10 Typical IP litigation cases of LongAn in 2020

Case 1: Siemens Industry Software Co., Ltd. V. Guangzhou Wofu Mould Co., Ltd. in a dispute over computer software copyright infringement

 

INTRODUCTION

Siemens Industry Software Co., Ltd., the copyright owner of the NX series software, filed a lawsuit with the Guangzhou Intellectual Property Court on the grounds that Guangzhou Wofu Mould Co., Ltd. used the software involved for product design and manufacturing without its authorization, which constituted infringement.

 

According to application of Siemens Industry Software Co., Ltd., the court of first instance sent a preservation ruling to Guangzhou Wofu Mould Co., Ltd., and explained in detail to the managerial staff of the company on site the preservation measures to be taken and the legal consequences of refusing to cooperate with the court preservation. According to the on-site inventory, there were 26 computers in the design office of Guangzhou Wofu Mould Co., Ltd. After the court of first instance preserved 17 computers and 9 of them were installed with the software involved in the case, Guangzhou Wofu Mould Co., Ltd. suddenly took countermeasures to obstruct the preservation by refusing to turn on some computers, cutting off power, detaining court cameras, and preventing court personnel from leaving, etc., which caused the termination of preservation work of the court, and the remaining 9 computers were not preserved then.

 

The court of first instance gave the verdict that Guangzhou Wofu Mould Co., Ltd. constituted an infringement, and ordered Guangzhou Wofu Mould Co., Ltd. to stop the infringement and compensate Siemens Industry Software Co., Ltd. for economic losses of RMB 500,000 and reasonable costs of RMB 100,000 to protect right with the statutory compensation limit.

 

The Intellectual Property Court of the Supreme People’s Court held that, under the circumstance that the court of first instance had stated the adverse consequences of resisting preservation, Guangzhou Wofu Mould Co., Ltd. still took countermeasures to obstruct the preservation work of the court. In the case where it has been confirmed that some of the preserved computers have been installed with the software involved, according to the relevant judicial interpretations, it can be presumed that the un-preserved computers have also been installed with the software involved, which has been considered together with Guangzhou Wofu Mould Co., Ltd.’s resistance of preservation of the court when determining the infringement damages. In the end, based on the facts of the case such as the quantity of infringing software and the selling price of legitimate software, the request for damages of Siemens Industry Software Co., Ltd. was fully supported by the court (that is, the amount of the first-instance litigation), and Guangzhou Wofu Mould Co., Ltd. was judged to compensate Siemens Industry Software Co., Ltd. for economic losses of RMB 2,612,827 and the reasonable cost of RMB 100,000.

 

TYPICALITY

  1. This case clarified that, the use by any entity or individual of violence, threats or other methods to hinder judicial staff from performing their duties, not only seriously violates the basic principle of integrity in the litigation, but also seriously hinders the civil litigation. The people’s court will fully take the circumstances into consideration when determining the specific amount of compensation.

 

  1. In this case, the amount of infringing software, the price of legitimate software, etc. were used as the basis for calculating the judgment amount, and the request for damages of Siemens Industry Software Co., Ltd. was fully supported by the court accordingly.

 

According to the search of the current public cases and incomplete statistics, this case may be the first public case based on the above two principles in the field of judicial judgment of computer software infringement. The judgment has an important guiding significance in the field of judicial adjudication of computer software infringement cases.

 

 

 

Case 2: Asia Travel Hotel Intellectual Property Co., Ltd. and Australia Travel Hotel Intellectual Property Co., Ltd. V. the CNIPA for the administrative dispute over trademark invalidation  

 

INTRODUCTION

Asia Travel Hotel Intellectual Property Co., Ltd. and Australia Travel Hotel Intellectual Property Co., Ltd.  (hereinafter referred to as “Clients”) have been engaged in hotel business, and have registered trademarks in Class 35 and Class 43 at an earlier time, which confirmed the importance of services in Class 43 (hotels, restaurants, canteens, etc.) and Class 35 (the management of hotel services directly for customers) in China. The third Party in this case (British Travel & Accommodation Hotel Co., Ltd.) is a competitor in the same industry with the Clients and the TRAVELODGE hotel in the United States due to their historical reasons. They originally occupied their own business scopes and did not interfere with each other. British Travel & Accommodation Hotel Co., Ltd. knew that the Clients have registered trademarks in Class 35 and Class 43. In their original intentions, and after repeated negotiations with the Clients on the business area, they drew up their respective regional agreements and agreed that China belongs to the Clients’ business scope. However, on one hand, British Travel & Accommodation Hotel Co., Ltd. negotiated their respective TRAVELODGE business areas with the Clients; on the other hand, British Travel & Accommodation Hotel Co., Ltd. filed an application of non-use cancellation for three consecutive years regarding the Clients’ trademark (TRAVELODGE in Class 43) just within two days. Then British Travel & Accommodation Hotel Co., Ltd. registered the trademark in China successfully.

 

The Clients represented by LongAn Law Firm, sued the CNIPA to the Beijing Intellectual Property Court for Trademark Invalidation Request Ruling Regarding the Trademark “TRAVELODGE” (No. 9879038) (No. [2018] 175042), requesting to revoke the ruling according to laws and regulations and make a new ruling. The Beijing Intellectual Property Court made the following first-instance judgments of (2019) Jing 73 Xing Chu No. 2443 and (2019) Jing 73 Xing Chu No. 2444 and supported our claims. After the defendant in the first instance appealed to the Beijing Higher People’s Court, our firm still represented the Clients. Finally, the Beijing Higher People’s Court made the following second instance judgments of (2020) Jing Xing Zhong No. 3079 and (2020) Jing Xing Zhong No. 3089 and upheld the first-instance judgments.

 

TYPICALITY

The typicality of this case is as follows: regarding the issue of whether the trademark “TRAVELODGE” in Class 43 applied for by the third Party in this case is identical to the trademark “TRAVELODGE” in Class 35 registered by the Clients in China on the same or similar services, both Beijing Intellectual Property Court and the Beijing Higher People’s Court made the affirmative judgments. In judicial practice, when the cited trademark is well-known in the world and not yet well-known in China, it breaks through the common administrative examination standards and re-confirms that the “The International (Nice) Classification of Goods and Services” is not the only criterion for judging similar goods or services, but it should be judged based on whether the scope of the approved use of a trademark is related in terms of purpose, content, object, etc., which helped to protect the interests of trademark owners in this case. In this case, it protected the trademark in different classes, which has a guiding significance for similar cases and is of great significance on the protection of interests and the development of the Chinese market for the Clients.

 

 

 

Case 3. Foshan Shunde Midea Washing Appliance Manufacturing Co., Ltd. V. Vatti Co., Ltd. in a civil dispute over infringement of utility model patents

 

INTRODUCTION

On November 15, 2018, Foshan Shunde Midea Washing Appliance Manufacturing Co., Ltd. filed a lawsuit with the Nanjing Intermediate People’s Court of Jiangsu Province, requesting the court to order Vatti Co., Ltd. to stop the infringement.

 

On November 22, 2018, the CNIPA issued the Examination Decision on Request for Invalidation (No. 38030) to maintain the validity of the patent involved in this case.

 

On July 22, 2019, Vatti Co., Ltd. filed an invalidation application for the patent involved again.

 

On August 15, 2019, the Nanjing Intermediate People’s Court overruled the claims of Vatti Co., Ltd. in the first instance. Vatti Co., Ltd. refused to accept the judgment, and immediately appealed to the Supreme People’s Court.

 

On May 18, 2020, the Supreme People’s Court overruled the appeal of Vatti Co., Ltd. and upheld the first instance judgment. The case lasted nearly two years from the first instance prosecution to the final trial of the Supreme People’s Court. In the end, Foshan Shunde Midea Washing Appliance Manufacturing Co., Ltd. won the case again.

 

TYPICALITY

This case is not the first case of rights protection in the dishwasher field for Midea Washing Appliance Manufacturing Co., Ltd. The success of this case is also inseparable from the solid foundation laid by other litigations. Prior to this, Zhao Yanxiong’s team of LongAn Law Firm has helped Midea to win many patent litigations in the fields of dishwashers and others. Particularly, in the series of infringement cases of Midea V. Foshan Best Electric Technology Co., Ltd., which was tried by the Guangzhou Intellectual Property Court and the Guangdong High People’s Court, Midea’s victory has dealt a heavy blow to the OEM manufacturers in the upstream of the industries that profit from patent infringement. These OEMs manufacture dishwashers for many well-known appliance companies including Vatti Co., Ltd. The case (2018) Yue 73 Min Chu No. 490 of the series of cases was selected as the “Top Ten Cases of Service and Protection Technology Innovation in 2019” and “Top Ten Typical Civil Cases of Intellectual Property in 2019” by the Guangzhou Intellectual Property Court.

 

 

 

Case 4. Minhua Industrial Co., Ltd. vs. Foshan Life-Dream Household Products Co., Ltd. for trademark infringement dispute

 

INTRODUCTION

In June 2020, Minhua Industrial Co., Ltd. (hereinafter referred to as “Minhua Company”) sued Foshan Life-Dream Household Products Co., Ltd. (hereinafter referred to as “Life-Dream Company”) to the Chancheng People’s Court of Foshan, claiming that Life-Dream Company used the same or similar text mark as the “头等舱” trademark held by Minhua Company as the product name in the product links (i.e., product titles) in the flagship stores of JD.COM and YHD.COM operated by it, which infringed the exclusive right of Minhua Company’s registered trademark “头等舱”, and requested the court to order Life-Dream Company to cease the infringement and pay 2 million yuan to it as compensation. After the trial, the Chancheng People’s Court of Foshan finally determined that Life-Dream Company constituted a trademark infringement, and ordered Life-Dream Company to cease the infringement and pay to Minhua Company 1.8 million yuan as compensation. After the judgment of the first instance, neither party appealed, and the judgment is now effective.

 

The attorney of LongAn participated in the entire process of the preliminary planning, investigation and evidence collection, and advocacy as the agent of Minhua Company.

 

TYPICALITY

“头等舱” is the leading brand in China’s functional sofa industry, and Minhua Company is the holder of the trademark. Prior to this case, Minhua Company sued peer companies to Hangzhou Intermediate Court and Shenzhen Court for infringement of the exclusive right to use the registered trademark of “头等舱”, and both courts held that “头等舱” was a common name and was not distinctive.

 

After accepting the entrustment, the attorney of LongAn confirmed the idea of demonstrating that “头等舱” is not a common name from both pros and cons. On the positive side, LongAn proved that the trademark “头等舱” has been used for a long time, on a large scale, and in multiple forms, “头等舱” has a high reputation, and is fully capable of distinguishing the merchandise resources from the perspectives of registration history, actual use, advertising investment, rights protection, etc.; on the other hand, LongAn denied the evidence’s validity and probative force of the common name evidence submitted by the defendant from the perspective of the form of evidence and the content of the evidence. In the end, the judge was convinced that although the trademark “头等舱” is weak in distinctiveness, it had not yet constituted a situation that “only directly indicated the quality of the goods, etc.”.

 

The court finally determined that the defendant’s use of “头等舱”, “头等电动舱”, and “头等太空舱”, which are the same as or similar to the registered trademark “头等舱” in the product link and product name, constituted the use of trademarks to identify the merchandise resources under the China Trademark Law, which infringed the plaintiff’s exclusive right to use the registered trademark of “头等舱”.

 

The case corrected the previous misunderstanding of the trademark “头等舱” by the Hangzhou and Shenzhen courts, safeguarded the core business interests of Minhua Company, and paved the way for Minhua Company’s trademark rights protection in the future.

 

 

 

Case 5. Suzhou Yunbai Environmental Equipment Co., Ltd. V. Suzhou Taigao Chimney Technology Co., Ltd., etc. in the dispute over infringement of invention patent rights

 

INTRODUCTION

The defendant Suzhou Taigao Chimney Technology Co., Ltd. was founded by a former employee of the plaintiff Suzhou Yunbai Environmental Equipment Co., Ltd., and was engaged in the same business of the chimney production and sales with the plaintiff. LongAn Law Firm represented the plaintiff to sue the defendant for the infringement of the ZL201010160845.9 invention patent. Under the adverse circumstances of non-infringement of the first instance, the judgment was revised through the second instance of the Supreme People’s Court. The plaintiff finally received the statutory maximum compensation of RMB 1 million and the reasonable expenses of more than RMB 120,000.

 

TYPICALITY

  1. The pioneering determination of the scope of protection of functional technical features in this case has obtained the support of the Supreme People’s Court. In the second instance, we claimed that: (a) The first instance court voluntarily identified the “horizontal fixed and vertical sliding structure” as a functionally limited technical feature, which violated the principle of debate. In the first instance trial, the defendant did not claim that it was a functionally limited technical feature and the court did not explain it to Suzhou Yunbai Environmental Equipment Co., Ltd. (b) The “horizontal fixed and vertical sliding structure” should not be regarded as a functionally limited technical feature. (c) Even if the “horizontal fixed and vertical sliding structure” is identified as a functional technical feature, its scope of protection should include the specific implementation and its equivalent implementation, so the product involved has this technical feature. Finally, all three claims have been supported by the Supreme People’s Court.

 

  1. The statutory maximum compensation. In the case where the plaintiff’s losses and the defendant’s gains are unclear, the estimated compensation by us proves that the defendant’s gains far exceed the statutory maximum limit of compensation. Therefore, the Supreme People’s Court ruled the defendant to compensate the statutory compensation of RMB 1 million, and to pay the reasonable expenses. The interests of client are maintained to the greatest extent.

 

  1. This case was published by the official account of IPHOUSE due to its groundbreaking identification of the protection scope of functional technical features. See:

https://mp.weixin.qq.com/s/T0sy8M9M0YArY0h9YGgfbw.

 

 

 

Case 6. Sinopec Lubricant Co., Ltd. v. Foshan Jiabo Lubricant Co., Ltd., etc for unfair competition disputes

 

INTRODUCTION

In this case, LongAn represented the plaintiff Sinopec Lubricant Co., Ltd.

 

As early as 1996, the defendant, Beijing Daxing Changcheng Advanced Grease Co., Ltd. (hereinafter referred to as Beijing Daxing Changcheng Company), registered the plaintiff’s trademark “长城” and the famous product name “长城”(牌润滑油)as its corporate name without permission, and used the plaintiff’s product packaging and decoration, trademarks and other logo design elements to produce and sell products similar to the plaintiff’s products, causing confusion in the market. At the same time, Shandong Jinkairun Shihua Co., Ltd. (hereinafter referred to as Shandong Jinkairun) provided processing services for Beijing Daxing Changcheng Company, and Foshan Jiabo Lubricant Co., Ltd. (hereinafter referred to as Foshan Jiabo) sold infringing products. All three defendants constituted acts of counterfeiting and infringement as stipulated in Article 6 of the Unfair Competition Law (PRC). Among them, Shandong Jinkairun constituted the assistance infringement of Beijing Daxing Changcheng Company, and both parties shall bear part of the joint liability.

 

Foshan Chancheng People’s Court, the court of first instance, held that Beijing Daxing Changcheng Company registered the plaintiff’s trademark “长城” and the well-known product name “长城”(牌润滑油)as its corporate name, and used the plaintiff’s trademarks “长城” and “长城”(牌润滑油)170KG with up and down in crimson and white in the middle constituted unfair competition, and ordered Beijing Daxing Changcheng Company to change its corporate name, publish a statement in professional media to eliminate effects, Beijing Daxing Changcheng Company, Shandong Jinkairun, and Foshan Jiabo to cease production and sales of infringing products and compensate the plaintiff economic losses for a total of CNY 560,000. The defendant Beijing Daxing Changcheng Company resolutely refused to accept the result of the judgment prohibiting the use of “长城” in the company name, and appealed to the Foshan Intermediate People’s Court. The Foshan Intermediate Court upheld the original judgment in the final decision.

 

TYPICALITY

Although this case is a typical “copycat famous brand” unfair competition case, the defendant Beijing Daxing Changcheng Company was registered in 1996. At the same time, the plaintiff’s No. 238382 trademark, “长城”, which was registered earlier than the corporate registration time of defendant (Beijing Daxing Great Wall Company), is a combination of figurative mark and word mark. From the appearance, the word “长城” occupies a small proportion in the overall design of the trademark, and only from physical appearance, the word “长城” is not obvious. Therefore, the difficulty in this case is to prove the popularity of trademark No. 238382 more than 20 years ago, “长城” is widely known by the public as the distinguishing part and calling part of trademark No. 238382, and the earliest use of packaging and decoration for “长城” 170KG with up and down in crimson and white in the middle. In consequence, the focus of the litigation in this case is to dig for evidence of the popularity of the “长城” trademark and its packaging and decoration and to prove that the defendant Beijing Daxing Changcheng Company was subjective malice when it registered the company in 1996.

 

Regarding the popularity of the “长城” trademark, the plaintiff provided the documentary evidences that it had obtained the honors of famous trademark, brand-name products, and national customer satisfaction products before the defendant’s enterprise registration, and the value of the trademark was evaluated as CNY 180 million approved by the SASAC in 1995. Meanwhile, all the documentary evidences refer to the trademark No. 238382 with the word “长城”, which proved that “长城” is well-known in the market long before the defendant’s company was registered.

 

Regarding the defendant’s subjective malice, first, the “长城” trademark is well-known in the market before the defendant’s enterprise registration. Then, when the defendant was registered, the trademark ownership of the “长城” trademark was the predecessor of the plaintiff, Changcheng Advanced Lubricant Company, whose corporate name contained “长城高级”. Third, when the plaintiff discovered the defendant’s infringement in 2018, the defendant used similar packaging and decoration on the like product. Fourth, the trademark “福满星”, which has been approved for registration, used on the defendant’s infringing products is similar to the “福星” trademark previously registered by the plaintiff. In the case where multiple design elements are similar to the plaintiff’s product, it is sufficient to prove that the defendant’s behavior is obviously subjective malice.

 

TYPICAL SIGNIFICANCE

  1. This case involves the infringement of the trademark and other intellectual property rights of Sinopec, which is ranked second in the world’s top 500 and first in the top 500 in China in 2020. The increase in judicial protection of the intellectual property rights of well-known enterprises demonstrates determination and efforts of China to strengthen Judicial protection of intellectual property rights, build a strong country with intellectual property rights. In the meantime, the judicial case concerning the protection of intellectual property rights of super-large state-owned enterprises such as Sinopec have a strong social demonstration effect, which has increased the awareness of domestic enterprises in protecting their rights and the awareness of intellectual property protection in the whole society.
  2. This case involves the identification standard of trademark confusion, the continuation of goodwill between multiple similar trademarks owned by the same subject, and the impact of the result of administrative confirmation on the prior rights of the right holder in the process of trademark infringement, and more other discussion of legal issues.

In the absence of clear provisions in the law, uphold the principle of good faith and the accurate application of trademark law, unfair competition law and other laws to make a fair judgment. Especially the thorough analysis in second instance is classic examples for exploring such cases.

 

The fact issues of this case are complicated. As the plaintiff, it is very difficult to prove that the defendant had the subjective malice of the “copycat famous brand” when they registered the company in 1996 and the plaintiff’s trademark is well-known at a certain point in time more than 20 years ago. The main body of the trademark involved in the case has undergone a series of corporate changes, such as corporate restructure, listing, and redesign, which is a very large project for the plaintiff to collect evidence in the process of proof, but it got the harvest, achieved the purpose of proof, and obtained the victory result that the lawsuit request was fully supported by the court through the tireless efforts of the plaintiff and the attorney.

 

 

 

Case 7: A series of administrative disputes between BEKING Co., Ltd., vs. Shanghai Bangying Investment Management Co., Ltd. and the CNIPA for trademark invalidation declaration  

 

INTRODUCTION

BEKING Co., Ltd. (hereinafter referred to as “BEKING Company”) believed that the trademark of No. 5585804 “BEKING” and other trademarks (8 trademarks in total) of Shanghai Bangying Investment Management Co., Ltd. (hereinafter referred to as “Shanghai Bangying Company”) applied for registration were imitating and copying the well-known trademark of “BEKING” of BEKING Company, and their registration would constitute situations in which the applications were made for registration of the trademarks by deception or other improper means of Paragraph 1 of Article 44 of the “Trademark Law”. Therefore, the lawyers from LongAn Law Firm were entrusted to apply for invalidation declaration of the trademark to the CNIPA. The CNIPA supported our applications and declared the series of trademarks invalid.

 

Shanghai Bangying Company refused to accept the decision and filed an administrative lawsuit. The court of first instance supported Shanghai Bangying Company’s litigation claims. We represented BEKING Company in the appeal, and the court of second instance (Beijing Higher People’s Court) overturned the first instance judgment and supported our claim. Shanghai Bangying Company refused to accept the judgment of the second instance and applied to the Supreme People’s Court for a retrial. We continued to represent the BEKING Company in responding to Shanghai Bangying Company’s retrial applications.

 

At present, the Supreme People’s Court has overruled the retrial applications of Shanghai Bangying Company for six cases. As for the remaining two cases, the court has not yet made any ruling.

 

TYPICALITY

  • The litigations were difficult and higher demands were put forward on lawyers. The cases involved the identification of well-known trademarks, as well as the understanding and application of the first paragraph of Article 44 of the Trademark Law. Through the efforts of the litigation team of our firm, the formulation of effective litigation strategies and detailed proof (with more than 7,000 pages of evidence involved) were made, and the unfavorable judgment of the first instance was successfully reversed.

 

  • In the cases, “well-known trademarks” were successfully identified. In the six cases that have produced results, the Supreme People’s Court has determined that the cited trademarks of our client were well-known trademarks, which was particularly rare today when the “identification of well-known trademarks” has been more and more stringent in judicial practice.

 

  • This case is typical and it is of great significance to our client. The trademark “BEKING” of the BEKING Company is a well-known brand in the field of furniture and home decoration. Shanghai Bangying Company hasbeen involved in systematic trademark infringement and unfair competition for the goodwill of the BEKING Company, and the scope has been quite wide (for example, there are hundreds of franchise stores of Shanghai Bangying Company). On one hand, the judgments in this series of cases affirmed the long-term efforts of the BEKING Company in trademark building, which are of great significance to the brand development of the client; on the other hand, the judgments in this series of cases also provided solutions for cracking down the behaviors of resorting to “parasitic” unfair competition against well-known trademarks in the market.

 

 

 

Case 8: Brother Industries vs. Zhuhai Ninestar Enterprise Management Co., Ltd. for packaging bag design patent invalidation declaration  

 

 

INTRODUCTION

In the case of invalidation declaration of the packaging bag design patent handled by lawyers from LongAn Law Firm, the CNIPA supported the request of our client, Brother Industries, and declared all the patents involved in the case by the patentee Zhuhai Ninestar Enterprise Management Co., Ltd. to be invalid.

 

In this case, Brother Industries filed a request for invalidation of the design patent involved on the grounds that the design patent involved was similar to the packaging bag (hereinafter referred to as the “comparative design”) that had been publicly sold notarized before the filing date. Upon trial, the CNIPA concluded that: the patent involved in the case was not significantly different from the comparative design and did not comply with the provisions of the paragraph 2 of Article 23 of the Patent Law. Therefore, the CNIPA declared all the patents involved in the case invalid. Neither Party filed an appeal.

 

TYPICALITY

  • The victory of this case is not only a victory of an invalid case, but also a victory of an intellectual property strategy.

 

  • As early as 2013, the printers and printer-related consumables produced by Brother Industries were counterfeited by some companies due to their high quality and good reputation in the market. Some companies even applied for patent of utility model and appearance design by imitating the products of Brother Industries.

 

  • In this regard, lawyers from Quan Xianzhi’s team formulated corresponding intellectual property protection strategies for Brother Industries. One of the measures is to use the means of notarized purchases to fix the pictures of the packaging bags and product structures of the label ribbon products produced and sold by the Brother Industries in the notarial certificate.

 

  • In this case, the picture of the packaging bag in the notary certificate was used as a comparative design. As the content of the notarization certificate proved that similar packaging bags had been publicly sold before the patent application involved, it succeeded in making the packaging bag similar to the packaging bag. All the patents involved were declared invalid, which is producingthe desired effect when the protection strategy was originally devised.

 

 

 

Case 9: Administrative litigation case for invalidation of trademark rights of “Xinhai Daohuaxiang”, “Wanfu Daohuaxiang” and “Shuangjin Daohuaxiang”

 

INTRODUCTION

  1. In this case, the trademarks “Xinhai Daohuaxiang”, “Wanfu Daohuaxiang” and “Shuangjin Daohuaxiang” were applied for registration in the Trademark Office in 2016. In March 2019, Hubei Daohuaxiang Liquor Industry Co., Ltd. (hereinafter referred to as “Daohuaxiang Company”) filed trademark invalidation requests for these trademarks with the CNIPA. However, after the review, the CNIPA decided to maintain the trademarks involved. Daohuaxiang Company was not satisfied with the decision and filed an administrative lawsuit with the Beijing Intellectual Property Court on January 8, 2020. The court of first instance overruled thelitigation request of the plaintiff Daohuaxiang Company. Daohuaxiang Company was not satisfied with the judgment of the first instance and appealed to the Beijing High People’s Court.

 

  1. Lawyers Qu Wei and Wang Mingkai of LongAn (Wuhan) Law Firm represented Daohuaxiang Company in the litigation. Adhering to the concept of continuously exploring the boundaries of legal protection, they carefully analyzed and studied, digged for corroborating evidence, and submitted a comprehensive set of litigation evidence to the court. After the hearing, the Beijing High People’s Court held that, although there are certain differences in functions,uses, etc. of the goods designated by the trademarks in dispute and the goods of liquor designated by the cited trademarks 1 and 2, they are all common foods or beverages. The use of the disputed trademarks on these goods will cause the relevant public to mistakenly believe that the goods have a specific connection with Daohuaxiang Company, which may damage the interests of Daohuaxiang Company. Therefore, the Beijing High People’s Court held that the application for registration of the disputed trademarks violated the provisions of Paragraph 3 of Article 13 of the Trademark Law (2013 version) and they should not be registered in accordance with the law.

 

TYPICALITY

  1. In the second instance of the administrative litigation for the invalidation of trademark rights, LongAn successfully helped Hubei Daohuaxiang Liquor Industry Co., Ltd. to obtain the protection of the trademark “Daohuaxiang” on liquor in Class 33.

 

  1. For the first time, the well-known trademarks were put under cross-class protection by the Beijing High People’s Court in this case, which maximized the commercial value of the client’s trademarks.

 

 

 

Case 10: Case of copyright ownership and infringement disputes between Beijing Shenma Haowan Brand Management Co., Ltd. and Beijing Qingqingshu Animation Technology Co., Ltd., etc.

 

INTRODUCTION

  1. Beijing Shenma Haowan Brand Management Co., Ltd. (hereinafter referred to as “Shenma Company”) filed a lawsuit with the Beijing Chaoyang People’s Court (“the Court of First Instance”), claiming that He Guiqing created nine works of art of “Sun Wukong, Tang Seng, Shuai Bajie, Zhu Bajie, Sha Seng, Erlangshen, Lao Banniang, Tian Bing, and Jirouwuji” (hereinafter referred to as “the works involved in the case”) and enjoyed the copyrights to them. Shenma Company has the exclusive right to adapt the works involved in the case and the right of information network dissemination with the authorization of He Guiqing. The plaintiff claimed that, the animation “Hen Xi You” produced by Beijing Qingqingshu Animation Technology Co., Ltd. (hereinafter referred to as “Qingqingshu Company”) and Beijing Qingcao Entertainment Culture Co., Ltd. (hereinafter referred to as “Qingcao Company”, collectively referred to as the “clients”) was adapted from the works involved in the case and was widely disseminated on the Internet, which infringed the right of adaptation and information network dissemination of Shenma Company. Therefore, Shenma Company required the clients to stop the infringement, to compensate for the losses, to apologize, and to eliminate the impact.

 

  1. Qingqingshu Company argued that the works involved in this case were job works, of which the company enjoyed the copyrights, so the use of these works by the company did not constitute infringement. Even if the copyrights were owned by He Guiqing, the company had the right to preferential use because the works involved in the case are job works, and the company does not constitute an infringement. Qingcao Company argued that it had legal authorization and did not carry out the infringement activities claimed by the plaintiff.

 

  1. The court of first instance held that Qingqingshu Company has the right to preferentially use the work created by He Guiqing within its business scope, which did not constitute an infringement. Qingcao Company has legal authorization and did not constitute an infringement. Therefore, the court of first instance overruledShenma Company’s request for litigation.

 

  1. Shenma Company was not satisfied with the judgment of the first instance and filed an appeal, requesting the court to rule that the copyrights of the works involved belonged to He Guiqing, and to rule that the clients should stop the infringement and should compensate for the loss of 3 million yuan in total. In order to prevent the client from losing the appeal interest, lawyers from LongAn Law Firm also filed an appeal on behalf of Qingqingshu Company. In the end, after trial, the Beijing Intellectual Property Court rejected the appeal and upheld the judgment of the first instance.

 

TYPICALITY

  1. The evidential materials in this case are complicated. It is very difficult to restore the truth of the facts due to the incomplete preservation of the company’s early data and other reasons. Lawyers from LongAn Law Firm determined that the works in this case were”job works”, and repeatedly collected evidence through various channels, and finally proved that the works involved in the case were job works with sufficient evidence. On September 24, 2020, after the case going through the first and second instance procedures, it was finally determined to reject Shenma’s litigation request, preventing the clients from paying huge financial compensations and clearing the obstacles for the distribution of the clients’ well-known works.

 

  1. This case is of typical significance for determining the standards for job works and the company’s rights to use the job works, especially the identification standards and usage rights for job works in the film, animation, and game industries. In addition, this case also has important reference value for combating speculative “rights protection”.