EN

LONGAN IP Newsletter No. 2 2024

Contents

Long An News

  • Lawyer Jiali Xu, Founding Partner of Long An, Attends the First Intellectual Property Innovation Cooperation Forum
  • Long An lawyers author a bilingual article in Chinese and English titled “China: An Introduction to Banking & Finance (PRC Firm)”

Long An Notable Cases

  • Long An assists Puma SE in obtaining the first recognition of the famous status of the Puma series trademarks in a civil case
  • Long An assists Puma SE in winning a series of administrative lawsuits over trademark invalidation

China IP News

  • CNIPA to Regulate the Handling of Open Patent License Business
  • Six Authorities Introduce a Plan to Implement a Declaration Scheme for Patents Derived from Fiscally Funded Scientific Research Projects

Long An Typical Cases

  • Patent invalidation administrative litigation for AuthenMetric Co., Ltd. with Case Number (2021) Supreme People’s Court Intellectual Property Final No. 738

  • Long An News

 

Lawyer Jiali Xu, Founding Partner of Long An, Attends the First Intellectual Property Innovation Cooperation Forum

 

Recently, the first Intellectual Property Innovation Cooperation Forum 2024 was successfully held in Haikou, Hainan Province. Lawyer Jiali Xu, a founding partner of Long An, was invited to attend and delivered a speech titled “Intellectual Property Protection and Digital Security”.

 

https://mp.weixin.qq.com/s/RkxroRvK46AKlmtghrl-6w

 

Long An lawyers author a bilingual article in Chinese and English titled “China: An Introduction to Banking & Finance (PRC Firm)”

 

On January 18, 2024, the internationally renowned legal ranking agency, Chambers and Partners, released the “Greater China Region Guide 2024”. Long An lawyers, Xiuping Pan, Cindy Xianzhi Quan, Zuopeng Jin, Lei Zheng, and Jianjun Zhao, jointly authored a bilingual article in Chinese and English titled “China: An Introduction to Banking & Finance (PRC Firm)”. The publication highlighted Long An’s prominent position in the Asia Legal Business (ALB) 2024 China Regional Market Rankings, specifically in the Bohai Rim region.

 

https://www.longanlaw.com/news/25261.html/

 

Long An Notable Cases

 

Long An assists Puma SE in obtaining the first recognition of the famous status of the Puma series trademarks in a civil case

 

Recently, Cindy Xianzhi Quan, Jianjun Fu, Chengyan Alice Zhao, Jiafen Xie, and Kuiliang Chen handled a case concerning Puma SE (hereinafter referred to as “Puma”) against Shandong Puma Beer Co., Ltd., Qingzhou Huifeng Beer Raw Material Co., Ltd., for trademark infringement and unfair competition. The case resulted in a favorable outcome. Long An legal team assisted Puma SE in obtaining the first recognition of the famous status of the Puma series trademarks in a civil case.

 

In this case, the accused infringing parties possessed registered trademarks such as “BIAO MA”, “德彪马”, “DEBIAOMA. Therefore, it was necessary to examine Puma’s registered trademarks, including Trademark No. 76554 “”, Trademark No. G582886 “”, Trademark No. 619182 “彪馬” and Trademark No. 12929887 “彪马”, to determine their status as famous trademarks. The legal team meticulously reviewed evidence of the trademarks’ popularity, selected key evidence for submission as documentary evidence, and provided a thorough and professional argument during the trial. The court finally recognized that at the time of the accused infringement, the four trademarks of Puma were well-known to the relevant public in China, qualifying them as famous trademarks, and determined that the accused infringing marks constituted replication, imitation, and translation of the famous trademarks, constituting trademark infringement.

 

Regarding unfair competition, the court held that given Puma’s high level of recognition in its corporate name and the “彪马” trademark, the accused infringing parties intentionally used the identical “彪马” text in its registered corporate name, demonstrating a subjective intention to capitalize on Puma’s market reputation, constituting unfair competition.

 

Long An assisted Puma in obtaining a favorable outcome in this case. It marks the first recognition of Puma Trademark No. 12929887 “彪马”, as a famous trademark and the first time Trademark No. 76554 “”, Trademark No. G582886 “”, and Trademark No. 619182 “彪馬”, were recognized as famous trademarks in a civil case, effectively safeguarding Puma’s legitimate rights and interests.

 

https://mp.weixin.qq.com/s/aZOwHpg1x_1VBvrfkD7cww

 

Long An assists Puma SE in winning a series of administrative lawsuits over trademark invalidation

 

Recently, Lawyers of Long An, Cindy Xianzhi Quan, Chengyan Alice Zhao and Jianjun Fu, successfully assisted Puma SE (hereinafter referred to as “Puma”) in winning four cases of administrative disputes over trademark invalidation against Shandong Puma Beer Co., Ltd. The Beijing High People’s Court issued a verdict in favor of Puma, rejecting the appeal by the CNIPA and upholding the judgment of the Beijing Intellectual Property Court. The court ruled that the disputed trademarks “三骉马三”, “德骉马”, “BIAO MA”, and “德彪马” constituted plagiarism and imitation of Puma’s famous trademark “彪马”.

 

The difficulty in this series of cases lay in the differences between the disputed trademarks and Puma’s famous trademark “彪马”, especially with regard to “三骉马三” and “德骉马”. In response to this difficulty, the lawyers not only argued for the similarity in visual appearance but also emphasized the subjective malicious intent of the opposing party, i.e. the opposing party had applied for the registration of several trademarks containing the words “彪马”, “PUMA”, “BIAO MA”, and had also been involved in imitating other well-known brands. Additionally, the lawyers submitted civil judgments recognizing the infringement by the opposing party.

 

Finally, the court took into consideration the opposing party’s subjective malicious intent. It believed that the opposing party’s application and use of the trademarks, particularly highlighting the use of “彪马”, “PUMA” and “PUMA and device” in actual practice, indicated awareness of the famous status of Puma’s  trademark “彪马”. Therefore, the court concluded that the disputed trademarks imitated the famous trademark, leading to the invalidation of all the disputed trademarks.

 

Puma’s brands, “PUMA” and “彪马” have a wide audience in China, and the judgment not only affirms Puma’s long-term efforts in brand building but also holds significance for the brand’s future development. Moreover, it provides a framework for combating market activities that attach themselves to well-known brands and engage in “parasitic” unfair competition.

 

https://mp.weixin.qq.com/s/6v-BTwNusKFUuVrsRB0V0Q

 

China IP News

 

CNIPA to Regulate the Handling of Open Patent License Business

 

The China National Intellectual Property Administration (CNIPA) has recently released the Circular on the Handling of Open Patent License Business (the “Circular”).

 

According to the Circular, for the open patent license statements issued by patentees as per Paragraph 1, Article 51 of the Patent Law of the People’s Republic of China (Amended in 2020) since June 1, 2021, starting from January 20, 2024 (inclusive), the CNIPA will carry out examination pursuant to Articles 85 to 88 of the Implementing Rules of the Patent Law and Chapter 11, Part 5 of the Guidelines for Patent Examination according to the order of sequence. The Circular further clarifies the submission time, submission method, materials to be submitted, fees, and other matters. Where a patentee submits the request for filing of an open patent licensing contract pursuant to Paragraph 2, Article 51 of the Patent Law of the People’s Republic of China (Amended in 2020) and Article 87 of the Implementing Rules of the Patent Law, and has been approved for the filing, after the annual patent fee rates and the fee reduction policy take effect, the CNIPA will reduce the annual fees for the patents that have not expired starting from the contract filing date during the open licensing in accordance with Section 8, Chapter 11, Part 5 of the Guidelines for Patent Examination.

 

https://www.cnipa.gov.cn/art/2024/1/16/art_75_189691.html

Six Authorities Introduce a Plan to Implement a Declaration Scheme for Patents Derived from Fiscally Funded Scientific Research Projects

 

Recently, six authorities, led by the China National Intellectual Property Administration (CNIPA), have jointly issued the Implementation Plan for Establishing a Declaration Scheme for Patents Derived from Fiscally Funded Scientific Research Projects (the “Plan”).

 

The Plan defines the content of the declaration, stipulating that the entity or individual undertaking a fiscally funded scientific research project must, when applying for a patent derived from that project, make a declaration in the CNIPA’s patent service system regarding the project type, project name, and project reference number, among other information, on which the patent application relies. The declared information is intended solely as internal information for government management and will not be disclosed to the public for the time being. The Plan will be initially implemented for a portion of scientific research projects funded by central fiscal funds, including national major science and technology projects (covering Science and Technology Innovation 2030 — Major Projects, Major Follow-up Projects, Major Projects Towards 2035, etc.), key special projects of the National Key Research and Development Program, National Natural Science Foundation projects, and other national scientific research projects, as well as national scientific research projects related to defense and military development. The applicant shall comply with four management requirements, including the requirement that “An entity or individual applying for a patent derived from a fiscally funded scientific research project must make a declaration after the patent application is accepted”.

 

https://www.cnipa.gov.cn/art/2024/1/22/art_75_189925.html

 

Long An Typical Cases

 

Patent invalidation administrative litigation for AuthenMetric Co, Ltd. with Case Number (2021) Supreme People’s Court Intellectual Property Final No. 738

 

Summary

AuthenMetric Co, Ltd. holds a patent (No. 200480036270.2) titled ‘A Method for Obtaining Facial Images and a Facial Recognition Method and System’ (hereinafter referred to as ‘the patent in question’). The China National Intellectual Property Administration issued Decision No. 40533 regarding the invalidation request, declaring that the patent in question was invalid. Dissatisfied with this decision, AuthenMetric entrusted our firm to initiate administrative litigation.

 

Our lawyers conducted a detailed analysis of the invalidation decision, taking the invalidation decision’s finding that some of the amended claims could not be accepted as a breakthrough point. Ultimately, the Supreme People’s Court accepted our view and ruled to revoke the invalidation decision.

 

Typicality

  1. The rate of revocation of invalidation decisions in patent invalidation administrative litigation has been decreasing year by year.

 

  1. The case involved the issue of ‘further limiting’ claim amendments in the patent invalidation process. There were certain discrepancies in the understanding of the aforementioned amendment method among the parties, and the rules were relatively unclear.

 

  1. This case further clarified the specific rules regarding the ‘further limiting’ amendment method, providing significant reference value for subsequent similar cases.

 

  1. It established the judicial rule that ‘in patent right confirmation procedures, unamended claims are the natural basis for examination, and do not constitute an evaluation object for statutory or other restrictions on claim amendments. Therefore, in determining the basis for examination, it should be first clarified whether the relevant claims are original or newly formed through amendments. The examination of whether the claims have been amended should be substantial, based on whether the scope of protection of the claims has undergone substantial changes before and after the amendment.

 

For more details, please follow us on: