The Fifth Circuit upheld a preliminary injunction last week prohibiting Chinese company Shenzhen Sanlida Electrical Technology Co. Ltd. and Shenzhen Sanlida Electrical Technology Co., Ltd.  (collectively “Shenzhen”) from selling stand mixers that allegedly infringe Whirlpool Corp.’s (“Whirlpool”) famous KITCHENAID trademarks and trade dress.

In January 2022, Whirlpool sued Shenzhen alleging trademark infringement and dilution, trade dress infringement, and unfair competition under both federal and state law for Shenzhen’s sale of its stand mixers sold online under the names COOKLEE and PHISNIC. Photos of the stand mixers are below.

Whirlpool’s KitchenAid Mixer

Compl. pg. 2.

Shenzhen COOKLEE and PHISNIC Mixers

Compl. pg. 3-4.

Whirlpool argued that Shenzhen’s stand mixers violated Whirlpool’s valid and incontestable trademark registrations for the iconic design of its KITCHENAID mixers (U.S. Trademark Registration Nos. 1,711,158 and 5,510,871), as shown below:

Compl. pg. 9-10.

Whirlpool also claimed that the Shenzhen designs violated Whirlpool’s unregistered trade dress rights in its widely known and recognized shape for its KITCHENAID mixer, including its sleek design, rounded edges, signature bullet-shaped head, protruding attachment hub, sloped neck and rounded base. Further, Whirlpool argued that both its trademarks and trade dress are non-functional and serve to identify to consumers that the origin of the product is Whirlpool.

In response, Shenzhen argued that the features of Whirlpool’s KITCHENAID mixers that Whirlpool claims are protected (i.e., the mixers’ head and L-shaped pedestals including a base portion and an upstanding support arm) are functional and under the functionality doctrine of trademark law, are therefore not protectable. Further, Shenzhen argued that likelihood of confusion was not likely due to the difference in the channels of trade (i.e., Shenzhen’s mixers are sold online only and KITCHENAID mixers are sold in stores and online) and the care consumers would exercise when making a purchase of KITCHENAID mixers due to their high price.

In June 2022, the U.S. District Court for the Eastern District of Texas granted Whirlpool’s motion for a preliminary injunction prohibiting Shenzhen from selling and promoting its stand mixers while the case is litigated. Shenzhen appealed the injunction to the Fifth Circuit and reiterated its arguments regarding functionality and the possibility of consumer confusion and also argued that the federal judge did not have personal jurisdiction over it because service of process was not completed under the Hague Convention, so the district court lacked the power to enter a preliminary injunction.

With regard to the functionality argument, the Fifth Circuit held that there was no showing in the record that the specific shape of the mixer head or slope of the stand otherwise affects the cost, quality, or function of the stand mixers as to be required to demonstrate functionality. Regarding the possibility of confusion, the Fifth Circuit said that Shenzhen’s allegedly infringing mixers have similar slopes and geometries, are sold to similar purchasers, and are sold for personal and not commercial use and are therefore likely to cause confusion.

The Court also acknowledged that several factors did favor Shenzhen’s position. For example, Shenzhen’s mixers have other distinguishable features, like additional nobs and visible branding. That said, the Court held that the fact that there is a debate regarding how to weigh the factors is not enough to find clear error in the district court’s decision in Whirlpool’s favor.

The Fifth Circuit also held that Shenzhen received sufficient notice of the motion for a preliminary injunction and noted that Shenzhen’s counsel was present at the preliminary injunction hearing. The Court stated that a preliminary injunction requires only notice and not perfected service of process and that a formal service of process under the Hague Convention can take months. Adopting Shenzhen’s position could result in the “unfortunate effect of immunizing most foreign defendants from needed emergency injunctive relief.”