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International IP/IT Review February 2021

Date and time :2021-03-03
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Shanghai Court Accepted the First Case through Only the Elements of the Case on February 9, 2021

On February 9, judge Hu Yan, from Xuhui District People’s Court, received a reminder from the trial management system to file a case about trademark rights. Judge Hu opened the system and carefully checked the elements of the case and the digital documents submitted by the plaintiffs. After thorough examination, she clicked on “agree to file the case”. This was the first IP case that was accepted by the Shanghai Court only through the elements of the case.

The IP disputes involving e-commerce has been increasing year by year. In order to "simplify diversion, simplify quick trial, trial complex case with precision”, Xuhui court took the first step to explore the online case filing system with help of technology. “Intellectual property cases tend to have high technical and professional barriers. Those cases are generally litigated by attorneys. We started with a large number of cases, such as cases involving trademark rights of e-commerce platform and dissemination of information network rights, from which we extract the necessary elements to form an online filing template, the parties only need to fill in and upload materials according to the circumstances of the case.” Chen Yiyu is the judge of the intellectual property division of the court and one of the main participants in the establishment of the template of filing through elements of the case.

Source: Xinmin Evening News official account

Date of Publication: February 10, 2021

 

ZLWD Commentary:

The Xuhui Court set an example that establishing online filing system is not only a transformation from offline to online, but also shall make use of the achievements of intelligent courts. “Justice for people, transparent justice and thoroughly implementing justice” could be realize through digitalize and intelligentize of the online fling system to certain extent. It is necessary to improve the efficiency of handling e-commerce IP cases, in order to reach the stage that “online cases will only have trials online”.


“Renren Subtitle Group” was Investigated for Infringing Film and Television Copyright

On February 3, Shanghai Public Security Bureau held a press conference, announced that Renren Subtitle Group was investigated for suspected infringement of copyright film and television works and arrested 14 suspects.

In September 2020, Shanghai police found that someone downloaded film and television works from Renren. After negotiating with the relevant copyright owners, such film and television works have not been authorised by the copyright owners.

It is reported that Liang and others have set up a number of companies to rent servers and downloaded movies from overseas piracy forums. They hire people to translate, press and upload to the APP server to spread to the public. They gained profits through collecting membership fees, advertising fees and the sale of infringing film and television works via mobile hard disk. After three months of investigation, the police arrested 14 suspects in Shandong, Hubei and Guangxi.

The preliminary investigation shows that each port of the APP software published more than 20000 film and television works. There are more than 8 million registered members, with RMB 16 million illegal profit.

Source: CCTV

Date of Publication: February 5, 2021

 

ZLWD Commentary:

The public usually does not take copyright infringement seriously. People believe that normal infringement will only lead to apology or compensation of money. However, depending on different circumstances, copyright infringement may also constitute a criminal offence.

Article 217 of the Criminal Law stipulates that whoever, for the purpose of making profits, commits any of the following acts of infringement on copyright shall, if the amount of illegal gains is relatively large, or if there are other serious circumstances, be sentenced to fixed-term imprisonment of not more than three years or criminal detention and shall also, or shall only, be fined; if the amount of illegal gains is huge or if there are other especially serious circumstances, he shall be sentenced to fixed-term imprisonment of not less than three years but not more than seven years and shall also be fined:

(1) reproducing and distributing a written work, musical work, motion picture, television programme or other visual works, computer software or other works without permission of the copyright owner;

(2) publishing a book of which the exclusive right of publication is enjoyed by another person;

(3) reproducing and distributing an audio or video recording produced by another person without permission of the producer; or

(4) producing or selling a work of fine art with forged signature of another painter.

Renren provided a place to watch and download unauthorised movies and television works, which they gained illegal profits of RMB 16 million. Hence the relevant responsible people should be investigated for criminal responsibility.


The NIPA: Rejecting “Ding Zhen” and other 91 Trademarks

Ding Zhen, a young man from Sichuan Kangba, has gone viral. His name was used by companies to maliciously register trademarks. On February 10, the NIPA issued two notices, rejecting 91 applications for trademark registration, such as “Ding Zhen”.

The rejected trademarks include “Ding Zhen”, “The world of Ding Zhen”, “The Simile of Ding Zhen”, “I Love Ding Zhen”, “Brother Ding Zhen” and so on. The applicants include Shichadao (Beijing) Network Technology Co., Ltd. and Beijing Wendeng Education Technology Co., Ltd.

Since Ding Zhen has gone viral on November 14, 2020, many companies have submitted “Ding Zhen” trademark registration applications, involving daily supplements, education, entertainment and website services.

Not only the “Ding Zhen” trademark that has been maliciously registered. After the outbreak of coronavirus, the malicious trademark registration such as “Houshen Mountain”, “Leishen Mountain” and even “Li Wenliang” has aroused public dissatisfaction.

Source: Beijing Daily

Date of Publication: 1February 2021

 

ZLWD Commentary:

According to the Trademark Law, the application for trademark registration shall not prejudice the existing prior rights of others. In the trial guide issued by the Beijing High People's Court, it is further pointed out that if the relevant public is easy to perceive that the goods marked with a trademark have a specific connection with the natural person, such as a license, it can be regarded as an infringement of the right to name. Therefore, Ding Zhen himself enjoys “Ding Zhen” as his name right, by Ding Zhen himself, other people shall not infringe his rights.

It is apparent that maliciously registering trademark is not of public moral. The rejection of 91 trademarks is a sign for those companies who wish to gain illegal profits out of trademarks.


“Baris Baguette” Infringed “Paris Baguette” Beijing IP Court Ruled to Compensate RMB 1.5M

Beijing Intellectual Property Court concluded the case of "Paris Baguette” in terms of trademark infringement and unfair competition dispute, ordered the defendants Jin and Beijing Baris Baguette Enterprise Management Co., Ltd., to stop using the unregistered well-known trademark of “Paris Baguette”, stop using “Baris Baguette” as company name and stop malicious harassing or the purpose of coercing a series of trademarks. The Court ordered compensation for economic losses and reasonable expenses for a total of RMB 1.5 million.

Paris Baguette is a fast food brand operated by the plaintiff SPC Investment Limited Company Investment Co., Ltd., which has become a well-known trademark in bakery industry. The plaintiff alleged that that the defendant registered nearly 100 trademarks similar to the plaintiff's trademark, such as “Baris Baguette” and used "PARISBAGUETTE" trademark on its website without the plaintiff's permission, which violated the plaintiff's rights to its unregistered well-known trademark. The two defendants, took a series of acts such as civil action, administrative complaint, door-to-door harassment against the plaintiff, which seriously threatened and affected the plaintiff's normal operation, caused huge economic losses to the plaintiff, and already constituted unfair competition.

Jin and the Beijing Baris Baguette argued that the plaintiff has no legal rights towards the trademarks “巴黎贝甜” and “PARISBAGUETTE”, since it cannot be deemed as unregistered famous trademark. The two defendants do not take their behaviour as infringement. Those harassment and complaints merely were used to protect their rights.

Source: People's Court News

Date of Publication: February 19 2021

 

ZLWD Commentary:

According to the large amount of evidence submitted by Paris Baguette, the Court considered that Paris Baguette’s advertising and its regional influence have made the brand as an unregistered well-known trademark. Baris Baguette highlighted the trademark “PARISBAGUETTE” on various platforms, which is enough to cause confusions to the public. Also, Baris Baguette did not use the trademark on the approved commodities and tried to sell the trademark for RMB 10 Million. After Paris Baguette refused to pay, Baris Baguette sent warning letters to Paris Baguette’s franchisees and brought the case to the court. Such behaviour seriously disturbed the normal operation of the stores. The said judgment is beneficial to the protection of well-known brands and the legitimate rights and interests of businesses and consumers.


NIPA: Completely Cancel the Subsidies for Patent Application

Recently, the State intellectual property Office issued a notice on further strict regulation of patent applications. The Notice pointed out that further adjust and improve policies such as subsidies and incentives, and completely cancel subsidies for patent applications. The Notice also emphasized on increasing support for subsequent conversion, administrative protection and public services. The authorities shall clean up and standardize the order of patent applications, resolutely crack down on abnormal patent applications for the purpose of protecting innovation, and promote the high quality development of intellectual property rights.

Source: Journal of Chinese Intellectual Property

Date of Publication: January 28, 2021

 

ZLWD Commentary:

At the beginning of the subsidy policy, it has played a very good role in encouraging enterprises and individuals to apply for patents. However, under this policy, there were many enterprises applied low quality patents in order to defraud subsidies. The simple quantity growth can not be used as the evaluation index of the innovation level of the enterprise or university. The quantity growth is not as good as the quality growth. Hence, standardizing patent application system and improving the patent application quality can avoid those low quality patents.


The Abbreviation and Registered Trademark of USTC were Falsely Used

On January 27, 2021, a report of a private university in Guangzhou falsely using the name of “University of Science and Technology of China Education Group Co., Ltd.” to submit an application for listing on the Hong Kong Stock Exchange was circulated in WeChat Group, a global alumni of the University of Science and Technology of China (“USTC”). On the evening of January 28, the USTC issued a statement through the official WeChat account of the alumni association of the university, demanding that the relevant company shall immediately stop the infringement and eliminate the adverse effects.

To this end, the USTC declares that the word “USTC” is both the abbreviation of the university's name and the registered trademark of the university, and that the university enjoys the right of name and trademark exclusive use of “University of Science and Technology" of China” according to law. Neither University of Science and Technology of Guangzhou nor University of Science and Technology of China Education Group Co., Ltd. has any factual or legal ties with the USTC. The USTC has never authorized University of Science and Technology of China Education Group Co., Ltd. to use the word “USTC” as its enterprise name. In order to protect the legitimate rights and interests of the school and maintain normal market order, the school requires relevant parties to immediately stop infringement and eliminate adverse effects. The USTC will take necessary measures to protect rights and pursue the legal responsibility of relevant parties.

Source: Pengpai News

Date of Publication: January 29, 2021

 

ZLWD Commentary:

In order to protect the university name from being falsely used, many colleges and universities have registered their name, emblem and logo etc.. Universities can sue those enterprises falsely using the name for trademark infringement. But it is also difficult to solve all the problems. First, trademark registration may not be comprehensive enough. Second, trademark protection has classes and geographical restrictions, those classes beyond approval will not be protected. However, the more classes are registered, the more cost the universities shall bear.


A First Heavy Penalty of RMB 100.7 Million was Issued by the State Administration of Market Supervision for Antitrust

On January 29, the State Administration of Market Supervision issued the Decision Letter of Administrative Penalty (Guoshijianchu [2021] No.1). Xiansheng Pharmaceutical Group Co., Ltd. (“the Company”) was fined for RMB 100.7 for antitrust.

According to the letter, since September 2020, the investigation against the Company for the alleged abuse of market dominant position has been carried out according to the PRC Antitrust Law.

After investigation, the parties abused their dominant position in the sales market of Chinese batroxobin concentrate API and carried out the act of refusing to trade with the trading counterpart without proper reasons. Such behaviour excluded market competition and harmed the interests of consumers.

The State Administration of Market Supervision took into account the nature, extent and duration of the illegal acts committed by the parties concerned. The Company were able to take the initiative to rectify the situation during the investigation period and had supplied Batroxobin raw materials to the downstream companies. Moreover, the parties had not yet obtained illegal income. Thus the State Administration of Market Supervision decided to order the Company to stop the illegal acts and imposed a fine of 2% of the Company's 2019 sales of RMB 5.0367 billion, totaling RMB 100.7 million.

Source: Sina Finance

Date of Publication: February 2, 2021

 

ZLWD Commentary:

From the said case, it can be roughly concluded that whether the Company involves antitrust behaviour mainly depends on the market share of the enterprise, whether the product is alternative, whether other companies can enter the market, whether the enterprise abuses the dominant position of the market, the market competition, whether it damages the interests of consumers, etc.

With the continuous improvement of the level and strength of national antitrust law enforcement, companies with market dominance in any industry shall abide by the order of market supervision and make early use of professional legal services to build an antitrust compliance system, in order to promote the fair and orderly development of the market.


Xingruida Reselling the Refurbished "SIEMENS" Commodities, Siemens Sued the Company

Siemens (China) Co., Ltd. is the trademark owner of “SIEMENS”. Xiamen Xingruida Automation Equipment Co., Ltd. purchased different types of industrial control goods printed with "SIEMENS" trademark, such as digital output module and control module from the third party website. When the above commodities were cleaned, polished and affixed with "SIEMENS" trademark, which were ready for resale again, they were seized by Xiamen Huli District Market Supervision Administration. Siemens later filed a civil action, claiming that Xingruida's actions constituted trademark infringement.

The court held that the sale of the digital output module of the counterfeit “SIEMENS” trademark and the reprinting of the “SIEMENS” label by Xingruida constituted trademark infringement, but when Xingruida sold the refurbished commodities, it did not make a major transformation of the commodities. Accordingly, the court of first instance decided that Xingruida and Chen must stop reselling counterfeit  digital output modules with “SIEMENS” label and compensate for economic losses of RMB 200,000.

Source: China Intellectual Property News

Date of Publication: February 19, 2021

 

ZLWD Commentary:

The reason for refurbishment causing trademark infringement disputes is the resale. Whether the resale constitutes trademark infringement, disputes mainly depends on whether exhaustion of trademark rights can be a defense. The essence of the exhaustion of trademark rights is that other sellers respect the trademark right of the trademark owner during the process of commodity, and only transport, store and resell the goods with the trademark, which does not lead to confusion and misunderstanding among consumers, so it can be used as a legitimate reason for the defense of trademark infringement. However, there are two preconditions for the application of the principle of exhaustion of trademark rights, one is that the trademark itself has not changed, the other is that the commodity itself has not changed.


“Xinyang Maojian” Hitched “Maotai”

The Hong Kong stock listed company “Xinyang Maojian” (00362.HK) issued a notice proposing to change the English name of the company from “Xinyang Maojian Group Limited” to “China Dragon Moutai Group Limited”, and adopted “China Guolong Maotai Group Co., Ltd" as the second Chinese name of the company to replace the existing name “Xinyang Maojian Group Co., Ltd”.

The share price of Xinyang Maojian increased more than 44% after the news was released.

Source: Intellectual Property News

 

ZLWD Commentary:

The rename of “Xinyang Maojian” was because of its expansion of the beverage department through the sale of liquor and capital investment. Although the current name of "China Guolong Maotai Group Co., Ltd." is only a recommendation of the board of directors and has not really been adopted. If the name is changed to Guolong Moutai without authorization and without material connection with Moutai Group, it may mislead the public, constitute unfair competition and infringe the trademark rights of Moutai Group. Moutai Group shall have the right to protect its legitimate rights and interests.


Having Similar Vocabulary List: New Oriental Sued the Developer of “Momo Memorizes Vocabularies”

In 2017, New Oriental found that the software developed by a company called momo provided a list of words substantially similar to the vocabularies, sequence of chapters, and order of the vocabulary list published by the New Oriental, allegedly violating its right to disseminate information on the books involved. New Oriental believed that the above-mentioned behavior of Momo seriously affected the sale of books involved and took the case to the court.

The court held that, although creation could be taken into account in the vocabulary books, combined with the evidence submitted by both parties, the word selection, sequence of chapters and order of the vocabulary list do not enjoy originality and could not be a compilation work protected by the Copyright Law.

Source: China Intellectual Property News

Date of Publication: February 18, 2021

 

ZLWD Commentary:

In judicial practice, copyright disputes involving English words are rare, and the judgment in this case clarifies the conditions under which the contents of word selection and sequence can constitute works in the sense of copyright law. The root and affixes of words are the objective existence of English words. Different people may get the same assembly results when they use root and affixes to choose English words. This method can be quantified without individual differences and can not reflect the subjective choice of the assembler itself. Therefore, the selection result of this method is merely an expression of such method and cannot be protected by the Copyright Law.


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

This Newsletter is produced by Economic a nd Legal Development Research Centre f or Guangdong-Hong Kong-Macao Greater Bay Area

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

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

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