No.164 December 28, 2019 |
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| The Fragrant Hill in Beijing |
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In this issue
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 CNIPA Published “Guidelines for Handling Cases of Administrative Adjudication Concerning Patent Infringement Disputes”
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Recently, the National Intellectual Property Administration (CNIPA) issued the "Guidelines for Handling Cases of Administrative Adjudication Concerning Patent Infringement Disputes"(hereinafter referred to as the“Guide”), which aims to further strengthen the protection of patent rights and improve the efficiency and quality of administrative adjudication concerning patent infringement disputes.
The main text of the “Guide” is divided into five chapters. The first chapter clarifies the basic concepts of administrative decision on patent infringement disputes, as well as jurisdiction, avoidance, agency, and delivery. Chapter II deals with standardization of the case handling procedures such as acceptance, examination, evidence investigation, and case trial; Chapter 3 clarifies the determination of various patent infringements; Chapter 4 specifies the basic concepts and general rules of evidence, and the examination and identification of typical evidence; Chapter V explains the infringement determination of various types of patents and the relevant principles of infringement determination.
CNIPA stated that the "Guide" is based on law enforcement practices related to the handling of patent infringement disputes, to further refine and improve the procedures and substantive standards for administrative decisions on patent infringement disputes, so as to better protect the rights of parties .
(Source: China National Intellectual Property Strategy Network)
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| Strengthened CNIPA and EPO Cooperation within PCT Framework – China PCT Applicants Expect Reduced Examination Time
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At the 13th China-Europe Directors Meeting held by the China National In-tellectual Property Administration (CNIPA) and the European Patent Office (EPO), an important consensus was reached on the appointment of the EPO as the International Searching Authority for PCT international applications filed with the CNIPA, thereby strengthening the bilateral cooperation of the both offices within the PCT framework. The cooperation is expected to be implemented in 2020, with a two-year pilot offered to international applications filed in English.
This cooperation will provide Chinese PCT applicants with more options to optimize their international patent strategy. Choosing the EPO as the International Searching Authority can save nearly one year for Chinese PCT applicants who’d like to speed up their applications. Their PCT international applications can enter the European phase earlier, and the examination can be conducted directly without the need for a supplementary search in Europe.
(Source: CNIPA official website)
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| The 19th China-Japan-South Korea IP Office Directors Meeting Held in Japan
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On December 4, 2019, the 19th China-Japan-South Korea IP Office Directors' Meeting was held in Kobe, Japan. Shen Changyu, director of the China National IP Administration, Song Yongming, director of the Japan Patent Office, and Park Harajuku, director of the Korean Patent Office, attended the meeting.
At the meeting, the three offices reported the latest progress of the IP work in their respective countries, and conducted in-depth discussions on industrial design, trademark, review, human resources, cooperation among IP institutions of the three countries, and seminars for IP users in the three countries; they also exchanged views on the development of new technologies such as AI. The three offices decided that the 20th Directors' Meeting will be held in South Korea in 2020.
It is reported that the total annual trade between China, Japan, and South Korea reached 7.25 trillion US dollars. Strenthened IP cooperation among the three countries has nurtured for a good business environment to support the economic development in the three countries.
(Source: China National Intellectual Property Administration)
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| Cases in Spotlight
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| Unitalen Client DJI Won the Litigation Concerning Trademark Infringement and Unfair Competition– DJI Recognized as Well-known Mark for the First Time in Court
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Case Summary:
On November 22, 2012, Shenzhen Da-Jiang Innovations Technology Co., Ltd. (hereinafter referred to as "DJI Technology") applied to register the "大疆” (Da-Jiang, DJI) trademark in respect of “aircraft” goods in Class 12, which was approved by the SIPO. After substantial uses and promotion, the registered trademark is qualified to be recognized as well-known trademark.
Shenzhen Da-Jiang Industrial Co., Ltd. (hereinafter referred to as "Da-Jiang Industrial") uses “大疆” (Da-jiang) as its business name and manufactures, sells, and promotes mobile phones that use the "大疆" logo. DJI Technology held that, although the mobile phone product labelled with “大疆”logo are different from the "aircraft" and other goods approved for use by the registered trademark of DJI, the "aircraft" product involved (DJI drone) is usually used in conjunction with a mobile phone, there is a certain association in between both; In addition, the registered trademark "大疆" shall constitute a well-known trademark, which can realize the protection of trademark rights across classes, therefore, the production, sale and promotion of mobile phones bearing the "大疆" logo shall constitute trademark infringement; the use of "DJI" in the business name constitute an unfair competition act. Therefore, DJI entrusted Unitalen Attorneys at Law to file a lawsuit against Da-Jiang Industrial for the above-mentioned charges.
Court Decision:
The Beijing IP Court found that after the trial of the case, the "大疆" trademark of DJI had been qualified as a well-known trademark when the infringement indicted in this case occurred; therefore, Da-Jiang Industrial had constituted trademark infringement with production, sale, and promotion of mobile phones bearing the "大疆" logo, and unfair competition with the use of "大疆" in the business name. As a result, the following ordered were ruled out:
1.Da-Jiang Industry Co. Ltd. to immediately stop the infringement of the exclusive right to use the registered trademark involved, that is, to stop using the word "大疆" in the production, sales and publicity activities involved.
2.Da-Jiang Industry Co. Ltd. to immediately stop the improper conduct involved, that is, to stop using the business name containing "大疆".
3.Da-Jiang Industry Co. Ltd. to publish statements in the Guangzhou Daily and the company's official website for 30 consecutive days within 30 days of the effective date of this ruling to eliminate the adverse effects caused by infringement.
4.Da-Jiang Industry Co. Ltd. to compensate DJI Technology for economic losses of RMB 500,000 and reasonable expenses of RMB 134,302 within 10 days of the effective date of this ruling.
Typical Significance:
This case confirmed for the first time in the form of a judicial judgment that the popularity of the "大疆" trademark has met the benchmarks for recognition as a well-known trademark, determined the factors in the consideration for cross-class protection of well-known trademarks, and provided the basis for determining the occurrence of multiple infringements.
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| Unitalen Client Power Decker Won the First Instance Litigation Concerning Trademark Infringement and Unfair Competition – RMB 1M Indemnity Ordered to Punish Malicious Infringement
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Recently, the Qingdao Intermediate People's Court of Shandong Province made a first-instance judgment. Unitalen client Power Decker Group Co., Ltd. (hereinafter referred to as “Power Decker Group”) won the in the litigation against Jining Shengxiang Wood Co., Ltd. (hereafter referred to as “Shengxiang Wood Co.”) and other five defendants in a trademark infringement and unfair competition dispute.
Case Summary:
Power Decker Group, the plaintiff, is the prior owner of the "圣象" (pinyin as “Shengxiang”) trademark and business name. It enjoys exclusive rights to use the "圣象" series of registered trademarks on “flooring” products and so on in Class 19. After long-term extensive use and publicity activities, the "圣象" logo has been repeatedly recognized by the Trademark Office and courts as a well-known trademark on goods such as "flooring" since 2005.
The defendant Shengxiang Wood was established in 2010. It used "Jining Shengxiang Wood Industry Co., Ltd.", "Shandong Shengxiang Wood Industry Co., Ltd.", “Shengxiang Woods”, “Jining Shengxiang Flooring” and so on in its production and sales of wooden flooring products and packaging, in its business premises and its official website articles. Also it used the plaintiff’s registered trademark “圣象”and the long-existing English name "Powerdekor" as translation in ex-hibitions, brochures and business cards without authorization. In addition, the defendant used propaganda terms such as "CCTV strategic partners", "Chinese famous brands" and "quality for 20 years since 1996" in product packaging and website sales promotion. The above actions are intended to take advantage of the plaintiff's "圣象" trademark reputation and mislead consumers.
In the process of investigating and collecting evidence, Unitalen had discovered the other four subjects that shall be listed as defendants in this case, including the owner of the trademark "濟象" (pinyin as “Jixiang”) , which was used in the infringing product, the legal representatives and shareholders of Jining Shengxiang Wood Industry and an associated company in Jining, who also used their personal bank account for receiving payments of product sales; a company in Qingdao that provided business card and sales invoice in the name of Shengxiang Wood during the sales of the infringing product. All of them were charged for joint tort liability.
Court Decision:
After hearing, the court ruled the following orders:
Jining Shengxiang Wood Industry Co., Ltd. shall cease to infringe on the plaintiff's trademark rights and cease the unfair competition acts; the company name shall be changed, within 30 days of the verdict coming into effect, and the name shall not be identical or similar to “圣象”.
The amount of indemnity in this case is based on comprehensive consideration in distinctiveness and popularity of the plaintiff's trademark, the subjective maliciousness of the defendant, the duration and scope of the infringement involved, the sales volume of the goods involved, and the profit made, aiming to increase the compensation for malicious infringement. So that defendants shall compensate the plaintiff for the economic loss of 1 million yuan and the corresponding reasonable expenditure of 171,000 yuan.
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