Embed Size (px)
Citation preview
IP GOSSIP in China
2016/10
Latest News of China IP（Oct. 2016）
The latest developments of China IP protection： .................... 3
1. HFG helped win the Administrative Litigation against “Mei Lin Kai (Chinese
characters) MLK” trademark which shall not be approved for registration as trademark
in the judgment ........................................................................................................................... 3
2. A big Financing CASE worth 864m was stranded for IP dispute. IP can’tbe ignored.
...................................................................................................................................................... 4
3. Dispute on patent fee upgraded, MEIZU was sued by Qualcomm. .............................. 5
4. The first case on selling counterfeit goods on WeChat was cracked down by YI WU
Police. As an alternative something like this YiWu police cracked down WeChat shop
selling the counterfeit goods. ................................................................................................... 6
5. Huangshan AIC seized 800 bottles of infringing “GU JING” liquor................................ 7
6. The “Most handsome chimpanzee in history” was registered as a trademark. ........... 8
3
The latest developments of China IP protection：
1. HFG helped win the Administrative Litigation against “Mei Lin Kai
(Chinese characters) MLK” trademark which shall not be approved for
registration as trademark in the judgment
v.s.
The plaintiff ZOU Yan filed an administrative litigation to the Beijing Intellectual
Property Court for dissatisfying the Decision on Review of Trademark Opposition
made by the TRAB, in which the “Mei Lin Kai (Chinese characters) MLK”
trademark applied by the plaintiff shall not be approved for registration. Recently,
the Beijing Intellectual Property Court made the judgment to reject plaintiff’s
claims.
The plaintiff claimed that the Opposed Trademark was completely different with
the Cited Trademarks. Moreover, the Opposed Trademark is applied for being
used on goods of pillow, sleeping bag, mattress and bamboo crafts, etc. which
are not similar to the goods of cosmetics, designated on by the Cited
Trademarks. Therefore, the existence of the Opposed Trademark will not mislead
and confuse the consumers. So, the plaintiff requested the Beijing Intellectual
Property Court to revoke TRAB’s Decision.
HFG, on behalf of Mary Kay Inc., attended this administrative litigation, and
submitted evidence in the trial, to further explain that the Cited Trademarks have
been identified as well-known trademarks under class 3, and we have submitted
a large quantity of evidence during the review of trademark opposition, to prove
the Cited Trademarks have been well-known before the application date of the
Opposed Trademark. At the same time, the third party further illustrated that
although the Opposed Trademark was designated on goods of bamboo crafts
and others, which all belonged to daily articles, the target consumers of which
were relatively large connected with that of cosmetics goods and others
designated on by the Cited Trademarks. Common consumers are much possible
to think the Opposed Trademark has certain relation with the Cited Trademarks
when they see the Opposed Trademark. Meanwhile, HFG further emphasized
that the use of the Opposed Trademark may desalt the close tie between the “Mei
Lin Kai (Chinese characters)”“trademark (Cited Trademark 1) and the third party
company.
After the trial, the Beijing Intellectual Property Court confirmed the facts and
grounds by the third party during the administration period and litigation period,
and rejected plaintiff’s claims.
【HFG’s Comments】 This case is a significant success of HFG representing the client, as well as manifests the HFG has taken a milestone step forward for protecting the client’s trademarks. By this litigation, the Beijing Intellectual Property Court pushed back the well-known trademark recognition of the “Mei Lin Kai (Chinese characters)” trademark (Cited Trademark 1) and “Mary Kay” trademark from 2009 to 2006 and before, and clearly expressed in the judgment that the “Mei Lin Kai (Chinese characters)” trademark (Cited Trademark 1) and “Mary Kay” trademark were recognized as well-known trademarks and protected by law for many times. More delightfully, under the efforts of HFG lawyers, the Court protected the “Mei Lin Kai (Chinese characters)” trademark (Cited Trademark 1) and “Mary Kay” trademark with the anti-dilution theory in the judgment. In the juridical practice of China, the conditions to protect trademark with the anti-dilution theory by the Court is much stricter than the anti-dilution protection to the common well-known trademarks. However, as long as a trademark is protected by the Beijing Intellectual Property with the anti-dilution theory, it indicates that this well-known trademark has more reputation than other common well-known trademarks, and suggests this trademark has higher brand value.
Cited
Trademark 1
Cited
Trademark 2
Opposed Trademark
4
2. A big Financing CASE worth 864m was stranded for IP dispute. IP
can’tbe ignored.
The upsurge of the acquisition and reorganization among Chinese enterprises
started from 2013. In 2015, up to 337 cases of acquisition and reorganization in
China were examined and approved. With the more and stricter examination by
supervisory department, the approval cases of acquisition and reorganization
declaim in 2106. Acquisition and reorganization rejected by supervisory
department due to IP disputes is nothing new now.
On June 17, 2016, the CSRC (Chinese Securities Regulatory Commission)
rejected a total of 18 companies’ reorganization, among which the acquisition of
Fuchun Communications Co., Ltd. and Chunqiu Time (Tianjin) Film Co., Ltd. was
the typical case rejected for IP dispute.
According to the Article 11(4) of the Measures for Administration of Material
Assets Reorganization of Listed Companies, “Assets involved in the material
assets reorganization shall have clear ownership, with no legal obstacles to
assets ownership transfer or assets transfer and relevant debtor-creditor relation
shall be handled legally.. The acquisition of Fuchun Communications and
Chunqiu Time (Tianjin) was rejected as it did not comply with the above rule.
From January to August 2015, all revenue of Chunqiu Time (Tianjin) Film Co.,
Ltd. came from the film Wolf Warriors which was co-invested and co-produced by
Chunqiu Time Culture Co., Ltd. and other companies. In September 2015, the
president of Chunqiu Time Culture Co., Ltd. LV Jianmin (the president of Chunqiu
Time (Tianjin) Film Co., Ltd. at present transferred his share rights to other
people. In January 2016, the legal person of the Beijing Chunqiu Time Culture
Co., Ltd. sued LV Jianmin and Chunqiu Time (Tianjin) Film Co., Ltd to the Court,
and asked for returning all revenue and rights of Wolf Warriors as well as the
rights of other several films.
We learned that the transaction amount of the acquisition between Fuchun
Communications and Chunqiu Time (Tianjin) Film Co., Ltd. reached up to RMB
864m. However, the acquisition was rejected finally, because the CSRC believed
the core IP of Chunqiu Time (Tianjin) Film Co., Ltd. was involved in litigation.
【HFG’s Comments】 IP is the core capital of the enterprise. The IP issue of the enterprises to be listed is always followed closely by the CSRC, which shall affect directly whether the enterprise can be listed successfully. Moreover, in this specific case, if the company loses this listing opportunity, after the IP dispute resolved, it may be harder for an enterprise to be listed by re-funding in consideration of this rejected “history”.
5
3. Dispute on patent fee upgraded, MEIZU was sued by Qualcomm.
The patent disputes between Qualcomm and many domestic mobile phone
manufacturers in China are always paid high attention by the public. On
October 15, 2016, Qualcomm declared it will take legal remedy for the
infringement acts of MEIZU Technologies Co., Ltd. (hereinafter referred to
as “MEIZU”) in America, Germany and France.
On June 23, 2016, Qualcomm sued the MEIZU to the Beijing Intellectual
Property Court on the grounds of patent fees in arrears and for a long time
having not signed a License Agreement, and claimed for indemnity of RMB
520m. On June 30, Qualcomm sued the MEIZU again to the Beijing
Intellectual Property Court and the Shanghai Intellectual Property Court on
the grounds that MEIZU infringed many cellphone-related patents of
Qualcomm, such as 3G and 4G, etc. and claimed for indemnity of RMB
17m.
MEIZU held the press conference immediately after the Qualcomm filed the first
lawsuit, on which MEIZU suggested that it refused to pay Qualcomm patent fee
considering that the licensing clauses and standards were non-transparent and
breached the license obligations of fairness, reasonableness and
non-discrimination. However, after Qualcomm declared to file lawsuits around
the world, MEIZU made the response that it would like to pay the patent fee as
long as there would be “reasonable rate”, otherwise, the “patent fee will account
for 1/3 of the sales price of the mobile phone”.
Currently, many domestic mobile phone manufacturers in China such as ZTE,
Lenovo and VIVO, etc. have signed the Patent License Agreement with
Qualcomm, the mobile phone sale prices of which are not higher than that of
MEIZU. Therefore, part insiders of the industry believe those declarations of
MEIZU are a kind of “delay policy”.
【HFG’s Comments】 MEIZU has very weak patent reserves. Almost all its patents are concentrated in Mainland China and most were applied after 2015. As for European and other important Asian markets, MEIZU obtained only few registered patents for the time being. From another aspect, the patent value of MEIZU is far lower than the average level of the industry by comparing with the average value of industries of digital data processing, telephone communication and wireless communication network, etc. Therefore, for those “bruising”, MEIZU may choose to close this lawsuit out of the court. Additionally, MEIZU needs to store energy to expand its oversea patent market in a large quantity, and only this can make it possible for MEIZU to prepare itself well for marching into oversea markets.
V.S．
6
4. The first case on selling counterfeit goods on WeChat was cracked down
by YI WU Police. As an alternative something like this YiWu police
cracked down WeChat shop selling the counterfeit goods.
Selling counterfeit goods on WeChat is nothing new. But now in IP industry, there
was no significant breakthrough on the crackdown to the WeChat sales.
On October 14, 2016, YI WU Police cracked down one exceptionally serious
case of packaging and processing counterfeit constant temperature socks of one
famous brand. This was the first case cracked down by Yi Wu Police on selling
counterfeit goods on WeChat.
At the end of September 2016, one company in Jiangyin City, Jiangsu Province
reported to YI WU Police that many WeChat merchants were selling constant
temperature socks of their company, but after preliminary examination, a large
part of those socks were counterfeit. This company further indicated that selling
counterfeit socks of those WeChat merchants seriously damaged their economic
interests and brand image.
After receiving this report, YI WU Police launched a deep investigation
immediately. After tracking investigation for a week, the Police finally found the
factory of manufacturing and packaging counterfeit products, as well as its
associated warehouse in 3rd
District, Zijin, Futian Street, YI WU. In the raid on
October 14, YI WU Police totally seized 2780 bags full of counterfeit socks, and
a total of 70,000 pieces of package materials such as packaging bag and hang
tag, etc. with the name of that brand. The involved amount of this case was up to
more than 100,000 yuan. Two suspects involved in this case have been held in
criminal detention.
【HFG’s Comments】 At present, the WeChat merchants mainly show products for sales on WeChat platform (or WeChat Official Accounts or WeChat Moments), transfer payment by WeChat and then deliver goods by the express, which is the main mode of their sales. WeChat merchants sell counterfeit products in a very secret way and it is very hard to confirm their sales amount and track the sales sites. For such above advantages, it is becoming much fiercer to sell counterfeit products on WeChat in recent three years.
This is the first serious attack of Chinese Police on those who sell counterfeit products on WeChat. However, the past cases mainly cracked down the offline warehouses accompanied by tracking the WeChat transfer accounts recording. This is the first case to track manufacturers and offline warehouses from WeChat Moments, and then crack down.
7
5. Huangshan AIC seized 800 bottles of infringing “GU JING” liquor.
On October 13, 2016, Huangshan AIC seized totally 800 bottles of Virgin pulp
liquor infringing the trademark registered by the Anhui Gujing Gongjiu Limited
Liability Company. In this year, Huangshan AIC has cooperated with many
famous enterprises for many times to inspect the liquor market. Until now, all
kinds of infringing liquor they have seized amount to more than 80,000 yuan.
The “GU JING” liquor involved in this case was found in one logistics location,
which should be transferred to QIMEN. The AIC launched an investigation to
this target location immediately after receiving this information. However, the
AIC could not find the consigner of these counterfeit goods by information of so
many purchasers all the time. The manufacturers written on the goods
packages expressed they never produced those products. At present, all
infringing liquor has been seized, and related departments have also opened
investigations.
【HFG’s Comments】 It is the main method of producing and selling counterfeit goods in China to manufacture counterfeit goods by underground factories, illegally use others’ “three certificates (business license, tax registration certificate, and organization code certificate)” to label false manufacturer information on the goods, transport certain number of inventory to some freight stations or the logistics warehouses to store, and to deliver the products by transport company to consumers once there are orders . On one hand there is highly concealment for the storage of goods, on the other hand, such mode can “protect” the true counterfeit goods manufacturers and sellers from being tracked. Once the counterfeit goods were found, the true counterfeit goods manufacturers could escape from the legal sanction considering no inevitable evidence. Currently it has become a main operation mode in the counterfeiting industry in China.
8
6. The “Most handsome chimpanzee in history” was registered as a
trademark.
In early 2016, one chimpanzee called “Shabani” in Higashiyama Zoo, Nagoya,
Japan, became popular on the internet for its handsome appearance. Many
women in Japan believe this chimpanzee is very different from other
chimpanzees, and the word “extremely handsome” can be used to describe it.
Therefore, they come to the zoo for desiring to have a look at it.
HigashiyamaZoo started to sell “Shabani” related products attracting more and
more visitors. As early as March 2016, Nagoya, the operator of Higashiyama Zoo
has filed a trademark application to the Japan Patent Office, which recently got
the “Shabani” (in Japanese katakana) and “SHABANI” trademark recognition in
the end. One leader in this zoo expressed that “Shabani” was one the most
popular animals here in the zoo, and products related to it were sold very well,
even once one foreign visitor bought 15 bags of “Shabani” snack himself.
【HFG’s Comments】 Considering the “most handsome chimpanzee in history” is so popular in Japan, we welcome the Higashiyama Zoo to register trademarks related with “Shabani” (in Chinese Characters) and “SHABANI” in China for protection. Meanwhile, please remember relevant images or cartoon images of “Shabani” can be registered in terms of copyright for protection as well. “Handsome” can be cross-border, while IP protection has definite frontier.
HFG Law Firm
October 24, 2016
9
ABOUT HFG
HFG since found in 2003，as a firm uniquely integrated and co-managed by multi-national professionals, persists in
providing clients with service of the highest standard and quality all the time. By profound understanding for the
commercial requirements of clients from all walks of life all over the world, we do our best to obtain the largest business
interests for clients. At the moment, HFG consists of three entities: HFG Law Firm, HFG Intellectual Property
Consulting Co. Ltd and HFG Intellectual Property Agency Co. Ltd. and sets up two offices in Beijing and Shanghai.
HFG collects an abundant and diversified knowledge base and multi-lingual communication capability through a
long-term practical experience, and does all kinds of intellectual property business for clients in administrative and
judicial authorities at various levels at provinces, municipalities directly under the central government and autonomous
regions of the country.
HFG integrates the commercial and corporate law services of IP contentious and non-contentious practices, providing
a one stop solution to companies whose intangible assets out value the tangibles. Service scope of HFG includes IT
communication，petrochemistry, wine such as grape wine, fashion cosmetics, retail and e-commerce trade, food and
pharmaceuticals standard, the acquirement of certificate and the earnings of patent technology etc.
Cases completed by HFG are evaluated as the top ten representative criminal cases and top five classic cases by
Ministry of Public Security for several continuous years, in addition, the top ten best cases claimed by high quality
brand protection committee of CAEFI and the classical lawsuit in that every year by many medium and high courts at
many main provinces. HFG has been awarded as the best IP service provider by many international clients for several
continuous years.
HFG is recommended by Legal 500 as the No.1 in terms of IP business in Shanghai since 2010 and by MIP ranked in
Chambers and Partners and WRT 1000.
10
Please feel comfort to contact us if you have any advices or opinions for IP news of food industry in this season.
Contact information:
Tel：+86 21 5213 5500
Fax：+86 21 5213 0895
