LONGAN LAW FIRMContents
Long An IP News
Long An was listed in the Top 10 IP Litigation (Patent Civil) Law Firms
Lawyers of Long An attended the SSQ ALB China Law Award Ceremony 2022
Long An 30th anniversary series of activities · the seminar on “Corporate Compliance and Social Governance in the Digital Economy Era” was successfully held
China IP News
CNIPA: Relevant data on patent license contracts filed in 2021 and the past five years
CNIPA: Understanding and Application of “Trademark Infringement Judgment Criteria”
CNIPA: New Features of Intellectual Property Protection at the Present Stage in China
Long An Case Study
Long An helped the client PUMA SE to win the administrative litigation case of trademark cancellation
Long An Top 10 IP Cases in 2021 (Cases 5-6)
Daohuaxiang Group vs. the CNIPA, a third-party liquor company in Inner Mongolia for an administrative dispute over the invalidation of trademark rights
A series of reversal cases over the patent invalidation on Chinese-style furniture
Long An IP News
Long An was listed in the Top 10 IP Litigation (Patent Civil) Law Firms
IP House and IP Lead announced the “2020-2021 Top 10 Excellent Intellectual Property Law Firm in China”. This selection is based on the litigation data of IP House, and selected the judgments and rulings of intellectual property cases that have been closed from January 1, 2020 to December 31, 2021 as the data basis. After accurate analysis, combined with the court level, case nature, winning rate, claim upholding rate, litigation status, maximum claim amount, client status, number of typical cases and other dimensions, the ranking is made by comprehensive evaluation of layer-by-layer data dimensions. Long An was listed in the top 10 IP litigation on patent civil law firms with its excellent professional ability, outstanding strength and strong team power.
https://mp.weixin.qq.com/s/_OG-6lL9L7KI2Ou94VpZKQ
Lawyers of Long An attended the SSQ ALB China Law Award Ceremony 2022
On July 21, 2022, the “SSQ ALB China Law Awards 2022” award ceremony was held by the well-known legal media “Asian Legal Business” (ALB) at the Park Hyatt Beijing. Long An Law Firm was nominated for “Employment Law Firm of the Year”.
At this award ceremony, Long An was honored to sponsor the Long An Award Chinese Private Owned Company In-House Team of the Year. A total of 11 legal departments and legal teams of private enterprises were shortlisted. The Legal Department of Xiaomi Corporation won the award. Mr. Dan Wang, the executive partner of Long An, presented the trophy to the team and gave congratulations.
https://mp.weixin.qq.com/s/Fc7UsuNE3nuiW086xKZrNw
Long An 30th anniversary series of activities · the seminar on “Corporate Compliance and Social Governance in the Digital Economy Era” was successfully held
On July 30, 2022, the seminar on “Corporate Compliance and Social Governance in the Digital Economy Era” co-sponsored by Beijing Long An Law Firm and Zhengyi Media was successfully held via a combination of online and offline methods. Over 10 experts, scholars and practitioners from Renmin University of China, Shandong University, Beijing Institute of Technology, China Cyberspace Research Institute, Chinese Academy of Social Sciences, Beijing Lawyers Association, Beijing Chaoyang Lawyers Association, Beijing First Intermediate People’s Court, China Europe (Alumni) Entrepreneurship Association, Seabees Can Do, etc., discussed over issues such as corporate compliance theory research, corporate compliance reform and third-party supervision, innovative business compliance, etc.
https://mp.weixin.qq.com/s/-IGRifs7Ph9j4J9AJDWYYg
China IP News
CNIPA: Relevant data on patent license contracts filed in 2021 and the past five years
On July 22, 2022, the CNIPA released the statistical table of patent licenses from January 1, 2017 to December 31, 2021. Among them, there are 13,495 contracts that clarified key information such as payment methods, transaction amounts, and commission rates, involving 40,212 patents, of which invention, utility model, and design account for 51.3%, 37.1%, and 11.6% respectively, which means that each patent license contract involves 3.0 patents.
https://mp.weixin.qq.com/s/ukvjUOr8Id3RvMwejs57XA
CNIPA: Understanding and Application of “Trademark Infringement Judgment Criteria”
In order to further promote the guidance on trademark enforcement business and timely answer the application issues in the implementation process in various regions, the CNIPA has written the “Understanding and Application of “Trademark Infringement Judgment Criteria” and released it on the official WeChat account of the CNIPA in batches.
For example:
Article 32: When examining and dealing with trademark infringement cases, legal prior rights shall be protected.
When the patent right of a design or the copyright of a work is used to defend the exclusive right to use a registered trademark of another person, in case of the filing date of the registered trademark is earlier than the filing date of the design patent or the date of completion of the creation of the copyright work, for which there is evidence to prove, the relevant trademark law enforcement department may examine and deal with the trademark infringement case.
Paragraph 1 of this article clarified the principle of protecting legal prior rights, that is, when the trademark enforcement department deals with a trademark infringement case, if the party presents a defense of the prior right, the law enforcement officers shall investigate and verify the specific content of the prior right, and make a judgment on whether the party’s behavior is a legitimate exercise of prior rights or an infringement of the exclusive right to use a registered trademark.
Paragraph 2 clarified that the trademark filing date is used as the benchmark for comparison.
Article 33: “Trademarks with certain influence” stipulated in Paragraph 3 of Article 59 of the Trademark Law refer to unregistered trademarks that have been previously used and known to the relevant public within a certain range in China.
In the determination of a trademark with certain influence, a comprehensive judgment shall be made taking into account factors such as the continuous use time, sales volume, turnover, advertising, publicity of the trademark, etc.
https://mp.weixin.qq.com/s/o9cdqVgSSSFoAYZF1TxmOA
CNIPA: New Features of Intellectual Property Protection at the Present Stage in China
On July 14, 2022, the CNIPA released the “China Patent Investigation Report 2021”, announcing the new features of intellectual property protection in China as follows:
- The proportion of patentees sufferingfrom patent infringement continued to decline.
In 2021, the proportion of patentees suffering from patent infringement was 7.2% in China, a decrease of 3.6 percentage points from the previous year and the lowest value since 2017. The problem of frequent patent infringement in China has been further improved.
- The proportion of high compensation in patent infringement cases in China has increased significantly.
In 2021, 16.3% of patent infringement litigation cases in China awarded compensation, litigation mediation or out-of-court settlements with an amount of more than CNY 1 million, 9.0 percentage points higher than the previous year, indicating that the cost of intellectual property infringement in China is increasing.
- The channels for corporatepatentees to protect their rights have become more diversified.
In 2021, the proportion of patentees who have suffered from patent infringement in China and chose to protect their rights by filing lawsuits in courts, administrative handling, and arbitration and mediation was 30.8%, 21.5% and 18.6% respectively, an increase of 4.4%, 2.8% and 2.2% over the previous year.
- Corporatepatentees have been more proactive in dealing with patent infringement.
In 2021, the proportion of enterprises taking rights protection measures after suffering from patent infringement in China was 76.4%, an increase of 2.5 percentage points from the previous year and an increase of 11.8 percentage points from 2017. From the perspective of enterprise scale, the proportions of large, medium-sized and small enterprises taking rights protection measures were 97.7%, 91.7% and 81.0% respectively, an increase of 0.5, 5.9 and 7.1 percentage points respectively over the previous year. The awareness of rights protection of small and medium-sized enterprises has been improved significantly.
https://mp.weixin.qq.com/s/qVPDyhrB8ylSAUiJG3YtPg
Long An Case Study
Judgment of “change of distinctiveness” in non-use cancellation actions regarding trademarks comprised of both words and graphics-the introduction to the administrative litigation case of trademark cancellation regarding the trademark “蜀豹 & Device”
[Introduction]
On July 14, 2017, Puma Se (hereinafter referred to as “Puma”) applied for non-use cancellation of the trademark “” No. 1660241 (hereinafter referred to as “the disputed trademark”) owned by Jiebao (International) Holdings Limited (hereinafter referred to as “Jiebao”) on the goods of clothing. Both the Trademark Office and the Trademark Review and Adjudication Division of the National Intellectual Property Administrative of China (hereinafter referred to as the “CNIPA”) made decisions to uphold the registration of the disputed mark. Puma refused to accept the decisions and filed an administrative litigation with the Beijing Intellectual Property Court. The Beijing Intellectual Property Court revoked the CNIPA decision and ordered the CNIPA to make a new decision. The Beijing High People’s Court of second instance upheld the decision of the first instance.
[Long An’s Comments]
The Chinese Trademark Law stipulates that the trademark registrant shall use the trademark as registered and shall not change it voluntarily. However, the judicial interpretations of the Supreme People’s Court also stipulate that, where there is a slight difference between the trademark in actual usage and the registered trademark, but the distinctiveness of such trademark has not been changed, such use may be deemed as use of the registered trademark.
Through the judgment of this case, the criterion of “change of distinctiveness” in non-use cancellation actions regarding trademarks comprised of both words and graphics (hereinafter referred as “combined marks”) can be analyzed and concluded as follows:
- In non-use cancellation actions regarding combined marks, the use of the word part is not always regarded as the use of the combined mark as a whole.
In this case, the court held that, though the words of “蜀豹” were used in actual use, its overall usage has changed the distinctiveness of the disputed trademark, so the evidence in the case cannot prove the use of the disputed trademark.
- When the deformed use of the graphic part in the combined trademark may mislead the relevant consumers as of the origins of goods, it can be determined that such usage has changed the distinctiveness of the mark.
In this case, PUMA SE claimed that when the deformed use of the graphic part of the combined mark may mislead the relevant consumers as of the origins of goods, it can be determined that the distinctiveness of the mark had been changed.
In the end, both the first and the second instance courts considered the difference in actual use as “change of distinctiveness” of the disputed trademark, and cancelled the disputed trademark.
- The consideration of bad faith in the case of non-use cancellation
In practice, from prior cases, it can be seen that stricter standards of usage have been adopted by the Supreme People’s Court when examining these non-use cancellation cases, considering the bad faith from the perspectives both of lack of true intention of use and of prevention of confusion among the relevant consumers. The factor of bad faith of the registrant of the disputed trademark in this case had also affected the rulings of the collegial panel of the courts to some extent, so that stricter standards were applied by both the first and the second instance courts.
Link: https://mp.weixin.qq.com/s/fwGV2mCRBU2v6Cn99Nw9jg
Long An Top 10 IP Cases in 2021 (Cases 5-6)
Case 5: Daohuaxiang Group vs. the CNIPA, a third-party liquor company in Inner Mongolia for an administrative dispute over the invalidation of trademark rights
In September 2013, a liquor company in Inner Mongolia applied to the former Trademark Office for a liquor trademark “关帝王” in class 33, which was approved for registration on February 7, 2016. In May 2017, it applied for a trademark “关帝王一壶老酒”, which was approved for registration on April 20, 2018. Daohuaxiang Group considered that the above two trademarks and its previously registered trademarks “关公” and “关公坊”, etc. which had been widely used on liquor products constituted similar trademarks on similar goods, which violated Article 30 of the 2013 Trademark Law. Then, it requested for administrative invalidation declaration of the trademarks with the CNIPA.
After examination, the CNIPA held that the use of the trademarks of both parties on their respective designated goods will not cause confusion among consumers, and does not constitute similar trademarks when used on the identical or similar goods under the 2013 Trademark Law. Therefore, the disputed trademarks were decided to be maintained.
Daohuaxiang Group refused to accept the ruling of the CNIPA and filed a lawsuit with the Beijing Intellectual Property Court. The Beijing Intellectual Property Court made a first-instance judgment: 1. Revoked the sued decision of CNIPA; 2. Ordered the CNIPA to make a new decision. The CNIPA refused to accept the first-instance judgment and appealed to the Beijing High People’s Court. The Beijing High People’s Court decided that the appeal was dismissed and the first instance judgment was upheld.
Case 6: A series of reversal cases over the patent invalidation on Chinese-style furniture
Jinruyi Furniture Co., Ltd. is a well-known enterprise in the Shandong furniture industry. Its new Chinese-style furniture has been widely recognized in the market, but in 2019, it was alleged to infringe upon 13 design patents by its counterparts in Tianjin, and asked to compensate CNY 2 million. After receiving the petition, a local law firm was entrusted to respond and file the patent invalidation. However, in mid-2020, the CNIPA made the decision to maintain the validity of all the above 13 patents. Under such circumstance, the plaintiff greatly increased the amount of the subject matter of the lawsuit.
Afterwards, Long An represented the client to file the second patent invalidation. Finally, all 13 involved patents were invalidated, which completely solves the infringement lawsuit and maintain the legitimate rights and interests of the client.
Link: https://mp.weixin.qq.com/s/e0bjHt2fdMLlhpLtNDiEqw
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