The Dispute over Trademark Infringement between Dongguan Wuyang Water Meter Manufacturing Co., Ltd. and Chen Huijie

Wuyang Water Meter Manufacturing Co., Ltd. (“Wuyang”) is approved to exclusively use the registered trademark No.10276363. Chen Hujie, without the plaintiff's permission, used the said registered trademark on the e-commerce platform. The court of first instance ruled that Chen Hujie committed trademark infringement.

The court held that water meter is the approved commodity that Wuyang registered under its trademark. Chen Hujie used "Guangzhou Wuyang" in the link of commodity put on his Taobao online store. This act can easily cause consumers to mistake the goods sold through the link or regard that registered trademark goods have sort of relations with Wuyang’s commodity. Thus the act is found to be an infringement of Wuyang’s exclusive right to use a registered trademark.

Source: China Judgments Online

ZLWD Commentary:

Chen Huijie lost the case since he used “Guangzhou Wuyang” on the commodities he sold, which is the same trademark as the one Wuyang registered. This act certainly has misled the consumers. It is hard for consumers to distinguish whether the product is authentic or fake when Chen Hujie put “Guangzhou Wuyang” in his selling link of the very product, which constitutes trademark infringement act according to the Trademark Law.

No Time to Say Goodbye: Xiami Lost in Copyright Competition and Announced to Shut Down on Feb 5

On January 5, Xiami Music (“Xiami”) announced official statement that due to the adjustment of business development, Xiami Music will terminate its service at 0:00 on February 5, 2021. Many people said that their adolescence has ended due to this termination. The 12-year-old online music application ultimately has a bad ending.

In 2013, Xiami was acquired by Alibaba, who also invested in another music application Tiantian Dongting (“Tiantian”) in the same year, and then bought it the next year. In July 2015, Alibaba merged Xiami and Tiantian into one single Ali Music. At that time, according to Ali's official statement, Xiami will target on professional musicians while Tiantian will focus on general users.

However, in recent years, with the continuous improvement of copyright control in the domestic music market, copyright music of Xiami has decreased. In July 2015, the National Copyright Administration issued a notice ordering online music service providers to stop unauthorized dissemination of music works, and pirated songs were massively offline, including a large number of unauthorized works of Xiami.

In September 2019, Wangyiyun announced a B2 round of USD 700 million financing from Alibaba and Yunfeng Funds, which hit Xiami heavily again. Although Xiami had quite a lot copyright cooperation in 2020, it is still not enough for the current market.

Source: Qilu Evening News

Date of Publication: 6 January 2021

ZLWD Commentary:

Online music industry is gradually being standarlised. However, the copyright competition never stopped. Apart from Xiami, there are many more music applications struggled in this competition. Some music application giants enjoy exclusive copyright. On the music platform, some songs are exclusive to one giant, and some songs are exclusive to another giant. This would be a huge blow to smaller music platforms.

Xiami is a niche music gathering place which understand the taste of users, but the failure lies in the lack of copyright. In the high price battle of copyright, Xiami only enjoys 30% of copyright, which can not meet the needs of users. The closure of Xiami also reflects that the domestic music market is paying more attention to music copyright.

Viya Applied Her Name “Viya” Trademark, Rejected by the NIPA

Viya, known as Taobao's No.1 female livestreamer, created a single 2-hour sales record of RMB 267 million and stay at the top of the Taobao Streaming Rank.

In June 2019, Viya’s company, Guangzhou Weimikesi Clothing Co., Ltd., applied the trademark “薇娅” to the NIPA and requested registration under class 25 for clothing, shoes and hats.

In May 2020, the NIPA replied. Since the trademark “薇娅” is similar to the trademark “薇亚”, “娅薇”, “薇薇娅” and “薇娅特”, which were applied by other applicants, the application was rejected pursuant to article 30 and 31 of the Trademark Law.

Viya used her stage name to apply trademark and got rejected, her team brought the case to the court.

Viya’s company believes that “Viya” is Huang Wei's stage name, which has a unique correspondence with herself. Also, Weiya is quite famous and people can recognise her through the name. This would not cause confusion and misunderstanding.

On January 4, 2021, the Beijing Intellectual Property Court ruled that the trademark “Viya” is indeed similar to other trademarks and therefore cannot be registered as a trademark.

Source: Corporate Help

Date of Publication: January 9 2021

ZLWD Commentary:

 It is true that names like “Viya” and “Vivian” are quite obvious female English names, which can be easily registered on clothing products. Although Viya has a high popularity, she cannot register the trademark under her own name, according to article 30 of the Trademark Law, “trademark to be registered which does not comply with the relevant provisions of this Law or the subject matter trademark which is identical or similar to a trademark registered by others for the same type of commodities or similar commodities or a trademark preliminarily validated shall be thrown out by the trademark bureau and shall not be gazetted.”

Sany was Hitchhiked? The Court Awarded Sany RMB 7 million

As a well-known construction machinery manufacturer in China, Sany Heavy Industry Co., Ltd (“Sany”) has the corresponding IP rights of “三一” trademark No.1550869 and "SANY" trademark No.1550867， which are approved for use under class 7 excavators, mixers and other commodities. Considering that the outstanding use of "Shanyi Heavy Industry" and "SHANYI" logo" by Yantai Shanyi Machinery Co., Ltd. (“Shanyi”) and Hunan Hejiu Machinery Equipment Co., Ltd. (“Hejiu”) on their loaders and mixers constituted trademark infringement, while Shanyi used the word “Shanyi” in its enterprise name constituted  unfair competition, Sany sued the two companies to the court.

Recently, the case had its second instance judgment. The Hunan High People's Court found that the acts of the two defendants constituted infringement, and Shanyi also constituted unfair competition. Shanyi changed its name and compensated Sany more than RMB 7 million for economic losses and reasonable expenses.

Source: China Intellectual Property News

Date of Publication: January 15, 2921

ZLWD Commentary:

Sany already enjoys a high reputation for its related trademarks and enterprise names. As a closely related company in terms of industry and products, Shanyi shall reasonably avoid the relevant well-known trademarks and well-known enterprise names like Sany. Shanyi not only failed to take the initiative to avoid, but registered twice the same trademark as Sany, which were failed to register. Its acts reflect the subjective malice of trying to obtain unfair competitive advantage.

For enterprises that are closely related to well-known enterprise names with prior ownership, they shall take the initiative to avoid the prior well-known enterprise names, especially the commodities related to them, in case they are recognized as similar commodities. This is to eliminate the risk of trademark infringement and unfair competition.

Qiaodan Sports Company was Ruled to Stop Using "Jordan" in its Business and Compensated RMB 350,000!

Qiaodan Sports Co. Ltd., a Chinese sportswear and shoe manufacturer, should compensate the plaintiff Michael Jordan RMB 300,000 (about USD 46,000) for emotional distress and another 50,000 yuan for expenses incurred during the lawsuit, according to the ruling handed down by the Shanghai No.2 Intermediate People's Court in the first instance. The court ordered the company to cease using the Chinese characters of "Qiao Dan" in its name and product trademarks. But for those trademarks older than five years, which cannot be revoked according to Chinese law, the company should take reasonable measures to clarify that these trademarks have no connection with the former U.S. basketball player Michael Jordan, said the court.

Source: Intellectual Property Reports

Date of publication :31 December 2020

ZLWD Commentary:

Personality right is the basic civil right of natural person. As an important personality right of natural person, name right is protected by law. The protection of the right to name is mainly reflected in the interests of personality. Anyone who interferes, falsely uses, misappropriates the name of another person or intentionally causes confusion constitutes an infringement of the right to name of another person. The plaintiff Jordan forms a sound and solid correspondence to his Chinese translation name “Qiaodan” and enjoys the right of name according to law. Qiaodan Sports Company knows the plaintiff Jordan's popularity, but still conducted unauthorized registration of trademarks. The company also use “Jordan” in its commercial activities, and cause confusion to the relevant public, which obviously violated the plaintiff's name right.

Passed unanimously! Shanghai Intellectual Property Protection Regulations to be implemented as of March 1 next year

On the morning of December 30, the Regulations of Shanghai on the Protection of Intellectual Property Rights were reviewed and adopted at the 28th Session of the Standing Committee of the 15th Municipal People's Congress, and shall come into force as of March 1 next year. The promulgation and implementation of the Regulations are important measures of this Municipality to carry out the relevant decisions and arrangements of the CPC Central Committee and the State Council, strengthening in an all-round way the protection of intellectual property rights and stimulating innovation and creativity. The Regulations consist of 46 articles in six chapters.

The Regulations of Shanghai on the Protection of Intellectual Property Rights contain specific provisions on the promotion of the establishment of a unified integrated IPR informatization service platform, the optimization of government affairs service process, and the increase of infringement compensation.

Source: Shanghai Intellectual Property

Date of publication: 30 December 2020

ZLWD Commentary:

 The Regulations of Shanghai Municipality on the Protection of Intellectual Property Rights stipulate that the relevant administrative departments of intellectual property rights shall, in combination with the development of "handling all affairs in one network" for government services and "unified administration in one network" for urban operation, optimize the government service process, strengthen information sharing, and realize the one-time logging in and handling all affairs relating to intellectual property rights in the whole network.

An IP may involve multiple dimensions such as copyright, trademark and patent at the same time, so multi-channel and all-round protection are needed. The unified inclusion of these matters in the administration of the "One Network Handling" platform of this Municipality will effectively save the cost of right holders and provide them with more comprehensive protection. At the same time, the obligee can accurately find responsible departments through a unified platform, so that more quickly confirmation and protection of rights.

The Amendment to the Criminal Law of the People's Republic of China Involving These Intellectual Property Rights

 On December 26, the Amendment XI to the Criminal Law of the People's Republic of China was adopted at the 24th Session of the Standing Committee of the 13th National People's Congress and promulgated by Order of the President No.66 for implementation as of March 1, 2021.

The Amendment to the Criminal Law of the People's Republic of China (XI) revises the provisions on various crimes of IPR infringement, severely cracking down on the crimes of IPR infringement. The fixed-term imprisonment shall be the starting point for sentencing of all crimes of IPR infringement except for the crime of patent counterfeiting, and the maximum sentencing shall be increased to 10 years of fixed-term imprisonment.

The Amendment to the Criminal Law of the People's Republic of China (XI) adds the protection of "service trademarks" to the provisions on the crime of counterfeiting registered trademarks, and revises the provisions on the crimes of infringing copyright or copyright-related rights in accordance with the Copyright Law of the People's Republic of China (PRC) recently amended, so as to strengthen the crackdown on copyright infringement.

In addition, the Amendment (XI) to the Criminal Law of the People's Republic of China (XI) supplements the types of crimes of commercial secret infringement, adding the "crime of commercial espionage": "Whoever steals, spies into, buys or illegally provides commercial secrets for institutions, organizations or individuals outside the territory of China shall be sentenced to fixed-term imprisonment of not more than five years, in combination of fines, or shall be separately or separately sentenced to fixed-term imprisonment; if the circumstances are serious, he shall be sentenced to fixed-term imprisonment of not less than five years, in combination of fines."

Source: NIPA Government WeChat

Issue time :2021/1/4

ZLWD Commentary:

The revision to the relevant provisions on the crimes of IPR infringement in the Amendment to the Criminal Law of the People's Republic of China is a specific measure to strengthen IPR protection and establish a "strict protection" system for IPR. The "crime of commercial espionage" is newly added, which is conducive to protecting the core interests of enterprises, creating a good business environment and promoting fair competition among enterprises, and will also crack down on the acts of using commercial espionage to damage the interests of the State and enterprises. 

China Intends to Establish Hainan Free Trade Port IPR Court

On the morning of December 22, the 24th session of the Standing Committee of the 13th National People's Congress of the People's Republic of China was held in the Great Hall of the People in Beijing. Zhou Qiang, President of the Supreme People's Court explained the Decision on the Establishment of Hainan Free Trade Port IPR Court (Draft). Zhou Qiang pointed out that the establishment of Hainan Free Trade Port IPR Court is an inevitable requirement for implementing the important instructions and guidelines of General Secretary Xi Jinping on the construction of Hainan Free Trade Port and the major strategic plan of the Central Government. In view of the current business foundation, trial talent foundation and number of cases involving the trial of IPR cases of Hainan Courts, the basic conditions for the establishment of IPR Court have been satisfied.

As for the jurisdiction of the Hainan Free Trade Port IPR Court over cases, the explanation of the Decision on the Establishment of Hainan Free Trade Port IPR Court (Draft) points out that the Hainan Free Trade Port IPR Court plans to have special jurisdiction over civil, administrative and criminal cases involving intellectual property rights that are under the jurisdiction of intermediate courts in Hainan, and implement the "three-in-one" trial of IPR cases.

Source: China Court Network

Date of publication :22 December 2020

ZLWD Commentary:

The Hainan Free Trade Port IPR Court takes the lead in realizing the "three-in-one" trial of IPR cases nationwide, becoming another "highlight" in the top-level design of China's IPR protection. The expansion of the cases under the jurisdiction of IPR courts to the field of criminal justice not only involves the reform of the judicial jurisdiction over IPR cases, but also directly involves the collaboration and coordination among the public security organs, procuratorial organs and judicial organs in handling IPR cases. The implementation of the "three-in-one" model is conducive to the effective connection of the three different proceedings and mitigating the conflicts between different judgments. 

The Proportion of Online Trademark Applications in China Exceeded 98% in 2020

The reporter learned from the NIPA that during the "13th Five-year Plan" period, China has been continuously promoting the reform of trademark registration facilitation and intensifying the development of trademark information technology, so as to make "people work less errands and data more errands". By 2020, the proportion of online trademark applications in China exceeded 98% and online Madrid international registration reached 94%.

During the "13th Five-year Plan" period, the Trademark Office of the NIPA will launch the trademark online service system integrating six major functions including online application and online payment, gradually open online application functions such as review of refused trademark and trademark objections, and explore the mode of intelligent trademark examination. By the end of 2020, the number of registered users in China's online trademark service system was approximately 178,800, 14 times the number of registered users in 2016.

Meanwhile, the Trademark Office of the NIPA focuses on promoting the full and immediate disclosure of trademark review and adjudication documents and the free opening of trademark database to the public, and takes multiple measures to promote transparency and standardization of trademark work. By the end of 2020, nearly 900,000 documents of various kinds will have been made public, and more than 50 million existing trademark data will have been made public for free.

Source: China Economic Network

Date of Issue :13 January 2021

ZLWD Commentary:

The NIPA shall constantly improve online trademark service contents, optimize processes, simplify formalities, and deeply promote the reform of facilitating trademark registration.Meanwhile, efforts shall be made to further improve the examination and adjudication standards, continuously crack down on and curb non-use trademark hoarding and malicious registration, regulate trademark agency activities, and promote high-quality development of trademark examination and adjudication.

Special Fund Granted for EU SMEs to Apply for Trademark

Recently, the French National Industrial Property Office (INPI) joined the EUR 20 million fund “Small and Medium-sized Enterprise Creative Fund" established by the EU Intellectual Property Office (EUIPO). The fund is to enhance the efficiency of the use of intellectual property assets by SMEs in the EU. Since January 11 this year, EU enterprises that meet the official definition of SMEs will receive financial support from the fund.

Source: National Intellectual Property Strategy

Network: http://www.nipso.cn/onews.asp? id=52026

ZLWD Commentary:

The Fund was established under the EUIPO’s project “Ideas Powered for Business” as part of the European Commission's Intellectual Property Action Plan. The plan provides financial assistance to trademark applicants in the form of refunds to all EU enterprises that meet the official definition of SMEs. The EU's SMEs that submit trademark registration applications to INPI or EUIPO will save about 50 percent of their basic expenses, up to EUR 1500.

This paper is compiled by Guangdong-Hong Kong-Macau Greater Bay Area Research Center for Economic and legal Development for reference only

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Wu Ziling, Ouyang Jun, Chen Gong, Ning Ning, Liu Zhao

Editor ial Board：Wei LIN,Simon TANG ,Lisi ZHOU,

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

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