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| No.205 August 28, 2023 | | In this issue |
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| Joint Statement on a 10 Year Vision for IP Cooperation among China, Japan and Korea | | WIPO Treaty on Intellectual Property, Genetic Resources, and Associated Traditional Knowledge Approved | | Hong Kong will Issue Electronic Certificates of Registration/Grant for Trade Marks, Patents and Designs | | China and France Renew Protocol for Cooperation on Geographical Indications | | CNIPA-ARIPO PPH Pilot Program to be Launched on June 8, 2024 | | Cases in Spotlight |
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| Unitalen Representing Xu's Rice in Striking against "Malicious Lawsuit" regarding Design Patent of Rice Packaging and in Copyright Protection, Winning the Final Judgments of Both Cases | | Unitalen Represented the Famous Cosmetic Brand SOME BY MI from South Korea in Winning the Rights Protection Lawsuit regarding the Packaging and Decorations of a Series of Skincare Products | | Unitalen representing Jinsha Wine in a Civil Case of Trademark Infringement against "Jinsha Gusha" and Supported by the Supreme People's Court | | Unitalen News |
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| Two Cases Represented by Unitalen Selected into Top 10 Typical Cases of Trademark Litigation and Non-litigation in 2023 by Beijing Trademark Association | | Unitalen Selected into the "TRADEMARK AGENCY TOP 40 FOR FOREIGN-RELATED" | | Unitalen Selected into "MOZLEN 500" Top 10 of China Professional Foreign-related Trademark Agencies in 2024 with Ranking Level of "AAA+++" | | Unitalen Honored in the Managing Intellectual Property IP STARS 2024 List in the Trademark Field, and Multiple Partners Awarded IP STARS "Patent Star" & "Trademark Star" | | The 17th Unitalen IP Forum Successfully Held with Focus on Enterprise IP Management under the Context of Rapid Development of AI |
| | In this issue |
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Joint Statement on a 10 Year Vision for IP Cooperation among China, Japan and Korea |
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On May 27, 2024, the leaders of the Republic of Korea, Japan, and the People's Republic of China, convened in Seoul, Republic of Korea, on the occasion of the Ninth Trilateral Summit.
The leaders of the three countries instructed that over the next decade:
1. The three offices (the Korean Intellectual Property Office (KIPO), the Japan Patent Office (JPO), and the China National Intellectual Property Administration (CNIPA)) establish an IP (Intellectual Property) system that can accommodate and embrace fast-changing technologies;
2. The three offices make joint efforts to enhance public accessibility of patent information and encourage utilization of patent information by the private sector; and
3. The three offices strive to expand IP cooperation beyond the three countries to include other countries or regions in order to share the valuable achievements that the three offices have made together in pursuit of "Trilateral + X" IP Cooperation.
Full text attached: Joint Statement on a 10-Year Vision for Trilateral IP Cooperation
(Source: Xinhua News Agency) 
| WIPO Treaty on Intellectual Property, Genetic Resources, and Associated Traditional Knowledge Approved |
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From May 13 to 24, the World Intellectual Property Organization (WIPO) held a diplomatic conference on an international legal instrument concerning intellectual property, genetic resources, and associated traditional knowledge of genetic resources in Geneva, Switzerland, successfully approving the Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge. The Treaty was concluded after a 25-year negotiation. LU Pengqi, Deputy Commissioner of the CNIPA, led the Chinese government delegation to the meeting.
(Source: website of the CNIPA)
| Hong Kong will Issue Electronic Certificates of Registration/Grant for Trade Marks, Patents and Designs |
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Recently, the Intellectual Property Department of the Government of the Hong Kong Special Administrative Region of the People's Republic of China announced that, with effect from June 28, 2024, the Trade Marks, Patents, and Designs Registries will launch a new service of issuing electronic certificates of registration/grant for trademarks, patents, and designs.
Implementation arrangements for issuance of electronic certificates of registration/grant for trademarks, patents, and designs:
https://www.ipd.gov.hk/filemanager/ipd/common/Electronic%20Certificates_English.pdf
(Source: website of the Intellectual Property Department of the Government of the Hong Kong Special Administrative Region of the People's Republic of China)
| China and France Renew Protocol for Cooperation on Geographical Indications |
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During Chinese President Xi Jinping's visit to France, the CNIPA, together with the Ministry of Agriculture and Food Sovereignty of the French Republic and the National Institute of Origin and Quality, renewed the Protocol for Cooperation between the CNIPA of the People's Republic of China and the Ministry of Agriculture and Food Sovereignty of the French Republic and the National Institute of Origin and Quality on Agricultural and Food Geographical Indications.
(Source: website of the CNIPA)
| CNIPA-ARIPO PPH Pilot Program to be Launched on June 8, 2024 |
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Following a joint decision by the CNIPA and the African Regional Intellectual Property Organization (ARIPO), the CNIPA-ARIPO Patent Prosecution Highway (PPH) Pilot Program starts on June 8, 2024, and will run for five years, until June 7, 2029.
Procedures to File a Request to the CNIPA for Patent Prosecution Highway Pilot Program between the CNIPA and the ARIPO.pdf
Procedures to File a Request to the ARIPO for Participation in the Patent Prosecution Highway Pilot Program between the ARIPO and the CNIPA.pdf
(Source: website of the CNIPA)
| | Cases in Spotlight |
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Unitalen Representing Xu's Rice in Striking against "Malicious Lawsuit" regarding Design Patent of Rice Packaging and in Copyright Protection, Winning the Final Judgments of Both Cases |
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On the morning of May 29, 2024, the High People's Court of Jilin Province held a public hearing over a case arising from a design patent infringement of rice packaging. In this case, XU Jiaxin, a senior judge of the second grade of the People's Republic of China and the president of the High People's Court of Jilin Province, served as the chief judge. This hearing was live-streamed throughout via over 50 media and platforms, including the China Media Group account of the program At the Scene of the Trial, Tiktok, Kuaishou and Channel of Xinhua News Agency, Channel of People's Court Daily, and Tiktok and Weibo account of the High People's Court of Jilin Province.
Case Brief
Founded in 2012, Xu's Rice Company is a company engaged in the production and sale of rice in Qianguo County, Jilin Province. In September 2021, Xu's Rice Company received a notice from the Changchun Intermediate People's Court in which Wei, the patentee of the design, sued Xu's Rice Company for patent infringement. Wei then withdrew the lawsuit in October 2021. On July 7, 2022, Wei again filed a lawsuit against Xu's Rice Company for design patent infringement in Songyuan Intermediate People's Court (hereinafter referred to as the "Case No. 28"). In this regard, Xu's Rice Company entrusted the attorneys of Beijing Unitalen Law Office to respond to the lawsuit.
In handling Case No. 28, the undertaking attorneys of Unitalen found out that, regarding Evidence 2 submitted by the plaintiff, in the Patent Right Evaluation Report issued by the CNIPA, it has been determined that a patent right for design shall not be granted to the patent involved, and all of the three prior documents cited are patent documents of design of the packaging bags of Xu's Rice Company. Moreover, the patent involved has been declared to be invalid before the lawsuit filed by Wei. Therefore, Wei was suspected of infringing the lawful rights and interests of Xu's Rice Company by maliciously filing the IP lawsuit. After communicating with the client, the undertaking attorneys claimed counter-compensation in the lawsuit. In the ruling of the first instance, the Songyuan Intermediate People's Court dismissed the lawsuit filed by the plaintiff and ruled that the counter-compensation request may be brought forward in a separate lawsuit. Neither party appealed after.
After Case No. 28 was closed, the undertaking attorneys advised the client to strike back. On the one hand, the registered addresses of Xu's Rice Company and Mi Lao Da Rice Company are near to each other; and Wei sells small grain rice in Mengzi, Yunnan through Mi Lao Da Rice Company of Qianguo County, whose distributors used to act as agents in the sale of small grain rice of Xu's Rice Company, and thus Wei possesses a "subjective bad faith". On the other hand, Xu's Rice Company completed the design of the sued rice packaging bags as early as 2014 and is the original copyright owner. The packaging bags used by Mi Lao Da Rice Company were confusingly similar to those of Xu's Rice Company. Therefore, counterclaims can be filed to defend against Wei's abuse of the procedural rights and Mi Lao Da Rice Company's copyright infringement and unfair competition.
In May and August 2023, the attorneys of Unitalen, on behalf of the client, filed two main lawsuits (hereinafter referred to as "Case No. 38" and "Case No. 19" respectively) of rights protection in the court of the first instance against Wei's malicious lawsuit infringement case and Mi Lao Da Rice Company's copyright infringement and unfair competition case, respectively, formally initiating rights protection by striking back.
In Case No.38, the court of the first instance determined that Wei constituted malicious litigation and should compensate the plaintiff for 100,000 yuan. Wei was not satisfied with the ruling of the first instance and appealed to the High People's Court of Jilin Province. On May 29, after the public hearing, the High People's Court of Jilin Province pronounced in court that Wei constituted malicious litigation and changed the compensation amount to 60,000 yuan.
In Case No.19, the court of the first instance determined that the two defendants constituted copyright infringement and unfair competition, and ruled that the two defendants should compensate the plaintiff for 100,000 yuan in total. The two defendants were not satisfied with the ruling and lodged an appeal. The High People's Court of Yunnan Province made a ruling on the second instance on May 29, in which it was determined that the two defendants infringed the plaintiff's copyright, and that the compensation amount determined in the first instance was not inappropriate, but the judgment was changed to be that the act of the two defendants did not constitute unfair competition because the evidence submitted by the plaintiff was insufficient to prove the popularity of the packaging thereof.
At this point, from passive participation in patent infringement litigation to active counterattack, the attorneys of Unitalen filed counterclaims and initiated lawsuits of IP rights protection in accordance with the law, turning the tables on behalf of the client. In the end, the rulings of winning the final judgments on the second instance of the two cases were received on the same day. The legitimate rights and interests of the client were safeguarded, and the illegal acts were cracked down.
Comparison of the rice packaging involved
Typical Significance
As the first damage liability dispute case over IP litigation filed maliciously in Jilin Province, the trial of the case of "counterclaim against malicious lawsuit" was live-streamed via China Media Group, and the judgment was pronounced in court, which actively promoted to the public the relationship and legal boundaries between the protection of IP rights to promote innovation and the maintenance of fair competition and honesty and credit system.
| Unitalen Represented the Famous Cosmetic Brand SOME BY MI from South Korea in Winning the Rights Protection Lawsuit regarding the Packaging and Decorations of a Series of Skincare Products |
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Case Brief
SOME BY MI(莎柏蜜) is a skincare brand from South Korea. The "AHA BHA PHA" tea tree tri-acid series and "SNAIL TRUECICA" black snail series of skincare products under its name are loved by many local consumers, especially among young women. In 2016, the plaintiff LEE JI EUN incorporated a company named Perennebell Co., Ltd. in South Korea, which is the producer and operator of the SOME BY MI skincare products. In March and May 2017 respectively, LEE JI EUN applied with the CNIPA for the registration of the trademarks No. 23315134 for "SOMEBYMI", No. 24310778 for " ", and No. 24311015 for " " in Class 3, and successively publicized and promoted the series of skincare products through third parties in 2018 and 2019, so that the brand has accumulated a certain degree of popularity in the field of cosmetic consumption in China.
In 2021, the plaintiff entrusted the Beijing Unitalen Law Office to conduct an investigation, in which it was found that the product packaging and decoration of "Tea Tree Acne Clearing and Whitening Toner", "Tea Tree Cleansing Bar" and other skincare products produced, sold and promoted by the defendant Shantou S.E.Z Baojie Industrial Co., Ltd. directly copied and imitated the above plaintiff's packaging and decoration designs of the tea tree tri-acid series of cosmetics and the black snail serum of "SOME BY MI/莎柏蜜" which already had relatively high popularity and influence. The defendant used labels similar to those of the plaintiff, leading to confusion and misunderstanding among consumers. Therefore, as the person benefiting from the rights and interests of the packaging and decoration of the tea tree tri-acid and the black snail serum, the plaintiff appealed to the Shantou Intermediate People's Court in Guangdong Province. The Shantou Intermediate People's Court ruled that the packaging and decoration of the tea tree tri-acid and the black snail serum claimed by LEE JI EUN constitute the packaging and decoration with certain influence and that the act of S.E.Z Baojie Industrial Co., Ltd. in producing and selling the tea tree tri-acid and the black snail serum constitutes unfair competition. As the compensation amount did not meet the plaintiff's expectations, the plaintiff later appealed to the High People's Court of Guangdong Province, which made a ruling of upholding the first instance ruling ultimately.
Comparison of packaging and decoration
Case Analysis
One of the difficulties of the case is whether LEE JI EUN is the qualified plaintiff of the case. In the first and second judgments, both the Shantou Intermediate People's Court and the High People's Court of Guangdong Province determined that LEE JI EUN, as the right holder of rights and interests of two distinctive decorative and commercial labels in China, had the right to file a separate lawsuit against the infringement act. Therefore, LEE JI EUN is the qualified plaintiff in both cases.
Another difficulty of the case is the determination of constituting unfair competition act of the unauthorized use of another person's packaging and decoration with certain influence. The courts of the two instances determined that the act of S.E.Z Baojie Industrial Co., Ltd. in producing and selling the tea tree tri-acid series products and the black snail serum constitutes unfair competition under the provision of "using without permission a label identical or similar to the name, packaging or decoration, among others, of another person's commodity with certain influence" of Article 6.1 of the Anti-Unfair Competition Law, and the defendant shall assume the corresponding civil liability.
Typical Significance
The Anti-Unfair Competition Law, as a behavioral law regulating the business activities of market subjects, is not a subjective law focusing on the special protection or restriction of certain types of subjects. In order to avoid giving the knockoff brands a chance, enterprises, while attaching great importance to the trademarks, should also pay attention to the packaging and decoration of products. For example, in the beginning of business cooperation or putting the products on the market, enterprises should sign the authorization document, save the sale data, and take other measures to make plans ahead so as to improve the chances of winning the lawsuit in rights protection.
| Unitalen representing Jinsha Wine in a Civil Case of Trademark Infringement against "Jinsha Gusha" and Supported by the Supreme People's Court |
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Recently, regarding the trademark infringement dispute case between Guizhou Jinsha Cellar Wine Co., Ltd. (hereinafter referred to as the Jinsha Wine), represented by Unitalen, and Guizhou Jinsha Andi Dou Liquor Co., Ltd and Guizhou Jinsha Gu Liquor Co., Ltd. (hereinafter referred to as the Andi Dou Liquor Company and Jinsha Gu Liquor Company, respectively) and others, the Supreme People's Court made a retrial decision and upheld the second instance judgment made by the High People's Court of Shandong Province. Unitalen achieved a victory in rights protection representing the client.
Case Brief
The Jinsha Wine is the oldest existing brewery in Jinsha County, Guizhou Province, formerly known as Jinsha Cellar Winery, which was founded by the local government in the 1950s. Famous wines made by the Jinsha Wine, such as "金沙窖酒(Jinsha Cellar Wine)" and "金沙回沙酒(Jinsha Hui Sha Jiu)", have been recognized as the Eight Famous Wines of Guizhou and have received many other honors. Jinsha has been awarded the protection of a well-known trademark many times, and the brand "金沙(Jinsha)" of the Jinsha Wine has been recognized as a China Time-honored Brand by five departments including the Ministry of Commerce and the CNIPA.
The courts of the first instance and the second instance determined that the act of the Andi Dou Liquor Company and Jinsha Gu Liquor Company in using "金沙古沙(Jinsha Gusha)" on the wine products constitutes an infringement of the exclusive right of the trademark "金沙回沙酒(Jinsha Hui Sha Jiu)" of the Jinsha Wine. The Supreme People's Court made a retrial decision and upheld the original judgment regarding the determination that "金沙古沙(Jinsha Gusha)" constitutes trademark infringement.
Case Analysis
The retrial decision made by the Supreme People's Court further confirmed the fact that the registered trademark "金沙回沙酒(Jinsha Hui Sha Jiu)" of the Jinsha Wine has relatively high distinctiveness and popularity, and at the same time also solved the so-called problem that the rights of the registered trademark "金沙回沙酒(Jinsha Hui Sha Jiu)" conflict with the rights of the geographical indication products, which lays a great foundation for further rights protection action of the Jinsha Wine.
Typical Significance
This case is of certain typical significance in the law application issues regarding the protection of trademarks involving geographic names, the relationship between registered trademarks and geographical indication products, etc.
| | Unitalen News |
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Two Cases Represented by Unitalen Selected into Top 10 Typical Cases of Trademark Litigation and Non-litigation in 2023 by Beijing Trademark Association |
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On May 11, Beijing Trademark Association released the "Top 10 Typical Cases of Trademark Litigation" and "Top 10 Typical Cases of Trademark Non-Litigation" of Beijing in 2023, and two cases represented by Unitalen were selected, namely:
Top 10 Typical Cases of Trademark Litigation in 2023
Infringement Case of Unregistered Well-Known Trademark "樂心(LIFESENSE)"
Top 10 Typical Cases of Trademark Non-Litigation in 2023
The defense case of trademark invalidation of trademark rights for "金沙(Jinsha)"
| Unitalen Selected into the "TRADEMARK AGENCY TOP 40 FOR FOREIGN-RELATED" |
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On May 20, 2024, the China Trademark Association Forum of the 146th International Trademark Association (INTA) Annual Meeting hosted in Atlanta, the United States, released the "TRADEMARK AGENCY TOP 40 FOR FOREIGN-RELATED". The list was jointly released by the China Trademark magazine and IPHOUSE under the guidance of China Trademark Association. By virtue of its outstanding performance, Unitalen was selected into the TOP 40 list with honor!
| Unitalen Selected into "MOZLEN 500" Top 10 of China Professional Foreign-related Trademark Agencies in 2024 with Ranking Level of "AAA+++" |
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On May 19 Beijing Time, during the INTA Annual Meeting 2024 in Atlanta, the United States, Mozlen released the global list of MOZLEN 500 2024 of China Foreign-related Trademark Agencies. Among nearly 40,000 trademark agencies registered with the CNIPA, Unitalen Attorneys at Law ranked "TOP 10" in the Comprehensive Ranking of China's 500 Foreign-related Trademark Agencies and was rated "AAA+++" (the highest level). With the outstanding performance in business rankings in many key countries, Unitalen received important recommendations: U.S., South Korea, Japan, U.K., France, Italy, etc.
| Unitalen Honored in the Managing Intellectual Property IP STARS 2024 List in the Trademark Field, and Multiple Partners Awarded IP STARS "Patent Star" & "Trademark Star" |
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Recently, Managing Intellectual Property (MIP), an international authoritative IP media, released the list of "IP STARS 2024" in the trademark field, and Unitalen has been honored in the recommended list of "trademark application" and "trademark dispute" fields in IP STARS.
At the same time, MIP also released the list of Leading Practitioners of IP STARS in 2024. Vice president LI Deshan, attorneys WU Shuchen, HOU Yujing, and SUN Changlong, all partners at Unitalen, are awarded "Patent Star" & "Trademark Star" of 2024 IP STARS, respectively.
 
| The 17th Unitalen IP Forum Successfully Held with Focus on Enterprise IP Management under the Context of Rapid Development of AI |
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On May 16 to 17, 2024, the 17th Unitalen IP Forum – "High-end Forum on Enterprise IP Management under the Context of Rapid Development of Artificial Intelligence" was successfully held in Kempinski Hotel Suzhou. This Forum was hosted by Beijing Intellectual Property Association and Zhongguancun Vision Intellectual Property Innovation Institute, and jointly hosted by Unitalen Attorneys at Law and Beijing Unitalen Law Office, attracting more than 100 enterprise representatives across the country to attend.
This Forum invited well-known judges, experts and scholars, enterprise IP executives, senior attorneys and other relevant leading figures to share their cutting-edge practical experience on the IP management and operation problems faced by enterprises in the era of the digital economy as well as the countermeasures, and to take the pulse in a multi-dimensional way of the new problems and difficulties in the IP protection of enterprises in the new economic situation, so as to work together to find out the new ideas and paths to IP protection, and to empower the enterprise innovation and to promote the economic development.
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