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International IP/IT Review November 2020

Date and time :2020-12-10
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Kuaishou Music was Sued by China Audio-Video Copyright Association Since It Committed Numerous Infringement Acts

On November 8, the China Audio-Video Copyright Collective Management Association (“Audio-Video Association”) stated that short videos shall be granted authorization before posting. The Association is dissatisfied with the extensive use of unauthorized music works on short video platforms and such behaviour neglects the rights of music copyright owners. The case that the Association suing Kuaishou was filed at the Beijing Internet Court on October 12. The Association requested Kuaishou to stop infringing and claimed compensation for a total of RMB 130,000. The case was heard on November 9.

The Association has set up a team to conduct a large number of investigations and collect evidence. It also negotiated with the major short video platforms on music copyright issues. At present, the short video platforms such as Tik Tok, Caishi and other short video platforms, gave positive feedback in order to solve the problem. They have reached a copyright cooperation plan with the Association, which set an example for the short video industry. However, there are still some platforms like Kuaishou trying to walk away from the responsibility. The number of existing infringement acts remains a high volume.

Source: China Beijing International Copyright Intellectual Property 

Issue Date: November 9, 2020


ZLWD Commentary:

The short video platform has a "music - video - volume - revenue" chain. The platforms have multiple ways to use musics in the videos. The sources of music on the platform are mainly provided by the platform its own or uploaded by users, which involve the right of reproduction of music works and the right to communicate works to the public over information networks.

Music brings huge benefits to short video platforms, but short video platforms such as Kuaishou ignores the rights of musicians and uses thrie works, which violates the legal rights of them. It is rather difficult for musicians to obtain evidence, statistics and claim for compensation. Also, the commerciality is quite strong and payment standards in protecting copyrights remains empty. The copyright protection of short video platforms needs to be solved urgently.


The Supreme Court: Shortening the Duration of Case for Copyright Work and Relevant Rights

On November 16, the Supreme Court issued opinions on strengthening the protection of copyright and relevant rights, and shortening the duration of cases involving copyright and relevant rights. Improving the rules of evidence in intellectual property litigation and  allowing the parties to preserve, fix and submit evidence through blockchain can effectively solve the right holders’ difficulty in providing evidence.

The opinions require that the courts should improve the quality and effectiveness of the trial, promote the pilot work of case simplification and diversion, and strive to shorten the duration of certain types of cases involving copyright and relevant rights. It is also important to support the preservation of behaviour, evidence and property. The courts shall use a variety of civil liability methods comprehensively, so that the right holders can get adequate relief in civil cases.

Source: Zhongxin Jingwei

Issue Date: November 17, 2020

 

ZLWD Commentary:

The rights holders always have difficulties in providing evidence. The “Opinions on Strengthening the Protection of Copyright and Its Relevant Rights” allows the parties to preserve, fix and submit evidence through blockchain, and supports the preservation of behaviour, evidence and property, so that the right holders can get adequate relief in civil cases.


Beijing Ligong v. Beijing Ligong Yuandong Technology Unfair Competition Case

“Beijing Ligong” is the core part and abbreviation of Beijing Institute of Technology. The court of first instance held that the original enterprise name of the defendant Jane Jing (Beijing) Science and Technology Co., Ltd. (formerly known as Beijing Ligong Yuandong Technology Co., Ltd., renamed after first instance) contained the words "Beijing Ligong". It is easy to confuse the public that the company has the authorization of Beijing Institute of Technology, or there exists specific links with Beijing Institute of Technology. The court of first instance decided that the defendant should stop using the words “Beijing Ligong” in its name and compensate Beijing Institute of Technology for economic losses and reasonable expenses for a total of RMB 30,000. The defendant disagreed with the first instance judgment, and appealed that there is no competitive relationship between them and Beijing Institute of Technology, which does not constitute unfair competition. The court of first instance decided that the amount of economic loss and reasonable expenses is improper, requested to revoke the judgement of first instance, and rejected all the claims of Beijing Institute of Technology.

Source: Beijing Intellectual Property Court

Issue Date: October 10, 2020

 

ZLWD Commentary:

Article 6 of the Anti-Unfair Competition Law stipulates that Business operators shall not commit the following acts to mislead others to misidentify their goods as others' goods or to associate their goods with others: ...... (2) unauthorised use of other's influential enterprise name (including abbreviation, brand name etc), social organisation name (including abbreviation etc) and name (including pen name, stage name, translated name etc). As a well-known institution of technology in China, Beijing Institute of Technology has a certain popularity and social influence among the domestic universities and the general public. Meanwhile, Beijing Institute of Technology, using its own academic advantages, has established many technology companies with the words “Beijing Ligong” for many years. However, the defendant's previous company name contains the words “Beijing Ligong”, and its business scope coincides with that of many companies founded by Beijing Institute of Technology, which caused confusions to the public, and shall be considered as unfair competition.


“Guichuideng” Failed to Resolve the “Negative Effects” Dilemma

The pseudonym of “天下霸唱” comes from an online game, the author’s real name is Muye ZHANG. On October 22, 2018, Shanghai Island Art Studio, invested by Muye, the original author of the novel “Guichengdeng”, submitted an application for registration of the trademark No. 34182677 and No. 34173243. After examination, the NIPA concluded that the word “Guichuideng” has the meaning of propagating feudal superstition, which will have a negative impact on the mainstream cultural value of our society. Thus the trademark belongs to the types of trademark that cannot be granted. The application for registration of the trademark involved was rejected.

The studio disagreed with the judgment, brought the administrative lawsuit to the Beijing Intellectual Property Court.

The court held that the trademark involved is composed of the word “Guichuideng”, which belongs to feudal superstition words, and its use in designated goods and services is easy to cause people to associate with feudal superstition. The studio refused to accept the first instance judgment, and then filed an appeal to the Beijing People's Court. The Beijing People's Court upheld the first instance judgment based on the reasons stated above.

Source: Beijing Intellectual Property Court

Issue Date: October 10, 2020

 

ZLWD Commentary:

Article 10(1)(8) of the Trademark Law stipulates that “a mark which is detrimental to socialist morals or has any other adverse impact”. This is an absolute prohibition clause. The trademark violating such clause is prohibited from being registered. Even if the mark has a certain popularity and strong significance, it can not eliminate the fact that it has adverse effects as a trademark.

The multiple functions of a trademark determine that when judging whether a mark can be registered and used as a trademark, it should be considered under many aspects, and the criteria should be limited to the general cognitive level and ability of the public. When examining and judging whether a mark constitutes a situation with other adverse effects, we should consider whether the mark or its constituent elements may have negative effects to the public interests and public order of our country, such as politics, economy, culture, religion, nationality and so on.


The Shanghai Anti-Unfair Competition Regulation were Amended and Adopted, Will Come into Effect on January 1 Next Year

On October 27, the 26th meeting of the Standing Committee of Shanghai People’s Congress voted to adopt the newly revised Shanghai Anti-unfair Competition Regulation, which will come into effect on January 1 next year.

The Regulation was adopted by the standing Committee of the Municipal people's Congress on September 28, 1995, and has been in force since December 1, 1995 for 25 years. This revision is the first local anti-unfair competition law passed in China after the revision of the upper law “Anti-Unfair Competition Law” in 2017 and 2019. It is of great significance to optimize the business environment of Shanghai,  which can consolidate and improve the effectiveness of anti-unfair competition work, and protect the legitimate rights and interests of consumers and operators.

The Regulation is aimed at seven types of unfair competition, such as confusion, commercial bribery, false propaganda, infringement of trade secrets, illegal sales with prizes, commercial denigration and online unfair competition. This mainly includes: refining two specific situations of confusion behavior, and regulating confusion behavior by associating others with keyword search, clarifying the specific contents of trade secrets, and putting forward the specific secrecy measures that the right holders can take; refining the specific situation of illegal prize sales; and refining the dissemination ways in commercial defamation.

Source: Shanghai Market Supervision and Administration

Issue Date: October 10, 2020

 

ZLWD Commentary:

In recent years, new business models relying on the Internet economy are emerging. The revision of the regulations reflects the changes of economic development situation and law enforcement practice. On the basis of the Anti-Unfair Competition Law, some typical unfair competition acts are refined and explained in detail. For instance, as for confusion behavior, it was added the circumstance like “using same or similar shape of commodities, the name of the program, the enterprise logo, the name of online store, the name or icon of the application software etc., without authorization". Meanwhile, the definition of “logo with certain influence” is confirmed, and the operator is required to use the logo with certain influence in the first place, and may continue to use it within the original scope of use. In addition, it is also clarified that business operators shall not associate their logos or key words search with those having certain influence.


Di Ao or Dior, Real or Fake?

The trademark invalidation dispute over “Dior” between Christian Dior SE (“French Dior”) and Christian Dior Clothing Co., Ltd. Ended few years ago. Recently “Dior” trademark case also has the result. Recently the results for dispute over the trademark “迪奥” has come out.

The NIPA considered that the disputed trademark “迪奥” is the same as Chinese translation of the referred trademark “迪奥”, and the two trademarks shall be regarded similar trademarks. The coexistence of the two on the same or similar commodities may easy to confuse the relevant public in terms of the source of commodities. Therefore, it is decided that the trademark shall not be approved for registration. The referred trademark is Christian Dior Clothing Co., Ltd. (hereinafter referred to as “the third person”)’s No. G610601 trademark. French Dior appealed for review which was also rejected. French Dior then appealed to the Beijing Intellectual Property Court.

French Dior believes that the popularity and influence of Dior is mainly reflected in the fields of makeup, perfume and so on, but it does not have enough influence and popularity on class 25 commodities. The disputed trademark is extension of the registered trademark No. 596950 “Dior and logo”, which belongs to class 25 and does not infringe the rights of third parties. Also, “Dior” is not necessarily equivalent to “Di Ao”, the two do not constitute an approximation and will not lead to public confusion and misunderstanding. The third person in the case stated that, first, “Dior” has been wildly used in clothing and other areas with a high profile, and has been recognized as a "well-known trademark”; second, where the two trademarks are similar in terms of the commodities being used on; third, Dior has gained influence among relevant consumers through long-term advertising and publicity, and have formed a de facto unique correspondence.

The Beijing Intellectual Property Court found that the date of application for referred trademark is far earlier than the date of application for disputed trademark. According to the court, the commodities such as “clothing” designated for use in the case against trademark are similar to those approved for use in the referred trademark in terms of functional use, sales channels, consumer groups, etc. The evidence can prove that before the date of trademark application, the Chinese consumers have taken "Dior" as the corresponding Chinese translation of “迪奥”, which has extensive influence among relevant consumers. The disputed trademark and the referred trademark constitute similar trademark used on the same or similar commodities. The court rejected the French Dior's claim. The French Dior filed a second instance lawsuit, but the second instance still rejected the appeal and upheld the original judgment. French Dior failed at its trademark registration.

Source: Shanghai Market Supervision and Administration

Issue Date: October 10, 2020

 

ZLWD Commentary:

French Dior has applied for the “Dior” trademark late for 19 years, and the “Dior” trademark has been successfully applied by others. Thus there are many disputes over the Chinese trademark. The “Dior” trademark case once again warned us that it is very important to improve the intellectual property awareness.

When the enterprise develops to a certain level, it is very likely to use its brand effect to diversify the investment and development, and the importance of trademark registration is highlighted. It is likely to be too late if the enterprise tries to register the trademark after it has been largely developed. Protecting trademark rights at this time will be time-consuming and costly.


“Kjeldsens Cookies” sued “Danisa Cookies” for Infringement and Awarded RMB 2.04 million

As a Danish royal supplier of cookies, the plaintiff, Kjeldsens Cookies, was licensed by the Danish royal family in 2009 to use royal certification on products and marketing. During the marketing process, the plaintiff found that the "Danisa Cookies" sold on the market were similar to their products in packaging and decoration, and used the “Royal Danish Certified” in their advertisement.

The plaintiff believed that Danisa Cookies involved false publicity, while Dangdai Shangcheng Shijingshan Branch, as a franchiser, failed to exercise due diligence, and their actions damaged their legitimate interests. Therefore, the plaintiff brought the case against Youyijia Co., Ltd. and Shijingshan Branch to the court of first instance, requesting the two companies to stop infringement and compensate for losses.

The court of first instance found that the defendant Youyijia's advertising campaign on the origin and quality of Danisa Cookies constituted a false propaganda act under the Anti-Unfair Competition Law and should bear the corresponding legal liability according to the law. The court held that the defendant shall stop the infringement, publish their apology and compensate economic losses for RMB 2 million and reasonable expense for RMB 40,000. The defendant appealed to the Beijing Intellectual Property Court against the judgment of first instance, requested the court to reject the plaintiff’s requests.   

Although the court of first instance found that the defendant's false advertising did not damage the plaintiff's commercial reputation of Kjeldsens Cookies, it did not mean that the defendant's behaviour had no adverse effect. According to the facts found out in the second instance, the defendant's false advertising of Danisa Cookies products enhanced the defendant's competitiveness in the cookie market and diluted the brand value of the Kjeldsens Cookies’ “Royal Danish Certified”, which harmed the plaintiff's interests. Therefore, the court of second instance upheld the original judgment.

Source: Beijing Court Online

Issue Date: October 27, 2020

 

ZLWD Commentary:

In this case, the defendant, Youyijia, falsely propagated the origin of the Danisa Cookies in its propaganda activities. The company used misleading pictures and words in the advertisement to deceive and mislead consumers, thus constituting unfair competition. During advertising, the enterprise should not make false statements about the performance, function, quality, sales status, user evaluation, honor, origin and history of the goods, such as "borrowing" other people's goods or the influence of others, applying the historical background of other people's goods; or making improper propaganda comparison, such as use the words like “national level”, “the highest level”, “the best”, “top”, “only”.

In this case, another defendant, Shijingshan Branch of Dangdai Shangcheng, as a franchiser, can prove that the purchase channel is legal and has fulfilled its reasonable and prudent duty of diligence. Hence, it is necessary for the enterprise to agree on the limit of intellectual property liability and keep the relevant evidence when signing the purchase and sales contract, so as not to bear the adverse consequences in the future dispute.


Use “Shanghai Tan” is an Infringement Act! A Hefei Entertainment Company was Fined RMB 20 million

As of September 1, 2020, the Market Supervision Bureau of Yaohai, Hefei, Anhui announced that it had served a notice on the implementation of the administrative penalty decision of Yaohai Branch of Huibin Entertainment Management Co., Ltd., which showed that the Bureau had made a penalty decision on the company in August 2019, which was a fine of RMB 20 million. It is reported that, the reason for the fine is that the company was complained to use the word “Shanghai Tan” for its trading name, which violated the right holder’s exclusive right to use registered trademarks. In addition to the use of the "Shanghai Tan Entertainment Club" on the south side of the third floor of the hotel building, the front door uses "Shanghai Beach" text and graphics, On May 2, 2019, Yaohai District Market Supervision Bureau investigated that the company's VAT income from October 1, 2017 to March 30, 2019 is RMB 6,578,156.76.

The above-mentioned acts of the parties violated the relevant provisions of the PRC Trademark Law and infringed the exclusive right to use registered trademarks. In accordance with the provisions of Article 60 of the Trademark Law,Where the administration for industry and commerce handling the dispute held that there is infringement, the infringor shall be ordered to stop the infringing act, the infringing commodities and the tools mainly used for manufacturing of the infringing commodities and forgery of registered trademark labels shall be confiscated and destroyed; for persons whose illegal turnover is RMB 50,000 or more, a fine of not more than five times the amount of illegal turnover may be imposed; where there is no illegal turnover or the illegal turnover is below RMB 50,000, a fine of not more than RMB 250,000 may be imposed. Persons who have committed trademark infringement on two or more occasions within five years or persons who have committed other serious offences shall be subject to severe punishment. In the case of persons who engage in sale of commodities which infringe upon exclusive rights to use registered trademarks without knowledge of the infringement, where it can be proven that the commodities are obtained legitimately and the supplier of the said commodities can be stated, the offender shall be ordered by the administration for industry and commerce to stop selling the infringing commodities. The decision is as follows:

1. Order the party to stop the infringement immediately;

2. Fine of RMB 20 million.

On August 25, 2020, the YaohaI Market Supervision Bureau issued a notice on the implementation of the administrative penalty decision to the Yaohai Branch of Hefei Huibin Entertainment Management Co., Ltd., asking the company to pay RMB 20 million fine within a time limit. If the time limit is not fulfilled without proper reason, the Bureau will apply to the people's court for enforcement.

Source: Sina Online

Issue Date: October 21, 2020

 

ZLWD Commentary:

According to the opinions of the Trademark Office of the State Administration for Industry and Commerce on the protection of service trademarks, Article 9, paragraph 1, “the amount of illegal business of service trademark infringement mainly refers to the amount of business generated by the infringer during the infringement; in general, unauthorized use of the same or similar trademark as other people's service trademark to engage in the amount of service are illegal business.” Its illegal business amount is RMB 6,578,156.76. The above-mentioned acts of the parties violate the relevant provisions of the PRC Trademark Law and infringe the right holder’s exclusive right to use registered trademarks.

This case warns enterprises that they need to often investigate the market, once found suspected infringement, such acts need to be stopped in time. If such acts are determined, they can complain to  the administrative department or bring a lawsuit to the court.


The Supreme Law Issued the “Provisions on Evidence in Civil Litigation of Intellectual Property Rights”

On November 16, 2020, the Supreme People's Court issued the "Provisions on Evidence in Civil Litigation of Intellectual Property Rights". This judicial interpretation was implemented on November 18, 2020.

Source: Supreme People’s Court Network

 

ZLWD Commentary:

The promulgation of the "Provisions on Intellectual Property Evidence" is an important alternative for the Supreme People's Court to implement the Party Central Committee's decision-making and deployment, implement new development concepts, serve transformation and development, and strengthen judicial protection of intellectual property rights. The general rules of litigation evidence, based on the characteristics and reality of intellectual property litigation, provide for the establishment of an integrity system for intellectual property litigation, including the submission of evidence in the civil litigation of intellectual property rights, evidence preservation, judicial appraisal, and protection of trade secrets in litigation. The international business environment plays an important role.


The Supreme Law issued the "Opinions on Strengthening the Protection of Copyright and Copyright-related Rights"

On November 16, 2020, the Supreme People's Court issued the "Opinions on Strengthening the Protection of Copyright and Copyright-related Rights" (hereinafter referred to as the "Opinions").

Source: Supreme Court Online

 

ZLWD Commentary:

The promulgation of the "Opinions" aims to clarify the rules for the application of the law, advocate honest litigation, and curb copyright infringement. The "Opinions" require that by improving the quality and effectiveness of intellectual property trials, we should effectively strengthen copyright protection in the fields of literature, art and science, and give full play to the role of copyright trials in regulating, guiding, promoting and guaranteeing cultural construction, and inspiring the cultural innovation and creativity of the whole nation. Promote the construction of socialist spiritual civilization, prosper and develop cultural undertakings and cultural industries, enhance the country’s cultural soft power and international competitiveness, and serve high-quality economic and social development.


Inject strong impetus into regional and global economic growth - Interpretation of the signing of the Regional Comprehensive Economic Partnership Agreement

On November 15, 2020, the signing ceremony of the Regional Comprehensive Economic Partnership Agreement will be carried out in video mode. The economic and trade ministers of 15 RCEP member countries will formally sign the agreement at the ceremony. It marks the official start of the free trade zone with the largest population, the largest economic and trade scale and the most development potential in the world. The members overcame the enormous difficulties caused by the new crown pneumonia epidemic, fully completed the market access negotiations, and completed the legal review of more than 14,000 pages of texts, and finally signed the agreement as scheduled during the fourth leaders’ meeting, which become the most important achievement in the construction of East Asian economic integration in the past 20 years. It is reported that RCEP requires 15 member states to commit to lower tariffs, open markets, and reduce standard barriers. The person in charge of the International Department of the Ministry of Commerce pointed out that RCEP will deepen the value chain of the industrial chain in the region by adopting regional rules of origin; using new technologies to promote customs facilitation will promote the development of new cross-border logistics; adopting negative lists to promote investment liberalization, will enhance the transparency of investment policies, which will promote the optimization and integration of regional economic and trade rules.


ZLWD Commentary:

The intellectual property chapter of RCEP covers various issues such as copyright, trademark, patent, anti-unfair competition, and protection of traditional knowledge. Paying attention to the key issues and clarifying the characteristics and future trends of this chapter will help to propose China’s countermeasures in the field of intellectual property; at the macro level, with the recent revision of laws and regulations such as the patent law and copyright law, our country’s intellectual property system has also adapted to the development of the times and social and economic changes, and has been further improved, which is conducive to strengthening the use and protection of intellectual property; at the micro level, by paying attention to maintaining and balancing the interests of right holders and subsequent users, it is conducive to taking advantage of the resources of developing countries and protecting genetic resources, traditional knowledge, and folklore, especially for China, which is rich in traditional cultural resources.


JD! Ali! Who Owns the "Double Eleven" Trademark

On November 10, 2020, the Beijing Intellectual Property Court raised the issue of two cases involving Alibaba Group Holdings Co., Ltd. (“Alibaba”) and Beijing Jingdong Sanbailiushidu E-commerce Co., Ltd. (“JD”). Two administrative cases concerning the "Eleventh" trademark went to public hearings. Both cases involved the "Double Eleven" trademark that Alibaba applied for on November 1, 2011 for the registration of the 35th category of advertising services. The two cases are under further trial.

The trial was broadcast live on all media by the "Live" column of the Social and Law Channel of China Central Radio and Television. The live broadcast has attracted wide attention. More than 30 media and platforms including CCTV News, CCTV, and the People's Court News and Media Headquarters conducted real-time live broadcasts. The live broadcast lasted two hours and was watched by more than 12 million netizens.

Source: Intellectual Property Beijing Weibo

 

ZLWD Commentary:

The focus of the dispute in this case is: whether the disputed trademark was actually used in service categories such as Class 35 and whether the evidence submitted by Alibaba reflects whether the disputed trademark has established a corresponding relationship with Alibaba and whether it can reflect "advertisement;display products on communication media for retail purposes; promote sales for others; business management assistance, business information" and other service contents.

Although the case was not pronounced in court, according to the public trial, the use of services such as "business management assistance; business information" refers to the business information services provided by industrial and commercial enterprises, and the evidence submitted by Ali Group were all promoted to consumers, and no consideration was obtained from them, which was inconsistent with the requirements of the trademark category. The defendant’s decision to cancel the trademark registration of this part of the service should be maintained.

This also reminds other trademark applicants that after applying for the registration of class 35 service trademarks, they must comply with the requirements of the trademark category when using the trademark, otherwise the trademark is at risk of being cancelled.


This Newsletter is produced by Economic and Legal Development Research Centref or Guangdong-Hong Kong-Macao Greater Bay Area

For Your Reference Only

Editorial Board: Lin Wei, Chu Shu Bake, Zhou Lisi, Deng Yu, Li Yuming,

Wu Ziling, Ouyang Jun, Chen Gong, Ning Ning

Editorial Board:Wei LIN,Simon TANG ,Lisi ZHOU,

Yu DENG,Yuming LI,Shell WU,Oyagi,Gong CHEN,Ning NING

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