GEN Law Firm recently assisted Honeywell in an unfair competition dispute involving the distinctive trade dress of Honeywell’s iconic scanner product. Through legal proceedings, Honeywell successfully enforced its rights and safeguarded its intellectual property and brand reputation.

The matter was handled by partners Jerry Xia and Simon Du, together with team members Iris Li and Jinjie Shen.

Background

The protected product in this case is Honeywell’s 7120 series scanner. Its overall appearance features a distinctive “sphere-and-base” structure, forming a highly recognizable trade dress.

The design was inspired by Kenny McCormick, a character from the U.S. animated series South Park. The product has also received multiple international industrial design awards.

The product has been continuously sold in the China market since 2000 and remains available today, becoming a trusted classic choice for customers across a wide range of industries.

Given its recognizability, this classic trade dress also became a target for imitators, including the defendant in this case—a leading and well-known domestic company in its industry.

After discovering the infringement, GEN Law Firm, on behalf of Honeywell, initiated a civil lawsuit against the infringer. The first-instance judgment found that the defendant infringed Honeywell’s rights in the product trade dress, ordered the defendant to cease the infringing acts, and required the defendant to compensate for losses.

During the second-instance proceedings, the defendant proposed settlement. After multiple rounds of negotiations, the defendant increased the amount of compensation and the parties reached a settlement.

Case Highlights

A central challenge in this case was that the defendant raised multiple, highly adversarial defenses, attempting to undermine the legal basis for trade dress protection from different angles. GEN Law Firm addressed the key issues through fact-based argumentation, legal analysis, and targeted evidence collection, including:

1) “Patent Expiration” Defense: Design patent expiration does not mean trade dress automatically enters the public domain
The defendant argued that the design patent for the relevant product in the United States had expired and entered the public domain, and therefore the corresponding trade dress should no longer be protected. GEN Law Firm argued that the same product/design may be protected by different types of intellectual property rights. The expiration of one right (such as a design patent) does not automatically eliminate protection available under other legal bases, and therefore cannot by itself negate trade dress protection for the design at issue.

2) “Genericness” Defense: Market-wide use was not supported by the evidence
In response to the claim that the trade dress had become generic and lacked distinctiveness, GEN Law Firm collected and organized information on scanner trade dress from major search engines. The evidence showed that products adopting similar trade dress accounted for only a very small proportion of the market. Moreover, those products entered the market later than Honeywell’s 7120 series and were also infringing products. Therefore, they do not support the claim that the trade dress has become “generic”.

3) “Functionality” Defense: The shape is not dictated by function; aesthetic elements are separable
The defendant also asserted that the product’s trade dress was dictated by functional considerations and therefore should not be protected. GEN Law Firm argued that barcode reading and information transmission do not depend on a particular trade dress, and that the overall appearance constitutes an aesthetic expression that can be distinguished from functional implementation and should be protected under applicable law.

Through precise legal analysis and solid evidentiary work, GEN Law Firm overcame the defendant’s defenses, ultimately facilitating a favorable settlement and helping Honeywell continue to protect its brand image and competitive advantage in the China market.

Meanwhile, during the progress of the civil enforcement, GEN Law Firm also assisted Honeywell in initiating administrative enforcement actions against other infringing targets, submitting leads and supporting materials to the relevant authorities and following up on the matter. The Jing’an District Market Supervision Administration of Shanghai has issued administrative penalty decisions regarding the relevant infringing acts and imposed penalties on such infringing targets, achieving positive and notable enforcement results for Honeywell.

The civil proceedings and the parallel administrative enforcement supported each other and formed a combined effort. It not only effectively stopped and sanctioned infringing conduct, but also served as an important warning to the scanner industry—helping foster a more orderly competitive environment, deterring bad-faith imitation, and promoting the industry’s healthy development.

Honeywell’s related report on this civil case is available here:
https://mp.weixin.qq.com/s/bx_Nck2ELEIK21KYEKYu5A