued an order revising its proposed jury instructions. It directed the parties to report by 5:00 p.m. on October 27, 2021, or by that date as specified in particular notes, on unresolved matters including possible stipulations, the treatment of false advertising, additional passing-off instructions, employment-law authorities, and potential double counting of damages. The order did not enter judgment or decide liability on any claim.