LONGAN LAW FIRMContents
Long An News
Long An and LexisNexis jointly launched the Long An Lectures Online Courses Ⅳ, Ⅴ and Ⅵ
Lawyer Cindy Quan held an online lecture that was well received
Lawyer Alice Zhao was interviewed by China Intellectual Property News
Long An Notable Cases
Long An assisted a client in winning the Haagen-Dazs Anti-Unfair Competition Case
China IP News
Guidelines of the CNIPA on the Application for Registration and Use of Class 35 Service Trademarks
Announcement of the CNIPA on the Interim Measures for Handling Related Issues after China’s Accession to the Hague Agreement
Announcement of the CNIPA on the Interim Measures for Handling Related Examinations after the Implementation of the Amended Patent Law
Long An Comments
Haishan ZHANG v. M&G Chenguang Stationery Co., Ltd., Nanjing Baishunfa Department Store for a Copyright Infringement Dispute
Long An News
Long An and LexisNexis jointly launched the Long An Lectures Online Courses Ⅳ, Ⅴ and Ⅵ
Recently, Long An Law Firm and LexisNexis jointly launched the Long An Lectures Online Courses Ⅳ, Ⅴ and Ⅵ, which included a total of 29 lectures on corporate operations and legal practice, corporate compliance management, legal skills and legal interpretation, and received a lot of attention and unanimous praise from all walks of life. Click on the link to watch online.
https://hk.lexiscn.com/hottopic/ln_cm/cn/ln_cm275.html
Lawyer Cindy Quan held an online lecture that was well received
Recently, Longan Law Firm and Zhongguancun Science Park Self-Owned Brand Association jointly launched the 100th Long An Lecture on the theme of “Intellectual Property Protection and Risk Prevention of Computer Software”. Lawyer Cindy Quan, a senior partner of Long An and vice chair of the Association, used numerous practical cases to give a professional and in-depth lecture on how to protect the computer software and prevent the possible risks from four aspects as copyright, patent, trade secret, and trademark, as well as the legal risks and prevention of open-source software that many companies are concerned about.
https://mp.weixin.qq.com/s/rrPN-mOndxsQt7Op6hRh9w
Lawyer Alice Zhao was interviewed by China Intellectual Property News
Recently, Lawyer Alice Zhao from Long An received an interview by China Intellectual Property News. During the interview, Lawyer Zhao answered the questions about trademark registration, use and protection in the field of Metaverse, a current hot topic. Lawyer Zhao pointed out: “Currently, Metaverse is in its infancy. Compared with directly providing commodity sales and services in the virtual world, more market entities now prefer to use new technologies to promote business in the real world. Therefore, if enterprises offer to publicize and promote through Metaverse, it’s better to consider the trademark layout around the Metaverse. At present, foreign brands entering the Metaverse field mainly focus on classes 9, 35, 41, and 42, and apply for trademarks on products and services related to the data, software, and computer industries, which is very important for themselves and worthy of reference for domestic enterprises.”
https://mp.weixin.qq.com/s/RMYKw2YyF7ApFE_Km31Vgw
Long An Notable Cases
Long An assisted a client in winning the Haagen-Dazs Anti-Unfair Competition Case
Recently, Long An IP team helped the client win the Haagen-Dazs anti-unfair competition case. The Shanghai Intellectual Property Court has supported our claims that the defendants’ use of Haagen-Dazs ice cream mooncake brochures without authorization to make gift coupons and carry out the tie-in sale of its own products constitutes unfair competition and infringes the legitimate rights and interests of General Mills. The defendants should cease the infringement, publish a statement to eliminate the impact and compensate for economic losses.
In this case, General Mills was responsible for the operation of the Haagen-Dazs brand in China. Since 1997, it has launched ice cream mooncakes and designed gift coupons for a great deal of publicity. In 2019, General Mills found that the gift coupons sold by the defendants through their websites and WeChat official accounts were consistent with the content and design of its ice cream mooncake gift coupons, but among the many convertible products, only one product was Haagen-Dazs ice cream mooncakes and others had nothing to do with Haagen-Dazs. In addition, the two defendants reminded consumers to choose their “Shounong” and “COFCO” products during the process and give up the Haagen-Dazs ice cream mooncake products. General Mills believed that the behavior of the two defendants was suspected of violating the relevant provisions of Article 6 (4) of the Anti-Unfair Competition Law (prc), which constitutes an unfair competition act of counterfeiting and confusion. Therefore, it filed a lawsuit to the court, requesting the two defendants to cease the infringement, eliminate the impact, and compensate for losses and reasonable expenses.
The second instance court (Shanghai Intellectual Property Court) held that the series of behaviors of the two defendants was holistic, and the subjective maliciousness of clinging to the Haagen-Dazs brand name was obvious enough to make the relevant public mistakenly believe that the accused gift coupons are issued by the operator of Haagen-Dazs or there is an authorized agent or other cooperative relationship between them, which damages the competitive advantages and interests of General Mills. Over time, the Haagen-Dazs brand reputation will be diluted and weakened. It can be seen that their behaviors are obviously unfair and fall into other confusing behaviors stipulated in Article 6 (4) of the Anti-Unfair Competition Law, which constitutes unfair competition.
https://mp.weixin.qq.com/s/7m0dDDUZwYmVI9hzBRGihQ
China IP News
Guidelines of the CNIPA on the Application for Registration and Use of Class 35 Service Trademarks
The CNIPA pointed out that the main purpose of Class 35 services is to assist others in their business operations or management, to assist others in the management of business activities or functions of industrial and commercial enterprises, and to provide others with services on advertisements to the public through various means. The Class 35 services are characterized by the provision of services “for others”, rather than engaging in the relevant conduct for the right holder’s own business needs. A general goods producer, which only manufactures or sells its goods as its business scope and does not engage in providing the above-mentioned services to other market entities or individuals, is not required to apply for a registered trademark on the relevant services in Class 35. When using its registered trademarks, the right holder should correctly understand the connotation and extension of the relevant service items, and reasonably apply for trademark registration.
https://mp.weixin.qq.com/s/g4YxDmLgP15IjpETDyoQ-Q
Announcement of the CNIPA on the Interim Measures for Handling Related Issues after China’s Accession to the Hague Agreement
In order to guarantee smooth implementation of the Hague Agreement Concerning the International Registration of Industrial Designs (1999) (hereinafter referred to as “the Hague Agreement”) in China and to fulfill the urge needs of innovative entities at home and abroad for examination, CNIPA hereby releases the amended Interim Measures for Handling Relevant Issues after China’s Accession to the Hague Agreement, which is to be enacted as of January 11, 2023.
Article 1 As of May 5, 2022, Chinese entities or individuals may, pursuant to the provision of paragraph 2, Article 19 of the Chinese Patent Law, file an application for international registration of industrial design under the Hague Agreement Concerning the International Registration of Industrial Designs (1999).
The applicant may directly file an application for international registration of industrial design with the International Bureau of World Intellectual Property Organization (hereinafter referred to as “the International Bureau”), or may file an application for international registration of industrial design in English through China National Intellectual Property Administration (CNIPA).
Where an application for international registration of industrial design is filed through the CNIPA, the relevant documents shall be submitted in paper or electronic form in conformity with the Hague Agreement and the related regulations of the CNIPA.
The relevant fees prescribed by the Hague Agreement shall be paid by the applicant to the International Bureau directly.
Article 2 An application for international registration of industrial design designating China (hereinafter referred to as “international application for design”) with an international registration date determined under the Hague Agreement shall be deemed as an application for design filed with the CNIPA. The international registration date shall be deemed as the filing date under Article 28 of the Chinese Patent Law.
Article 3 For an international application for design, the CNIPA shall proceed in accordance with the Chinese Patent Law, the Implementing Regulations of the Patent Law, the Guidelines for Patent Examination, and these Measures.
As of the enacting date of these Measures, the CNIPA assigns a national application number to an international application for design and examines the international application for design, and notifies the International Bureau of the examination result.
Where an international application for design is examined to have no grounds for rejection, the CNIPA shall make a decision to protect the corresponding design and notify the International Bureau.
Where an international application for design is found in examination to not conform to the Chinese Patent Law and the Implementing Regulations of the Patent Law, the CNIPA shall notify the International Bureau that the application is rejected.
Article 4 Where an international application for design published by the International Bureau includes a description of design essentials, it shall be deemed that a brief description has been submitted under relevant regulations.
Article 5 For an international application for design, the applicant shall respond to office opinions in Chinese. Amendments to the application documents shall be made in English.
Article 6 For an international application for design, the CNIPA does not charge the priority claim fee.
Where an applicant claims the right of priority but does not submit a copy of the prior application upon filing the international application for design, the applicant shall submit a copy of application documents of a prior application to the CNIPA within three (3) months from the international publication date of the application.
Where the applicant recorded in the copy of application documents of the prior application is inconsistent with the applicant of the later application, the applicant shall submit the related supporting documents to the CNIPA within three months from the international publication date of the application.
Where the applicant fails to submit the copy of application documents of the prior application or the related supporting documents upon expiration of the afore-prescribed period, it shall be deemed that no right of priority is claimed. Where an international application for design is deemed to claim no right of priority, Article 6 of the Implementing Regulations of the Patent Law shall not apply.
Article 7 When an applicant of an international application for design responds to a Notification of Rejection, petitions for reexamination, or moves to other patent-relating issues, unless otherwise prescribed by the Implementing Regulations of the Patent Law, the provision of paragraph 1, Article 18 of the Chinese Patent Law shall apply.
Article 8 An applicant of an international application for design may, within two months from the international publication date of the application, file a divisional application with the CNIPA.
Where the applicant files the divisional application according to office opinions, the divisional application shall be filed within two months from the publication date of the original application in China. Where the above period expires, or the original application has been rejected, or the original application is deemed withdrawn and the rights has not been restored, generally no divisional application may be filed.
Article 9 Where an applicant considers that a design of an international application for design falls in the circumstances prescribed by paragraph 2 or 3 of Article 24 of the Chinese Patent Law, the applicant shall make a declaration upon filing the international application for design and shall submit the related supporting documents to the CNIPA within two months from the international publication date, accompanied by relevant explanation. Where such a declaration or supporting documents are not submitted, the provisions of Article 24 of the Chinese Patent Law shall not apply to the application.
Article 10 Where the applicant pays the relevant fees for an international application for design, the payment shall be made fully under the national application number or the international application number in accordance with the provisions of the International Bureau and the CNIPA. The rate of the individual designation fee for an international application for design is subject to the Announcement of the CNIPA on Relevant Issues Concerning Annual Fee of Design Patent and Individual Designation Fee.
Article 11 Where an applicant or patentee of an international application for design requests making changes in bibliographic data, in addition to the procedures at the International Bureau, supporting documents shall be submitted to the CNIPA. Where the supporting documents are in a foreign language, a Chinese translation of the bibliographic data shall be submitted. Where the supporting documents are absent or non-compliant, the CNIPA notifies the International Bureau that the changes in bibliographic data have no effect in China.
Article 12 After an international application for design is announced to be granted, the applicant of the international application for design may request the CNIPA for a copy of patent registration of the international application for design as a certificate of protection in China.
Article 13 During the examination for invalidation declaration of an international application for design, a patentee without residence in Chinese mainland may deliver relevant documents by mail, fax, e-mail, announcement, and the like. Where the documents are delivered by announcement, it is deemed that the documents have been delivered after a month from the date of announcement.
Article 14 Where an applicant is unsatisfied with a decision made by the CNIPA under these Measures, it may petition for administrative reconsideration or reexamination or initiate administrative proceedings under the law.
Article 15 Where an applicant of an international application for design handles other legal procedures and issues not mentioned in these Measures, it shall file a request under the provisions of the Hague Agreement, the Chinese Patent Law and the Implementing Regulations of the Patent Law, and the Guidelines for Patent Examination.
Article 16 These Measures shall come into force on January 11, 2023. Meanwhile, the Interim Measures for Handling Relevant Issues after China’s Accession to the Hague Agreement enacted on May 5, 2022 (CNIPA Announcement No. 481) are abolished as of the same date.
https://mp.weixin.qq.com/s/WeAnfRhNgdLEJIUfN-inJQ
Announcement of the CNIPA on the Interim Measures for Handling Related Examinations after the Implementation of the Amended Patent Law
In order to ensure the implementation of the amended Patent Law and to respond to the urgent examination requirements of innovators for partial designs and domestic priority rights of designs, the CNIPA has issued the Interim Measures for Handling Related Examinations after the Implementation of the Amended Patent Law, which came into effect on January 11, 2023.
Article 1 From June 1, 2021 (inclusive here and below), a patent applicant may submit a patent application for partial design of a product for protection in paper or electronic form in accordance with Paragraph 4 of Article 2 of the Patent Law.
When applying for a patent for a partial design, a view of the overall product shall be submitted, and the content to be protected shall be indicated by a combination of dotted and solid lines or other means. If the part to be protected includes a three-dimensional shape, the submitted view shall include a 3D view that can clearly show the part. If the content to be protected is not indicated by a combination of dotted and solid lines in the view of the overall product, the part to be protected should be stated in the brief description.
Article 2 From the date of implementation of these Measures, for patent applications whose application date is after June 1, 2021, if the applicant believes that there is any circumstance specified in Item 1 of Article 24 of the Patent Law, the applicant may submit a request in paper or electronic form. The CNIPA will examine the above-mentioned applications after the implementation of the amended Implementing Regulations of the Patent Law.
Article 3 For an application for a design patent whose application date is after June 1, 2021, the applicant may, in accordance with Paragraph 2 of Article 29 of the Patent Law, submit a written declaration requesting the domestic priority of the design patent.
Where the applicant of a patent for design claims the right of domestic priority, and the prior application is one for a patent for design, it may file an application for a patent for design on the same subject; if the prior application is one for a patent for invention or utility model, it may file an application for a patent for design with the same subject matter for the design shown in the drawings.
Where the applicant of a patent for design claims the right of domestic priority, the prior application shall be deemed to be withdrawn from the date on which the later application is filed, unless the applicant of a patent for design claims that the application for a patent for invention or utility model is based on the right of domestic priority.
Article 4 For a patent application with an application date after June 1, 2021, the applicant may submit a copy of the patent application documents filed for the first time in accordance with Article 30 of the Patent Law.
Article 5 For invention patents granted by announcement from June 1, 2021, the patentee may, in accordance with paragraph 2 of Article 42 of the Patent Law [patent term adjustment], file a request for compensation for the duration of the patent right in paper form within three months from the date of the announcement of the patent grant, and pay the relevant fees in accordance with the payment notice issued by the CNIPA. The CNIPA will review the above request after the amended Implementing Regulations of the Patent Law come into force.
Article 6 A patentee may, as of June 1, 2021, in accordance with Article 42, Paragraph 3, within three months after a request for marketing approval of a new drug is approved, file a request for compensation for the duration of the patent right in paper form, and then pay the relevant fees according to the payment notice issued by the CNIPA. The CNIPA will review the aforesaid request after the amended Implementing Regulations of the Patent Law come into force.
Article 7 From the date of implementation of these Measures, a patentee may, in accordance with Article 50, Paragraph 1 of the Patent Law, voluntarily declare in paper or electronic form the implementation of an open license for its patent. The CNIPA will review the above declaration submitted after June 1, 2021 after the amended Implementing Regulations of the Patent Law come into force.
Article 8 From the date of implementation of these Measures, the accused infringer may request the CNIPA to issue a patent right evaluation report in paper or electronic form in accordance with Article 66 of the Patent Law.
Article 9 From June 1, 2021, the CNIPA shall examine the patent applications in the procedures of preliminary examination, substantial examination and reexamination in accordance with Paragraph 1 of Article 20 and Item (5) of Paragraph 1 of Article 25 of the Patent Law.
Article 10 If the applicant is not satisfied with the relevant decisions made by the CNIPA in accordance with these Measures, the applicant may file an application for administrative reconsideration, a request for reexamination, or file an administrative lawsuit according to law.
Article 11 The term of protection for design patents with an application date before May 31, 2021 (inclusive) is ten years from the application date.
Article 12 These Measures shall come into force on January 11, 2023. The Interim Measures for Handling Related Examinations after the Implementation of the Amended Patent Law (CNIPA Announcement No. 423) that came into effect on June 1, 2021 will be abolished simultaneously.
https://mp.weixin.qq.com/s/9WFYksF4OQOb8wpT-Eudsg
Long An Comments
Haishan ZHANG v. M&G Chenguang Stationery Co., Ltd., Nanjing Baishunfa Department Store for a Copyright Infringement Dispute
In this case, Haishan Zhang filed a lawsuit to the court, claiming that Chenguang Company infringed his copyright by using the copyrighted Chinese character font in its registered trademarks and product packaging without authorization, and requested the defendants Chenguang Company and Baishunfa Store to immediately cease using, selling and destroy all product packaging, labels, promotional materials, etc. that contain any Chinese characters in the font involved, the defendant Chenguang Company to compensate economic losses and other reasonable expenses of CNY 1.5 million.
The court held that the original characters in the font involved fall into fine art works protected by the Copyright Law, and the behaviors of Chenguang Company using the original characters in the font involved constituted infringement, and ordered it compensate the plaintiff for economic losses of CNY 280,000. Zhang dissatisfied with the result and appealed to the Nanjing Intermediate People’s Court, the second instance affirmed the original judgment.
[Focus of the dispute]
- Whether the font involved constitutes a work in the sense of the Copyright Law, and whether the behavior of Chenguang Company constitutes infringement?
The court of second instance held that the Chinese character fonts involved fall into the fine art works protected by the Copyright Law, and Chenguang Company used the Chinese character fonts to which Zhang had copyright in the registered trademarks and product packaging without authorization, which constituted copyright infringement.
- Should Chenguang Company be responsible for civil liabilities?
When determining the liability for compensation, the courts of the first instance and the second instance referred to the usage and market operation conditions of Chenguang Company. If Chenguang Company is prohibited from continuing to use the font involved, it will have a certain negative impact on the marketing of related products involved for Chenguang Company. From the perspective of the scope of compensation, the amount of compensation takes into account and includes the operating income of Chenguang Company, which exceeds the price and income of Zhang selling a font library, and is sufficient to make up for Zhang’s loss of profits. Therefore, the court of second instance held that it was unnecessary and unfair to prohibit Chenguang Company from continuing to use the Chinese characters font involved. And the claim to cease the infringement is not be supported.
https://mp.weixin.qq.com/s/V1yYRkuVRKjgePN6e-8xqw
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