From Go Viral to Vanished, the App Avatarify’s Trademark was Registered

Recently, a face-changing app called “Avatarify” became popular online. The AI face-changing app has gone viral in February and was ranked top 1 on the list of App Store Free App List. People can make videos just through uploading photos, so that person in the photo can follow the rhythm to shake their heads, such as Ma Huateng, Elon Musk and other business leaders.

However, the software was removed by Apple's App Store after it has gone viral for a very short time, allegedly suspected of violating privacy rights.

Furthermore, the search results shows that the trademark “Ma Yi Ya Hei (the Chinese name of the app Avatarify” has been registered by some companies, classes they registered was ranging from office supplies, advertising sales, beer drinks. The status of those applications were pending. 

Source: Tencent

Date of Issue: March 9, 2021

ZLWD Commentary:

Using such app to make face-changing video could be rather controversial. Once the privacy information was stolen by criminals, it is easy to cause personal privacy leakage and other dangers. In addition, no one shall use other person’s portrait without permission, otherwise people conducting such act will bear civil tort liability.

“Ramen Brother” Trademark Got Stolen

Shandong “Ramen Brother” has gone viral because for 15 years he sold a bowl of noodle for RMB 3. With the popularity of “Ramen Brother”, the trademark “Ramen Borther” was also registered by a company.

The Shandong Jinke Zhuangyuan Restaurant Management Co., Ltd. applied for the trademark “Ramen brother| on February 24, 2021. The current trademark status is “trademark application pending”. Another applicant, named Henan Duo’ai Trading Co., Ltd., applied on March 1, 2021.

“Ramen Brother” responded that the trademark is not registered by himself and asked people to be aware of it.

It is worthwhile to mention that after he became popular online, his life was also affected. Some people specially went to his restaurant to take photos, take video or live broadcast with, which seriously interfered with his personal life.

Source: Tencent

Date of Issue: March 9, 2021

ZLWD Commentary:

Can the trademark "Ramen Brother" be registered successfully? Take a look at the cases of those who applied for “Ding Zhen” trademarks, which the NIPA rejected 91 trademark registration applications containing “Ding Zhen”.

The PRC Trademark Law clearly stipulates that the trademark registration that is not intended for using shall be rejected. If a malicious trademark application is made, a warning and a fine shall be given according to the circumstances. The Administration of Market Supervision has issued a regulation to supervise the registration of trademark applications, which also clarifies the punishment measures for illegal acts of applicants and trademark agencies. Therefore, the relevant officials not only strictly check the trademark application and resolutely reject the malicious applications, but also severely crack down on illegal activities.

Strengthen the Protection of Intellectual Property and Improve the Environment for Foreign Investment

Recently, a forum on intellectual property protection between China and Japan was held at the Shanghai International Trade Center. Two intellectual-property judges Tao Ye and Chen Yaoyao, from the Shanghai Court, gave presentations to representatives of 14 japanese-owned enterprises on the site and more than 200 online japanese-owned enterprise officials and staff on the protection of intellectual property evidence and technical facts.

At the forum, Tao Ye used “intellectual property evidence related system” as the title of the speech. It is reported that evidence has a considerable importance in the process of intellectual property litigation. At present, the three major problems i.e. difficult to prove, long period to sue and low compensation are closely related to the evidence. Insufficient evidence will lead to difficulties in finding out technical facts. It is also not conducive to the obligee to obtain the amount of compensation for actual losses. Chen Yaoyao combined with the relevant measures and typical cases of the Shanghai Intellectual Property Court, made a detailed introduction to the construction mechanism of intellectual property technical fact finding, technical investigators, technical advice, expert jury and other diversified technical fact finding mechanism caused hot discussion among Japanese enterprise representatives.

Source: Report of the People's Court

Date of issue: March 15, 2021

ZLWD Commentary:

Shanghai has become the most invested city in the world. As one of the global financial centers, Shanghai's stable economic development trend and high-quality business environment are very attractive to Japanese enterprises.

It is very important for foreign capital to understand China's intellectual property system in depth before carrying out business in China. Meanwhile, in recent years, there are many new judicial interpretations in the field of intellectual property rights in China, and there are many new measures in intellectual property trials. Such forum will facilitate Japanese enterprises with understanding China's intellectual property system and solve the problems of intellectual property protection.

Real or Fake Roast Duck? Counterfeit "Quanjude" Trademark was Revealed

“Quanjude” was recognized as a “well-known trademark” by the State Administration of Industry and Commerce in 1991. Today “Quanjude” has become the spokesman of “roast duck” in China.

Meanwhile, some people tried to sell the fake roast ducks. From June 2018 to August of the same year, the defendant Tan and others purchased a large number of packaging materials marked with the registered trademark of “Quanjude” without obtaining the ntrustment or authorization of China Quanjude Co., Ltd.. They sold fake “Quanjude” roast duck at low prices. With such fraud, counterfeiters sold RMB 430,000 in just two months. On December 20, 2019, the Beijing Fengtai District people's Procuratorate prosecuted, a packaging supplier, for selling illegally manufactured registered trademark logos, and then prosecuted Tan and other 6 people for counterfeiting registered trademarks. Finally, the Beijing Fengtai District People's Court gave a first instance judgment on Zhang and Tan and others on the crime of selling illegally manufactured registered trademarks and the crime of counterfeiting registered trademarks.

Source: Trademark Transfer Network

Date of Issue: March 15, 2021

ZLWD Commentary:

The protection of trademarks should be prepared ahead of time. The first step is to prevent the trademark from being registered by other people. Once the trademark is registered first by other people, it will certainly cause serious losses to the original user. As an enterprise or individual, they should remember the principle of “trademark is ahead of sale” and apply trademarks for their main products and services in advance. However, for important trademarks, it is not enough to apply for only the main classes. Enterprises shall try their best to apply for the related classes and auxiliary classes, and protect their trademark rights and interests from all aspects. At the same time, if the trademark has been registered, the status of the trademark can also be queried. If it has not been approved, it may also raise objections after the announcement of the first announcement. According to the provisions of the Trademark Law, any entity may raise objection to the trademark application within three months of the notice period after the trademark has passed the preliminary examination.

Using “Akesu” on Apples has Strict Rules

Recently, the Fujian High People's Court concluded a dispute over trademark infringement involving Akesu Apple.

Because it is believed that a fruit firm in Quanzhou, Fujian, selling apples with the words “Akesu” on the packaging, is suspected of infringing the association's trademark right of Akesu characters and Pictures (“the geographical indication certification trademark”), Akesu Apple Association sued the firm to the court and claimed for economic losses. However, the court of first instance did not support the Akesu Apple Association's claim that the firm’s act did not constitute infringement. Subsequently, Akesu Apple Association filed an appeal. Recently, the Fujian High People’s   Court gave a second instance judgment on the case, finding that the prominent use of the word "Akesu" by the fruit firm on apple products would make the relevant public mistake it for being associated with the geographical indication certification trademark and thereby constituting trademark infringement. The fruit firm shall stop the infringement and compensate for economic losses of RMB 5,000.

Source: China Intellectual Property News / China Intellectual Property Information Network

Date of Issue: March 15, 2021

ZLWD Commentary:

In this case, Akesu Apple Association enjoys the exclusive right to use the registered trademark of Akesu Apple No.5918994, which is a certified trademark. The trademark is controlled and supervised by the Akesu Apple Association, in order to prove the origin and quality of the apple. There are two requirements shall be met to use the trademark: (1) the apples produced and sold must come from a specific area of Akesu City, Xinjiang Uygur Autonomous Region, and the quality characteristics of the products must meet Akesu apples’ specific requirements; (2) they must apply to the Akesu Apple Association for permission to use the trademark. Without any of the above conditions, the use of the same or similar trademark on the same or similar products without authorization constitutes an infringement of the plaintiff's exclusive right to use the registered trademark of the Akesu Apple.

The case is a dispute over trademark infringement involving geographical indications. The second instance judgment not only clarifies the scope of protection of the rights of geographical indications, but also has a strong enlightening significance for similar cases.

Beijing High Court Ruled that Huarun Haojing Hotel Violated Huarun Group’s Trademark Rights

China Huarun (Group) Co., Ltd. (“Huarun”) is a well-known state-owned enterprise, its trademark No.773121 “Huarun” (“the Trademark”) has been approved for use in class 36, naming capital investment, real estate management and other services. Considering that Tianjin Huarun Haojing Hotel used the word “Huarun” in its business name, hotel management and advertising, such act was suspected of infringing the exclusive right to use the Trademark and constituting unfair competition. Huarun then sued Huarun Haojing Hotel to the court.

Recently, the case had its second instance judgment. The Beijing People's High Court held that the Huarun Haojing’s act constituted trademark infringement and unfair competition. The court rejected the appeal and upheld the first instance judgment of the Beijing Intellectual Property Court.

Source: China Intellectual Property News/China Intellectual Property Information Network

Date of Issue: March 18, 2021

ZLWD Commentary:

This case is a typical case of registering and using the enterprise name which is the same or similar to another famous brand.

Falsely using the famous enterprises’ name has been quite common in recent years. Therefore, relevant enterprises should raise the awareness of trademark protection and build their own trademark protection system by registering joint trademarks and defending trademarks. When choosing the name, the enterprise shall avoid the registered trademark, famous trademark or well-known trademark of others reasonably, so as to avoid the conflict of rights.

Outlets Lost for the First Time in China

On March 4, 2021, the Shanghai High People’s Court announced a ruling in favor of the Italian fashion brand Fendi Co., Ltd., which was established in 1925 and later acquired by LVMH Group. Fendi had sued Pioneer Capital Outlets (Kunshan) Commercial Development Co., Ltd. and Shanghai Yilang International Trade Co., Ltd. for trademark infringement and unfair competition over the use of the Fendi name on storefronts and marketing material. In this case, Fendi had no evidence to prove its losses, nor could it prove Yilang’s profit. Therefore, considering the reputation of the logo involved in the case, Yilang’s subjective fault, the nature, period, and consequences of the infringement, the court determined that Yilang Company should compensate Fendi Company 350,000 RMB, and Pioneer Capital Outlets shall bear joint and several liability for compensation.

Source: Pujiang Tianping

Date of Issue: March 19, 2021

ZLWD Commentary:

A parallel import is a non-counterfeit product imported from another country without the permission of the intellectual property owner. Parallel imports are often referred to as grey product and are implicated in issues of international trade, and intellectual property. Although China does not explicitly prohibit the act of parallel import, when merchants use commodity trademarks in order to explain or describe their own commodities, they must adopt reasonable ways and shall not convey the information that leads to confusion and misunderstanding among consumers, in order to avoid the consequences of infringement.

Li Keqiang Signed an Order of the State Council and Promulgated the "Decision of the State Council on Amending and Repealing Certain Administrative Regulations"

The "Decision of the State Council on Amending and Repealing Certain Administrative Regulations" will come into force on the first of March this year.

The Party Central Committee and the State Council attach great importance to the implementation of the Foreign Investment Law. The new regulation is aimed at standardizing business name registration, protecting the legitimate rights and interests of enterprises, maintaining social and economic order, and improving the business environment. Administrations for market regulation above county level will serve as registration authorities responsible for registering the name of enterprises established in China. Provincial-level administrations for market regulation should build an application system and database for business names within each local administrative region and make them open to the public. Registration authorities should enhance standardization of management to offer enterprises and people more efficient and convenient services. The regulation clarifies the “one name for one business” principle and promises legal protection for each business name. Business names should consist of standard Chinese characters, and in ethnic autonomous areas, ethnic characters can be used. The regulation requires that sector and operational characteristics be identified according to a company’s primary business and industrial classification standards for national economic activities.

Source: China Government Network

Date of Issue: January 19, 2021

ZLWD Commentary:

The main purpose of this revision is to implement the requirements of deepening the reform and optimizing the business environment. One of the biggest highlights of the revision is that the enterprise name is changed from the pre-approval system to the enterprise name independent declaration system. Article 16 and Article 18 clearly established an independent declaration system for the name of an enterprise, and the applicant shall independently select the name of the enterprise in accordance with the provisions, and undertake to the legal risks on its own. This is to reduce the government intervention in terms of direct allocation of enterprise name resources and the right to choose the name. The order is a determination of the pilot declaration programme. This is also a full respect for the right of enterprises to choose their own name.

Peppa Pig Declared Well-known Trademark in China

A defendant was ordered to pay RMB 30,000 over Entertainment One UK Ltd (eOne)'s losses for Peppa Pig trademark infringement, with Peppa Pig having been declared a well-known trademark in China, according to Shanghai Intellectual Property Court. The defendant surnamed Chen listed their products (LED lamps) sold online using the term "Peppa Pig" in addition to adding the name on the products' packaging.

Source: Shanghai Court of Intellectual Property

ZLWD Commentary:

Whether the registered trademark is well-known is not a prerequisite to judge whether a trademark used on the same or similar goods as a registered trademark misleads consumers, and whether the mark is identical or similar to the registered trademark. If the goods involved in the infringement act are of the same kind as the goods approved for use by the registered trademarks, the registered trademarks involved in the case can be protected subject to common protection rules provided in the Trademark Law, and there is no need to apply special protection for well-known trademarks. In the trial of trademark dispute cases, the people's court may determine whether the registered trademark is well-known upon the request of the parties and the specific circumstances of the case.

China has Made a Record on Numbers of Application at European Patent Office in 2020

According to the European Patent Index released by the European Patent Office (“EPO”), the number of patent applications submitted from China to the EPO in 2020 was 13432, an increase of 9.9% over the same period last year, and the number has created a new record. According to the European Patent Index, the EPO received 180250 patent applications in 2020, which was 0.7% lower than last year due to the pandemic. In absolute terms, the United States still has an advantage, accounting for 25% of total applications, 4.1% lower than last year. The rank was followed by Germany and Japan. China ranks fourth, accounting for 7% of all applications.

Sources: NIPA

https://www.cnipa.gov.cn/art/2021/3/24/art_55_157977.html: National Intellectual Property Office

ZLWD Commentary:

The quantity and quality of patents are an important indicator in measuring the strength of an enterprise's innovation strength. In recent years, with the continuous improvement of the intellectual property awareness of the Chinese market players, enterprises have gone abroad to layout intellectual property rights overseas. The significant increase in patent applications filed by Chinese applicants at the EPO demonstarted that Chinese enterprises’ intellectual property awareness is constantly improving, but they still need to fully understand and be familiar with overseas intellectual property systems and rules.

Supreme People's Court Issued Judicial Interpretation of Punitive Compensation for Intellectual Property Rights

On March 3, 2021, the Supreme People's Court issued the Interpretation of the Supreme People's Court on the Application of Punitive Compensation in Civil Cases of Intellectual Property Infringement. The judicial interpretation provides specific provisions on scope of application, content and time of the request, standard of subjective intention, standard of serious circumstances, and standard of  calculation base in the intellectual property civil case.

Source: Supreme People’s Court

http://www.court.gov.cn/fabu-xiangqing-288861.html: Supreme People's Court

ZLWD Commentary:

Since the PRC Trademark Law (amended in 2013) and the PRC Seed Law (amended in 2015) have first established punitive damages rules in legislation, later the PRC Competition Law, the PRC Patent Law (amended in 2020), the PRC Copyright Law and other intellectual property laws have all added punitive damages clauses, and then the PRC Civil Code implemented in 2021 provided copyright protection compensation system. The introduction of the said judicial interpretation now provided clear guidelines and adjudication rules for the intellectual property punitive compensation system, thereby increasing the punishment of serious infringements of intellectual property rights in accordance with the law, and comprehensively strengthening the protection of intellectual property rights.

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

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

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