The Conduct of Making and Selling Refurnished Mobile Phones Constitutes Crime of Counterfeiting Registered Trademarks?

After I read the article wrote by reporter Mr. Nie Shihai from the Judicial View on the First Case of Counterfeiting Trademark BlackBerry (the “Judicial View”) explaining and analyzing the decision made by the court from the aspect of jurisprudence, which is published in The China IP of 2011 February, I got contact with the editor due to my doubts about the sentences and finally I got the criminal sentences of the first instance and second instance. Through reading the sentences, I think the conduct of making and selling refurnished mobile phones doesn’t constitute the crime of counterfeiting registered trademarks for the following reasons.

I. Summary of the case and sentences

The summary of the corpus delicti affirmed in the sentences: the four defendants purchased old Blackberry Smartphone or main boards to be repaired, and additionally bought keyboard plats, loudspeaker, flashlight, mirror surface with trademark BlackBerry (a part of the shell) and other components to, without the authority of the owner of the trademark BlackBerry, Research in Motion (the “RIM”), assemble fake BlackBerry Smartphone labeled “BlackBerry”, type and IMEI to make profits. Totally, the amount of money involved in this case is RMB 0.29 million. [1]

On 27^th June, 2011, the Shenzhen Intermediate People’s Court made the final sentence holding the sentence of first instance made by the Shenzhen Futian People’s Court. The two sentences all affirm that the four defendants, without permission from RIM, owner of the registered trademark BlackBerry, using a trademark which is identical with the registered trademark of RIM on the same kind of commodities commit the crime of counterfeiting registered trademarks, and shall separately be sentenced to fix-term imprisonment of one year and four months to three years and six months. [2]

II. Analysis of the legal nature of the conduct of refurnishing mobile phones

The nature of a refurnished mobile phone is different from the traditionally known “fake”, because that only partial components of a refurnished mobile phone is fake according to the facts affirmed in the sentences that the defendants purchased old BlackBerry Smartphone and sold them by keeping the main board but only changing the shell, keyboard plat, loudspeaker, flashlight, mirror surface with trademark BlackBerry (one part of the shell), etc.. [3]However, it is common sense that most old mobile phones’ keyboard plat, loudspeaker, flashlight should be fine, moreover in consideration of profits, the maker of refurnished mobile phone certainly wouldn’t replace the fine components. Ultimately only a part of old mobile phones’ components mentioned above should have been replaced. To summarize, the characteristic of a refurnished BlackBerry Smartphone is:  its fake shell with fake trademark (as said above, the defendants have changed the original shell and trademark BlackBerry, actually the trademark used in a refurnished mobile phone is “BLACKBERRY”), but its movement is genuine as for the main board of a refurnished mobile phone is originally made by RIM.

What’s the nature of a BlackBerry Smartphone? According to Baike Baidu.com[4], BLACKBERRY is a kind of terminal of mobile email system developed by RIM and its characteristic is to support mobile phone, word message, Internet fax, web browsing and other wireless information services. On the other hand, the sentence of the fist instance states that the refurnished mobile phones involved in this case have the functions same as that of a original BlackBerry Smartphone.[5] Actually the said functions only can be achieved by the components contained in the main board made by RIM.

Short Link: