No.185 December 28, 2021 |
| |
Subscribe |
 |
|
|
| |
Contact us |
|
|
|
| The Oriental Pearl TV Tower Of Shanghai |
|
|
| |
|
| |
|
|
| |
| Unitalen News |
|
| |
| |
In this issue
|
 |
|
|
 Announcement on Adoption of 2022 Version of the 11th Edition of Nice Classification
|
|
| |
| |
At the request of WIPO, all member states of the Nice Union shall adopt the 2022 version of the 11th edition of International Classification of Goods and Services for the Purposes of the Registration of Marks (i.e., the Nice Classification) beginning from January 1, 2022. The applications for trademark registration filed on and after this date shall adopt the new version for classes for goods and services, and the applications prior to this date shall adopt the previous one. Based on the Nice Classification, the Trademark Office of CNIPA has made corresponding adjustments to the Classification Table of Similar Goods and Services and hereby publishes the revision together with the Nice Classification.
Click to download: NCL(11-2022) Chinese version and revision in Classification Table
Trademark Office of CNIPA
December 27, 2021
(Source: CNIPA)
|
|
|
| |
| |
|
| China and Cambodia Sign the Memorandum of Understanding on Design Cooperation and Launch Design Recognition Project
|
|
| |
| |
On December 31, 2021, the Memorandum of Understanding between the CNIPA and the Ministry of Industry, Technology and Innovation of Cambodia on Design Cooperation was signed into effect, under which China and Cambodia will launch a design recognition project, and Cambodia will expedite the review of eligible relevant Chinese design applications.
The MOU is the first bilateral cooperation agreement signed by the CNIPA in the field of design, which clarifies the consensus on cooperation between China and Cambodia in the field of design, and will lead to the implementation of the China-Cambodia Design Recognition Project as soon as possible. The signing and implementation of the MOU will provide more convenient and efficient IPR services for innovation entities of both countries, promote the implementation of the "Belt and Road" IPR cooperation initiative, and enrich the content of the comprehensive strategic partnership between China and Cambodia.
(Source: CNIPA)
|
|
|
| |
| |
| 2021 Joint Statement of the ID5 Partners and 2021 Joint Statement of the TM5 Partners Published
|
|
| |
| |
On November 1-2 and 3-5, 2021, the CNIPA hosted the ID5 Annual Meeting and TM5 Annual Meeting respectively, via video. During the course of the meetings, the CNIPA, the European Union Intellectual Property Office (EUIPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the United States Patent and Trademark Office (USPTO) (known as "the Partners") reached consensus on the content of the 2021 Joint Statement of the ID5 Partners and the 2021 Joint Statement of the TM5 Partners respectively. The two statements have gone through all the approval procedures and have been officially published.
(Source: CNIPA)
|
|
|
| |
| |
| China-Portugal (Portugal) Patent Prosecution Highway (PPH) Experiments Extended for Another Five Years
|
|
| |
| |
According to the joint decision of CNIPA and INPI, China-Portugal (Portugal) Patent Prosecution Highway (PPH) Experiments will be extended for another five years from January 1, 2022 until December 31, 2026. Relevant requirements and process of submitting PPH requests in the two sides will remain unchanged.
CNIPA started the PPH experiments with INPI on January 1, 2014, which have been extended twice and was scheduled to be terminated on December 31, 2021.
(Source: CNIPA)
|
|
|
| |
| |
| The 15th Meeting of Directors Between CNIPA and EPO Held
|
|
| |
| |
Recently, the 15th Meeting of Directors Between CNIPA and EPO was held via video. Shen Changyu, Commissioner of CNIPA, and António Campinos, President of the EPO, attended the meeting.
Shen Changyu said that the results of the cooperation between CNIPA and EPO are benefiting more and more IPR users and serving innovation and economic and social development in China and Europe. Shen hoped the joint efforts of the two sides to deepen the cooperation between CNIPA and EPO and achieve more fruitful results.
António Campinos said that under the current global COVID-19 pandemic situation, Chinese users continue to see significant growth in the number of patent applications to Europe, and the quality of applications is improving rapidly, and the EPO will actively provide better services to meet the needs of Chinese users. He hoped that the two sides would actively share their advanced experience in the future and continue to open up new horizons of cooperation.
After the meeting, the two sides signed the 2022 annual work plan for cooperation between CNIPA and EPO and the agreement related to EPOQUE Net.
(Source: CNIPA)
|
|
|
| |
| |
|
|
|
|
|
|
|
|
|
| Cases in Spotlight
|
|
| |
| Unitalen Representing Kingdee for Rights Protection Won Again: Disclosure and Use of Client Lists by the Resigned Former Employee Constituted Trade Secrets Infringement
|
|
| |
|
|
Case Brief:
Established in the 1990s, Plaintiff Kingdee has been engaged in financial software and financial voucher paper for many years and is a leader in the industry.
Huang Yang signed a "Labor Contract" with Kingdee in April 2008. The contract period is from April 2008 to April 2011. Huang Yang was engaged in sales and service. In July 2012, Kingdee appointed Huang Yang as the director of the western region, responsible for procurement logistics and sales in Chengdu. In June 2013, Huang Yang resigned from the Plaintiff.
The company Moneywise was established in July 2012. From January 2013 to December 2014, Kingdee authorized Moneywise as "Golden Partner" and "Platinum Distribution Partner" and the like. In April 2014, Kingdee issued the professional qualification certificate of "2014 KIS Flagship Implementation" to Huang Yang. In August 2015, Huang Yang became a shareholder of Moneywise with a 100% shareholding and served as the legal representative. In July 2020, just after the case was filed, the legal representative of Moneywise was changed to Zhou Guoxiu.
Kingdee conducted transactions with Company A from January 2009 to May 2015, with Company B from January 2009 to March 2015, and with Company C from May 2011 to April 2015 on accounting vouchers and the like, and issued invoices with the unit price of X.
After the plaintiff terminated the authorization to Moneywise in December 2014, Moneywise issued invoices with the three companies A/B/C from March 2015 to October 2017, and the two sides conducted transactions on accounting vouchers, and the unit price was also X.
Kingdee believes that the aforementioned acts of Huang Yang and Moneywise have infringed on the trade secrets it misappropriated on the client lists and filed a lawsuit with the Chengdu Intermediate People's Court in July 2020, claiming that Huang Yang and Moneywise infringed on its trade secrets, which constituted an unfair competition.
Court Judgment:
After trial, the Chengdu Intermediate People's Court made a judgment on this case on September 27, 2021, ordering Huang Yang and Moneywise to immediately cease using the plaintiff's trade secrets of the plaintiff in the form of client lists from the date when the judgment took effect; and ordering Huang Yang and Moneywise to jointly and severally compensate the plaintiff Kingdee for economic losses and reasonable expenses. At present, the defendant has not filed an appeal, and the judgment of the case has come into effect and is final.
Typical Significance:
This case is a classic case made by the Chengdu Intermediate People's Court on the trade secrets of client lists. The judgment of this case has a strong warning effect on the internal risk prevention and control of enterprises. The typical significance of this case is mainly manifested in the two aspects: "determination of the constituent elements of the client lists" and "determination of the infringement on trade secrets by resigned employees".
|
|
|
| |
| |
| Unitalen Representing the Famous Accounting Firm Grant Thornton Won in the First-Instance of the Civil Lawsuit of Brand Right Protection
|
|
| |
|
|
Case Summary:
Grant Thornton, formerly known as Beijing Accounting Firm, was established in 1981. It is the first accounting firm in Beijing since the reform and opening-up and is one of China's first accounting firms. It has gradually developed into a comprehensive business consultant that can provide a full range of professional services such as auditing, taxation, consulting, appraisal and valuation, and project management. In 2009, Grant Thornton Joined GTIL (Grant Thornton International Ltd) and became the only member firm of GTIL in China. In 2012, it officially changed its name to "Grant Thornton (Zhi Tong)", and "(Zhi Tong Guo Ji)" has become its only Chinese name used in the world. Clients of Grant Thornton include Sinopec Group Co., Ltd., Sinopec Xinjiang Energy & Chemical Co., Ltd., Sinopec Engineering (Group) Co., Ltd., Zhongtong Guomai Communication Co., Ltd. and other well-known large domestic enterprises.
Grant Thornton is the owner of the "Grant Thornton (Zhi Tong)" trademark approved and registered on services such as Class 35 accounting, Class 36 financing services, and Class 42 intangible asset assessment, and is authorized by GTIL to use the trademark " " on Class 35 accounting services and the figurative trademark " " on Class 36 financial services, and have the right to defend the rights of these two figurative trademarks. After a long period of extensive publicity and use, the above-mentioned trademarks have gained high recognition and influence.
Zhi Tong (Suzhou) Assets Appraisal Co., Ltd. was established in April 2019 with its registered address in Suzhou Industrial Park. In September 2021 (during the course of the first instance), it was renamed "Cai Xin (Suzhou) Assets Appraisal Co., Ltd.". In 2020, Zhi Tong (Suzhou) Assets Appraisal Co., Ltd. used "  " as the icon of its WeChat official account, and used the expression "[致同] (Zhi Tong)" in the "About Us" section at the end of articles published on the official account. In addition, Zhi Tong (Suzhou) Assets Appraisal Co., Ltd. also abbreviated the company as "Zhi Tong Appraisal" in the "Company Profile" section of its official website, and used the word "致同 (Zhi Tong)" and logo " " on the first page of the "Asset Appraisal Report" issued by it. Before the name change of Cai Xin, the full name of "Zhi Tong (Suzhou) Assets Appraisal Co., Ltd." was used in many places such as the WeChat public account name, official website, company registered address, office, and the "Assets Appraisal Report" issued. Even at the end of the WeChat public account article, it stated that its "headquarter is in Beijing", and declared on the official website that it "has served many well-known domestic and foreign enterprises such as Petro China, Sinopec ..."
Under the circumstance that the warnings did not work, Grant Thornton entrusted Unitalen to file a lawsuit against Zhi Tong (Suzhou) Assets Appraisal Co., Ltd. After accepting the entrustment, mainly starting from the two aspects of the trademark reputation and the infringer's subjective maliciousness, Unitalen lawyers did a lot of preparation work mainly in the two aspects of determining the nature of infringement and quantifying the compensation.
Court Judgment:
After trial, the Suzhou Intermediate People's Court of Jiangsu Province held that Cai Xin's act of using "致同 (Zhi Tong)" and the commercial logo " " constituted trademark infringement, and the use of the brand name "致同 (Zhi Tong)" as its corporate name and publicity constituted unfair competition. The declaration that its "headquarter is in Beijing" and "has served many well-known domestic and foreign enterprises" constituted unfair competition of false advertising that misled the public, Thus, the court ordered Cai Xin to immediately cease the infringement on the disputed trademark and unfair competition, and publish a statement to eliminate the impact, and compensate Grant Thornton for its economic losses and reasonable expenses totaling RMB 1 million.
After receiving the first-instance judgment, Cai Xin once took the initiative to contact Grant Thornton to express its willingness to obey the first-instance verdict, and tried to communicate about the execution and settlement of the judgment. It has now appealed against the first-instance judgment under the condition that the communication between the two sides failed.
Typical Significance:
This case is Grant Thornton's first right protection case through civil prosecution for brand protection. Through this right protection, not only its legal rights and interests are initially protected, but other infringers and potential infringers can also be deterred to a certain extent.
|
|
|
| |
| |
| Over 100 Transactions Characterized as Symbolic Use Without Real Intention of Use, Unitalen Successfully Reversed the Case in the Second Instance to Revoke the Preemptively Registered "EVISU" Trademark
|
|
| |
|
|
Recently, Unitalen represented Gear Up International Limited, the owner of the well-known fashion brand " ", and won the final judgment at Beijing Higher People's Court in the administrative litigation case of the revocation review of trademark "EVISU" preemptively registered by Luo, after trials of the revocation for cease of use for three consecutive years, revocation review, first instance, and second instance.
Case Brief:
The trademark in dispute " " is a registered trademark by a natural person named Luo on Class 9 "loudspeakers, microphones, headphones, insert earphones, audio connectors, portable media players" and other goods. In order to prove the actual use of the trademark, the registrant has submitted the notarized certificates of more than 100 sales of goods with the disputed trademark. The Beijing Intellectual Property Court determined in the first instance that these evidence could prove the actual use of the disputed trademark on goods such as "insert earphones", and maintained the effective registration of the disputed trademark.
In the second instance, Unitalen attorneys carried out in-depth investigation and analysis. First, they analyzed in detail the online store sales records recorded in the notary certificates and found out the multiple contradictory and conflicting order information and proved that there were acts of click farming between affiliated companies. Such acts of click farming online which were not for real transaction purpose or which were for an improper purpose should not be identified as an act of using the trademark that can maintain the registration of the disputed trademark. Second, the attorneys presented evidence to prove the following facts: the time when the right holder planned to purchase the disputed trademark from the registrant of the disputed trademark, the time of more than 100 online transactions using the disputed trademark, and the evidence for that the registrant of the disputed trademark used to provide help for the crime behavior of selling the "earphones" goods with the counterfeit registered trademark. All of these played a key role in the court's judgment on whether the registrant had a real intention to use the trademark subjectively, which further consolidated that the registrant did not have a real intention to use the disputed trademark. Therefore, although the number of transaction records of the disputed trademark seemed to be quite large, the transaction of these "insert earphones" goods was a symbolic transaction carried out to maintain the trademark registration, which was not enough to produce the legal effect of maintaining the effective registration of the disputed trademark.
In the end, the Beijing Higher People's Court cancelled the first-instance judgment and supported the appeal request of the right holder Gear Up International Limited that the trademark in dispute should be revoked.
Typical Significance:
This case breaks through the conventional nature determination of symbolic transaction behavior. Through the multi-party investigation and evidence of the attorneys, "the symbolic transaction is determined by the false transaction records formed by click farming or related party transaction", which proves that the use evidence without the real intention of use in essence cannot be identified as valid evidence of trademark use even if it is dressed in a legal form of evidence.
|
|
|
| |
| |
| |
|
| |
|
|
|
|
| |
|
| Unitalen News
|
|
| |
|
|
| 13 Senior Attorneys of Unitalen Were Selected into the Expert Database of IPR Protection Services of Beijing Patent Attorneys Association
|
|
| |
| |
|
Recently, Beijing Patent Attorneys Association published the "(2021) Expert List of Beijing Patent Attorneys Association's IPR Protection Service Expert Database", and a number of Unitalen attorneys were selected. Among them, 10 experts of Unitalen's senior attorneys Ding Mei, Wang Baojun, Liu Wenxin, Du Yanxia, Li Xinyan, Zhang Chunshui, Zheng Bin, Guo Huayu, Dong Min, and Shu Yanjun were selected into the training expert database, and 3 experts of Li Daidi, Shan Fangfang, and Xue Chenguang were selected into the expert database of rights protection volunteers.
|
|
|
| |
| |
|
|
|
|
|
|
|
|
