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

Nature of the Order

The court issued an order attaching proposed preliminary and final jury instructions. The parties were directed to file objections or comments by 4:00 p.m. on October 18, 2021. The court stated that it would not entertain the “rehauled” instructions submitted by SinCo at Docket No. 517 because the court had requested comments on only two specific instruction issues, not a complete rewrite of the instructions.

Claims and Parties

The proposed instructions identify SinCo Technologies Pte Ltd. as the plaintiff. They identify the defendants as XingKe Electronics (Dongguan) Co., Ltd.; Mui Liang Tjoa; Cher Yong, also known as Cy Ng; and Liew Yew Soon, also known as Mark Liew. The instructions state that XingKe previously did business as Sinco Electronics (Dongguan) Co., Ltd., and that Liew Yew Soon is also known as Mark Liew.

The proposed instructions state that SinCo asserts trademark infringement and false advertising claims against each defendant. The defendants deny those claims and assert defenses. The instructions also refer to a separate California state-court lawsuit involving some of the same parties and tell jurors not to speculate about that case.

Proposed Jury Instructions

The proposed instructions explain the jury’s duty to decide facts from the admitted evidence and apply the law given by the court. They address conscious and unconscious bias, evidence, objections, witness credibility, depositions, interrogatories, admissions, expert testimony, jury conduct, deliberations, and communications with the court.

For trademark infringement, the proposed instructions require SinCo to prove by a preponderance of the evidence that the “SinCo” mark is valid and protectable, that SinCo owns it, and that the defendants used the mark or a similar mark without consent in a way likely to confuse a reasonably prudent purchaser about the goods’ source, sponsorship, affiliation, or approval. The parties agreed that SinCo owns the mark and that it is valid. The instructions state that four marks are at issue: one word mark and three design marks.

The proposed instructions address likelihood of confusion using factors commonly associated with the Sleekcraft test, including the strength of the mark, the parties’ use of the marks, similarity, actual confusion, intent, marketing channels, purchaser care, and possible product-line expansion. They also include initial-interest confusion, meaning confusion that captures a purchaser’s initial attention and lasts long enough to give the defendant a competitive advantage, even if no sale results.

The proposed instructions include an abandonment defense based on the trademark owner’s failure to exercise adequate quality control over goods sold by a licensee. They place the burden on the defendants to prove abandonment by clear and convincing evidence. Judge Chen explained that he chose that standard because abandonment results in a forfeiture of trademark rights and because the court agreed with the majority of courts addressing the issue.

The instructions also address oral licenses, the possible employment relationship between SinCo and individual defendants, continuous prior use in a remote geographic area, damages, statutory damages, defendant profits, mitigation, and attorney fees. The court asked the parties for additional briefing and a proposed instruction concerning which entity employed two individual defendants because the parties had not established what law governed that issue.

Claims Not Submitted to the Jury or Instructions Not Given

The court stated that it intended to exclude references to false designation of origin and common-law trademark infringement because the parties agreed that those claims used the same test as trademark infringement and separate instructions could confuse the jury. The court also stated that the California Business and Professions Code section 17200 claim would not be submitted to the jury because it is equitable in nature and would be decided by the court.

The court declined to give proposed instructions on several subjects, including a separate license defense, trademark ownership, a detailed trademark-strength instruction, punitive damages, attorney fees, and a statute-of-limitations instruction. These were proposed-instruction rulings for the trial framework; the order did not decide liability, damages, or which party would prevail.

Disposition

Judge Edward M. Chen issued proposed jury instructions, set a deadline for party comments and objections, rejected SinCo’s request to redo all the instructions, and identified which claims and issues would or would not be presented to the jury. The opinion does not report a verdict or a final judgment.