LONGAN IP Newsletter No.11 2022

Contents

Long An News

Long An won the 2022 ALB China Regional Market Law Awards: multiple nominations in South China & Central China

Cindy Quan was recognized as one of the Top 15 Female Lawyers in China by ALB

Long An IP achievement in 2021

Long An Notable Cases

Long An assisted the client in recognizing the well-known status of the trademark “PUMA & Device” and realizing successful reverse in the second instance

China IP News

Full support for CNY 50 million compensation! The trademark infringement case with the largest amount for a foreign-funded enterprise in China was closed

The CNIPA issued the Guidelines for Estimation of Royalties for Patent Open License

Long An Comments

How to identify technical secrets in disputes over infringement of trade secrets in judicial practice?

Long An News

Long An won the 2022 ALB China Regional Market Law Awards: multiple nominations in South China & Central China

On October 24, 2022, the well-known legal media Asian Legal Business (ALB) officially announced the shortlist of ALB China Regional Law Awards 2022: South China & Central China”. Long An won the following three major nominations with its outstanding professional ability and excellent comprehensive strength:

https://mp.weixin.qq.com/s/Hn33jipMY7CvZEm3a3U19g

Long An

https://mp.weixin.qq.com/s/2P52dWFyUb1Jcs7ExZUQ3A

Ms. Cindy Quan was recognized as one of the Top 15 Female Lawyers in China by ALB

On October 20, 2022, Asia Legal Business announced the list of ALB China Top 15 Female Lawyers 2022. Ms. Cindy Quan, senior partner of Long An Law Firm, was on the list.

The award received by Ms. Quan reflects her accomplishment and the recognition from ALB. In the future, Ms. Quan will continue to shoulder the responsibility and mission of a lawyer, and contribute wisdom and power to the development of the industry.

https://mp.weixin.qq.com/s/YQ8nTkO1ZYHSzAseZkLcSg

Long An IP achievement in 2021

Long An Notable Cases

Long An assisted the client in recognizing the well-known status of the trademark “PUMA & Device” and realizing successful reverse in the second instance

Recently, Long An lawyers, Ms. Cindy Quan, Mr. Jianjun Fu, and Ms. Alice Chengyan Zhao won the case concerning the administrative dispute over the invalidation of PUMA SE’s trademark  with No. 19051535 in Class 43 – Services for providing food and drink; temporary accommodation.

The Beijing High People’s Court supports our claim that although the “fast food restaurant and bar services” designated by the trademark  in dispute are not similar to the “sports clothes and sports shoes” used in the cited trademark, due to the wide range of consumers, sales channels and use scenarios of “sports clothes and sports shoes” approved by  , there is a certain degree of overlap among the relevant public. In the case that the cited trademark  has a very high reputation, the coexistence of the two in the market will easily make consumers think that  and   are related, thus misleading the public and damaging the legitimate interests of PUMA SE.

Finally, the court of second instance overturned the original judgment, recognized the well-known status of  and granted it cross-class protection.

https://mp.weixin.qq.com/s/8exlT3Y1bKfpqs3P9r0MlA

China IP News

Full support for CNY 50 million compensation! The trademark infringement case with the largest amount for a foreign-funded enterprise in China was closed

Plaintiff: aumplus Besitz-und Entwicklungs-GmbH&Co.KG, raumplus GmbH

Defendant: Delu Furniture (Shanghai) Co., Ltd., Delu Furniture (Nantong) Co., Ltd., and Peijun ZHU

[Summary]

The plaintiff found that the defendant continued to use its trademark & trade name after their Sino-foreign joint venture relationship was terminated, and filed a lawsuit with the court of first instance. The court of first instance asked the defendant to cease the trademark infringement and unfair competition; change the trade name, and the changed company name must not contain the Chinese word “德禄”; transfer the domain name of “德禄.com” to Delu (Taicang) Furniture Technology Co., Ltd.; publish a statement on the national media to eliminate the impact; and compensate for economic losses and reasonable expenses for rights protection totaling CNY 50 million. The defendant refused to accept and appealed to the court of second instance. The court of second instance rejected the defendant’s claim and upheld the judgment of the first instance.

[Typicality]

1. The second-instance judgment not only affirms the facts and applicable legal provisions of the first-instance judgment, but also provides a legal basis for the issue of whether the legal representative or actual controller should bear the joint liability of the company.
2. The major breakthrough in this case is the successful use of the evidence production order system and the evidence impairment system to make the determination of damages more reasonable and practical.
3. It is a typical case of an internationally renowned top brand encountering intellectual property infringement in the process of Sino-foreign cooperation.

https://mp.weixin.qq.com/s/vuu_a9TfXscF5JD3gr8_jQ

The CNIPA issued the Guidelines for Estimation of Royalties for Patent Open License

The CNIPA issued the Guidelines for Estimation of Royalties for Patent Open License. The Guidelines use the general principles of patent license and common methods of patent valuation to provide simple, easy-to-understand and operational estimation methods and operating steps.

1. Determine the appropriateness of patent open licenses
2. Choose an estimation method

If the patent has been exploited, it can be estimated based on the revenues royalties the exploitation of the patent

If the patented technology has not been exploited, it can be estimated based on the statistics on the royalties for patent licenses in the industry

3. Determine the calculation base
4. Set the adjustment factor
5. Estimate royalties and determine the payment method

https://mp.weixin.qq.com/s/4VHzn2IYeqtGzXV2JmVT_g

Long An Comments

How to identify technical secrets in disputes over infringement of trade secrets in judicial practice?

The Long An IP team analyzed the scope of rights and constituent elements of technical secrets through representative cases such as Youkai (Shanghai) Machinery Co., Ltd. v. Mr. Cao regarding infringement of technical secrets.

The constituent elements of a trade secret include not being known to the public, value, practicality and reasonable confidentiality measures. Through the analysis and comparison of previous cases, it can be concluded that the key points of the review of constituent elements of technical secrets are “secrecy, which means not being known to the public” and confidentiality measures.

In judicial practice, it is more common to review “not being known to the public” and “whether the confidentiality measures are reasonable” simultaneously. As long as one of the two elements cannot be met, the technical secret cannot be determined.

However, the author believes that too much emphasis on the simultaneity of reviewing two elements may also lead to an adverse consequence: that is, it ignores the core status of the secrecy in the trade secret constituent elements, and one-sidedly emphasizes the independent status of the secrecy and confidentiality measures elements. As a result, the inclusive and dependent relationship between the two is separated.

In addition, when measuring the secrecy of technical information, the following points should also be considered:

First, the criterion for measuring the secrecy is whether the technology is known to the public.

Second, when judging whether certain information has entered the public domain, it should not require such information to be completely secret from the outside world, the primary criterion used should be the possibility or difficulty for the public to obtain the information legally.

Third, the secrecy of technical information is characterized by relativity.

https://mp.weixin.qq.com/s/d9BpeKK_WSCU7gQub06V6A

For more details, please follow us on:

声明：Newsletter版权属隆安律师事务所所有，接受方不得将本Newsletter作为参考之外的用途。