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LONGAN IP Newsletter No.10 2023

Contents

Long An News

Cindy Quan hired as an expert by Zhuanzhizhiku

Cindy Quan invited to attend the CIPAC and delivers a keynote speech

Long An Notable Cases

Long An represents the Jiuyueqiji Band and wins the lawsuit of the dispute over copyright infringement of the musical work Kangding Love Song

China IP News

CNIPA: Guidelines on the Same-Day Application Procedure for Trademark Registration

Trademark Office of CNIPA: Full Implementation of Online Applications for Trademark Opposition Cases

Long An Top 10 IP Cases in 2022

Dispute over the Refund of Fees Following the Invalidation of the Patent between Hengzhong Shang and Haoqian Plastic Products Factory in Liunan District, Liuzhou

The summary of the judgments of Intellectual Property Court of the SPC 2022

Selection of Patent Administrative Cases and Patent Civil Cases

Typical Cases

The case involving Guangzhou Kohus Cosmetics Co., Ltd. against the CNIPA and Have&Be Co., Ltd. for an administrative dispute related to the request for trademark invalidation


Long An News

 

Cindy Quan hired as an expert by Zhuanzhizhiku

 

Recently, China’s first data intellectual property research think tank, Zhuanzhizhiku, announced the list of its experts. Lawyer Quan, senior partner of Long An Law Firm, has been hired as an expert in this database.

 

https://mp.weixin.qq.com/s/cpPtWDwdkSvM4hYLjzEAmg

 

Cindy Quan invited to attend the CIPAC and delivers a keynote speech

 

On September 20, 2023, the 12th China Intellectual Property Annual Conference (CIPAC) was held in Jinan, Shandong. Cindy Quan, Senior Partner of Long An Law Firm, was invited to attend the event and delivered an insightful keynote speech.

 

At the event, Lawyer Quan gave a speech titled Current Situation and Trends of Patent Infringement Litigation in China. She elaborated on the interpretation of claims, standards for patent infringement, infringement liability, and patent infringement procedures, etc. Through case studies, she presented typical cases and summary of the judgments issued by the Supreme People’s Court, which allowed attendees to gain a more comprehensive grasp of the criteria used in different stages of patent infringement litigation.

 

https://mp.weixin.qq.com/s/ByH9n5w-OO_vwMJWA7m4nQ

 

Long An Notable Cases

Long An represents the Jiuyueqiji Band and wins the lawsuit of the dispute over copyright infringement of the musical work Kangding Love Song

 

Recently, Mr. Jianjun Fu and Mr. Mengjun Jiang of Long An Beijing represented the Jiuyueqiji Band (defendant) and won the lawsuit against Mr. Luobin Wang’s heir (plaintiff) in the appeal case over copyright infringement of the musical work Kangding Love Song and Dance of Youth. The court of second instance upheld the original judgment in accordance with the law, rejecting all of the plaintiff’s appeal requests, and effectively safeguarding the legitimate rights of our client.

 

At the second trial, our lawyers submitted a significant amount of publications as evidence about the irrelevance between the folk song involved and Luobin Wang’s authorship, which proved that Luobin Wang did not have copyright over the folk song involved. Additionally, our lawyers made a non-infringement defense against the types of copyright infringement rights claimed by the plaintiff. The court ultimately rejected all of the plaintiff’s claims.

 

Due to the antiquity of the folk song involved and the difficulty in collecting related publications, the determination of ownership is highly technical and complex. This case bypassed the issue of ownership determination and focused on the plaintiff’s claims of infringement and the evidence provided, resulting in rejecting all of the plaintiff’s claims.

 

https://mp.weixin.qq.com/s/MlNJCU0yxc6G51JwAA2o4g

 

China IP News

 

CNIPA: Guidelines on the Same-Day Application Procedure for Trademark Registration

 

On September 25, the CNIPA released the Guidelines on the Same-Day Application Procedure for Trademark Registration. The Guidelines aim to help entities understand the legal provisions and examination procedures related to trademark registration applications filed on the same day, and guide trademark applicants to submit their trademark registration applications in good faith.

 

The key points covered in these Guidelines are as follows:

  1. Proper understanding of same-day trademark registration applications
  2. Examination procedure for same-day trademark registration applications
  3. Exceptions to the examination procedure for same-day trademark registration applications

(1) Existence of a prior registered trademark

If a third party, other than the same-day applicants, has already obtained the registration of an identical trademark in the conflicting class of goods or services, and the prior registered trademark is not subject to cancellation, revocation, or invalidation proceedings at the time of the examination of the same-day trademark application, the same-day application may be partially or fully rejected based on the prior registered trademark.

(2) Violation of Article 19(4) of the Trademark Law

If a trademark agency applies for trademark registration in goods or services categories other than those it is authorized to provide services for, the application may be directly rejected in accordance with Article 19(4) of the Trademark Law.

(3) Violation of Article 4 of the Trademark Law

Same-day registration applications determined to be malicious applications not made for the purpose of use may be rejected in accordance with Article 4 of the Trademark Law.

(4) Other circumstances requiring direct rejection.

  1. Notes to the same-day registration application procedure for trademark registration.

 

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

 

Trademark Office of CNIPA: Full Implementation of Online Applications for Trademark Opposition Cases

 

To enhance the electronic processing of trademark opposition cases and promote the green development of the trademark industry, the CNIPA Trademark Office will fully implement online applications for trademark opposition cases by trademark agencies. Here are the key points of the announcement:

 

  1. Starting from December 1, 2023, for trademark agencies handling opposition cases, electronic applications should be submitted through the Trademark Online Service System, and paper documents will no longer be accepted as a general rule.

 

  1. The period from the issuance of this announcement to December 1 is considered a “transition period” to roll out online applications for trademark opposition cases by trademark agencies. During this transition period, trademark agencies are encouraged to make the necessary preparations, and agencies without Trademark Online Service System accounts are advised to apply for registration as soon as possible.

 

https://mp.weixin.qq.com/s/pT7Gmrar_RQyEWCAdN9Ncw

 

Long An Top 10 IP Cases in 2022

 

Dispute over the Refund of Fees Following the Invalidation of the Patent between Hengzhong Shang and Haoqian Plastic Products Factory in Liunan District, Liuzhou

 

Summary

The case involves a dispute over the refund of fees after the invalidation of a patent. On October 31, 2018, Hengzhong Shang filed a lawsuit against Haoqian Plastic Products Factory in Liunan District of Liuzhou (hereinafter referred to as “Haoqian Factory”) at the Liuzhou Intermediate People’s Court, claiming infringement of the patent involved. During the trial, with the court’s mediation, the parties voluntarily reached a settlement agreement. Hengzhong Shang granted Haoqian Factory a license to produce similar products using the patent involved from November 16, 2018 to December 31, 2020. Haoqian Factory agreed to pay a license fee of CNY 220,000 for the use of the patent (CNY 12,000 paid on November 16, 2018, and CNY 100,000 to be paid by August 10, 2019). Liuzhou Intermediate People’s Court confirmed the settlement agreement by issuing a mediation document on November 16, 2018. On the same day, Haoqian Factory made a bank transfer of CNY 120,000 as per the terms of the settlement agreement. However, Haoqian Factory failed to pay the remaining CNY 100,000 to Hengzhong Shang as agreed in the settlement agreement by August 10, 2019.

 

On October 30, 2018, a third party, Xi Tan, filed an invalidation request against the patent involved with the CNIPA. On April 3, 2019, the CNIPA issued Decision No. 39740 on the invalidation examination, invalidating the patent involved.

 

Then, Haoqian Factory filed a lawsuit against Hengzhong Shang at the Liuzhou Intermediate People’s Court, claiming the refund of the patent license fee of CNY 120,000 paid by Haoqian Factory and the corresponding interest. In the first-instance judgment, the Liuzhou Intermediate People’s Court decided that Hengzhong Shang should refund the patent license fee of CNY 120,000 to Haoqian Factory.

 

Hengzhong Shang appealed against the civil judgment ((2019) Gui 02 Zhi Min Chu No. 11) issued by the Liuzhou Intermediate People’s Court in Guangxi Zhuang Autonomous Region on April 18, 2021.

 

Finally, the SPC determined that Hengzhong Shang’s appeal was established and should be upheld. The first-instance court made an error in the application of the law, resulting in an incorrect judgment that needs to be corrected:

  1. The invalidation decision of the patent involved does not have retrospective effect on the fulfilled part of the settlement agreement.
  2. The request for refund filed by Haoqian Factory based on allegations of malicious conduct by the patentee causing losses or violating the principle of fairness is not upheld.

 

Typicality

This case, as a typical case, was selected as Patent Administrative Case No. 33 in the Summary of Judgments of the Intellectual Property Court of the SPC (2022) under the title “Determination of Unfairness in the Fulfilled Part of a Mediation Document after Patent Invalidation”. It states that, where the ratio of the patent license fees already paid before the patent invalidation, compared to the total license fees, is significantly higher than the ratio between the license period before the invalidation and the entire license period, if the party requests a refund based on the obvious violation of the principle of fairness, the People’s Court may uphold such request.

 

The Summary of Judgments of Intellectual Property Court of the SPC 2022

 

Selection of Patent Administrative Cases and Patent Civil Cases

 

In order to present the judicial philosophy, trial approach, and judgment methods of the Intellectual Property Court of the Supreme People’s Court in technology-related intellectual property and antitrust cases, the court has selected 61 typical cases from the 3,468 cases concluded in 2022, and extracted 75 key points of the judgments to create the Summary of Judgments of Intellectual Property Court of the Supreme People’s Court (2022). In the following, we present some of the classic cases from this Summary.

 

Patentability of business methods

Case No. (2021) SPC Zhi Xing Zhong 382

[Judgment Summary]

To determine whether a solution involving a business method constitutes a technical solution under the Patent Law, the claims shall be considered in their entirety, and comprehensive evaluation shall be made from such aspects as whether the solution is for a technical problem, whether the solution solves the problem by achieving specific technical effects, and whether the collection of means in the solution depends on natural laws or artificially set rules to obtain an effect to sufficiently solve the problem.

 

Identification of the manufacturer of the accused infringing product

Case No. (2021) SPC Zhi Min Zhong 1784, 1840

[Judgment Summary]

In a dispute over infringement on a patent, where the mark on the alleged infringing product contains true and specific information about the business operator (such as the name and address of an enterprise, sales hotline, and registered trademark), and the alleged infringer is unable to submit contrary evidence sufficient to deny the claim, it may be determined that the business operator to which the mark refers constitutes the manufacturer of the alleged infringing product.

 

https://mp.weixin.qq.com/s/9_Fr0GumAXUjEumVed_5yA

 

Typical Cases

 

The case involving Guangzhou Kohus Cosmetics Co., Ltd. against the CNIPA and Have&Be Co., Ltd. for an administrative dispute related to the request for trademark invalidation

 

Summary

Have&Be Co., Ltd. (referred to as Have&Be) filed an request with the CNIPA for invalidation of the trademark “V7 Toning Light” with the registration number 17769144 in Class 3 held by the plaintiff, Guangzhou Kohus Cosmetics Co., Ltd. (referred to as Kohus). Have&Be claimed prior use and a certain influence over the trademark “V7 Toning Light”. The CNIPA issued an invalidation decision (referred to as the accused decision), invalidating the trademark involved for all designated goods. Kohus disagreed with the accused decision and filed an administrative lawsuit with the Beijing Intellectual Property Court. After the trial, the Beijing Intellectual Property Court ruled to reject Kohus’s claims and upheld the accused decision (referred to as the original judgment). Kohus was not satisfied with the original judgment and appealed to the Beijing High People’s Court. In the second-instance trial, the court upheld the first-instance judgment, holding that the disputed trademark constitutes malicious registration of a trademark used by Have&Be with prior use and a certain influence.

 

Judgment Summary

The focus of the dispute: whether the registration of the accused trademark violated Article 32 of the Trademark Law 2013, which prohibits the unfair rush registration of trademarks that others have already used and have a certain influence. The first-instance court concluded that the evidence submitted by Have&Be, such as website descriptions and Weibo publicity, could prove that they had used the trademark “V7 Toning Light” on products like facial creams before the application date of the disputed trademark and had a certain influence. Given that “V7 Toning Light” was not a fixed term, the fact that Kohus’s application for the disputed trademark was identical to Have&Be’s prior trademark, which could not be considered coincidental. The products approved for use with the disputed trademark, such as cosmetics, were identical or similar to the facial creams Have&Be had previously used regarding their function, purpose, production sector, sales channels, and consumer base. Therefore, they were deemed to be identical or similar goods. In accordance with Article 69 of the Administrative Procedure Law of the PRC, the court rejected Kohus’s claims.

 

Kohus appealed the decision.

 

The second-instance court found that when determining whether the application and registration of the disputed trademark pertain to “the prohibition of unfair rush registration of trademarks that others have already used and have a certain influence”, the following conditions should be simultaneously met:

 

  1. The unregistered trademark had been used and had a certain influence before the application date of the disputed trademark.
  2. The disputed trademark and the prior unregistered trademark constituted identical or similar marks.
  3. The goods designated for use with the disputed trademark were identical or similar to the goods used with the prior unregistered trademark.
  4. The applicant for the disputed trademark knew or should have known that others had prior use of the trademark.

 

In this case, the brand had a certain recognition in South Korea before the application date of the disputed trademark. While there were only a few months between the application date of the disputed trademark and Have&Be’s launch and promotion of the “V7 Toning Light”, and much of the evidence provided by Have&Be regarding the use and promotion of the trademark “V7 Toning Light” was from abroad, it is common in the age of Internet for consumers of cosmetics to instantly learn about new foreign brands through overseas websites. They often purchase popular foreign brand products through new marketing models such as purchasing agents, overseas shopping, and duty-free shops during overseas travels. The Weibo posts, articles and comments related to “V7 Toning Light” facial creams and other products submitted by Have&Be also served as evidence that, before the application date of the disputed trademark, Chinese consumers had some awareness and recognition of Have&Be’s “V7 Toning Light” facial cream.

 

Considering the following circumstances:

  1. Both Kohus and Have&Be operate in the same industry.
  2. The “V7 Toning Light” trademark is a coined word, and Kohus applied to register the disputed trademark, which is identical to the trademark previously used by Have&Be, without providing a reasonable explanation.
  3. Kohus displayed a subjective malicious intent during the actual use of the disputed trademark, which can lead to the conclusion that, before the application date of the disputed trademark, Have&Be’s trademark “V7 Toning Light” had been used in the field of cosmetics in China and had a certain recognition.

 

The disputed trademark, which was approved for use with products like “cleansing cream, cosmetics, toothpaste”, overlaps significantly with the “cosmetic” products on which Have&Be’s prior unregistered trademark “V7 Toning Light” had been used in terms of production sector, sales channels, consumer base, etc. This constitutes the same or similar goods. Additionally, the disputed trademark is identical to Have&Be’s prior trademark “V7 Toning Light”.

 

As a result, the disputed trademark, as approved for use with all the designated goods, falls under the circumstances set out in the Trademark Law 2013, which prohibits the unfair rush registration of trademarks that others have already used and have a certain influence. Therefore, it should be invalidated.

https://mp.weixin.qq.com/s/UDlonY7mAlIPVP-hN5eVbg

 

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