The SPC Releases White Paper on IP Judicial Protection 2014
20 April 2015
The SPC’s recently issued White Paper reports that during 2014, Chinese courts accepted 116,528 first instance intellectual property cases (civil, administrative and criminal), an increase of 15.6% over the previous year. The most dramatic increase was in the number of first instance IP administrative cases: an increase of 243.66% over the previous year.
Vice-chief of the Supreme People's Court, Tao Kaiyuan, noted particularly the number of difficult and complex cases involving the recognition of complex technologies and the application of IP laws
The SPC Releases its Top Ten Intellectual Property Cases in 2014
14 April 2015
The SPC has released its top ten intellectual property cases in 2014: six civil, three administrative and one criminal. Of these, the unfair competition case, Tencent v. Qihoo, and the ‘Daoxiangcun’ trade mark case are among the most important.
In August 2011, Tencent sued Qihoo in the Guangdong High People's Court, alleging that Qihoo had engaged in unfair competition. The Court found in Tencent’s favour. Qihoo appealed, unsuccessfully, to the Supreme People's Court. Song Xiaoming, the President of the Supreme Court’s third law court, said that market operators need to be very careful when commenting on or criticising others for competitive purposes. The Supreme People's Court clarified the relationship between technological innovation, free competition and unfair competition in the context of internet activity. The case should assist in the establishment of guidelines for orderly competition between internet related companies, and the optimization of market resources.
The ‘Daoxiangcun’ administrative trade mark case involved Suzhou Daoxiangcun Food Industry Co.’s objection to a trade mark application lodged by Beijing Daoxiangcun Food Limited Liabilty Company for registration of a mark similar to one that had been used by Suzhou Daoxiangcun for a long time. It was held that in order to determine deceptive similarity and the likelihood of confusion, account should be taken of the actual usage of the mark, the history of usage, the awareness of the relevant public, the intention of the user, and any other factors that will enable a comprehensive assessment to be made. The government should protect a stable and established market and prevent the adoption of deceptively similar marks.
The SPC Releases 2014 Annual Report on Intellectual Property Cases
21 April 2015
In its Annual Report, the SPC selected 35 typical IP and competition cases and summarized 50 application-of-law issues that had arisen, and in relation to which general guidance had been provided. The guidance relates to trial standards and methods, and the judicial handling of new, difficult and complex cases in the intellectual property and competition field.
The report contained the following statistics relating to cases dealt with by the SPC’s IP tribunal in 2014.
There were 481 new cases made up as follows:
- 11 second instance cases, 51 arraignment cases, 393 retrial cases, six protested cases and 20 referral cases.
- 192 patent cases, eight cases involving new plant varieties, 148 trade mark cases, 56 copyright cases, three monopoly cases, nine trade secrets cases,16 unfair competition cases, 26 intellectual property contract cases and 23 cases of other types (mainly related to IPR trial management services).
- 145 administrative cases in total, accounting for 30.15% of all new-received cases. Among these, there were 56 administrative patent cases (a decrease of 12.5%) and 89 administrative trade mark cases (an increase of 21.92%). There were 336 civil cases, accounting for 69.85% of all new-received cases.
In addition to the new cases, there were 85 cases from previous years, which meant that, in total, the court dealt with 566 cases during the year. Of these, 490 were concluded: 10 second instance cases; 51 arraignment cases; 402 applications for retrial; 21 referrals case and six protested cases.
SIPO Seeks Comments on Draft Amendments to the Patent Law of the People's Republic of China
1 April 2015
The draft amendments consist of nine chapters and 86 articles: 30 articles of the existing Law have been amended substantially; 18 have been revised; one has been deleted and 11 new articles have been added. A new chapter ‘Implementation and Application of Patent’ has also been added.
The main amendments, which are summarized below:
(a) provide better patent protection to safeguard the legitimate interests of rights holders;
(b) promote the implementation and use of patents to realize their value;
(c) achieve the statutory functions of government and building a service-oriented government.
(d) improve patent examination system and patent quality; and
(e) improve the legal regulation of patent agents and promoting the healthy development of IP services.
NDRC fines Qualcomm 6.1 Billion Yuan (approx. US$975 million) – biggest fine yet for breach of China’s anti-monopoly laws
10 February 2015
China’s competition authority, the NDRC, has fined Qualcomm, one of the world’s largest chip manufacturers, 6.1 Billion Yuan (approx. US$975 million) and set the fees on which its technology may be licensed to smart phone manufacturers. This brings to an end the lengthy NDRC investigation that has been threatening Qualcomm’s future growth in the Chinese market. The fine is the biggest so far in the history of China's Anti-Monopoly laws. On Monday, Qualcomm issued a statement that it would not be opposing the NDRC decision.
Qualcomm’s technology is essential for mobile phone systems, and licensing of the technology responsible for most of Qualcomm’s profit.
The major terms of the Rectification Plan imposed by the NDRC are: licence fees for the patent relating to the relevant Qualcomm 3G and 4G technology were set at 5% of 65% of the net selling price ; and for the patent relating to 4G equipment without CDMA and WCDMA (including Tri-mode LTE-TDD equipment), at 3.5%.
The NDRC decision means that Qualcomm must, in future, charge a lower royalty than previously. Mobile phone manufacturers who had been delaying or underpaying royalties pending the outcome of the NDRC investigation will now pay at the lower rate.
Microsoft and Symantec are also being targeted by the Chinese government's investigations. This has increased concerns that the Government is using the investigations to boost domestic enterprises
For more information, please click here.
Case No.: CACV 191/2013 (On appeal from HCA No. 2210 of 2011)
Judgment (3 December 2014)
TSIT WING (HONG KONG) COMPANY LIMITED (1ST Plaintiff) （“第一原告”）
TSIT WING INTERNATIONAL COMPANY LIMITED (2nd Plaintiff) （“第二原告”）
TSIT WING COFFEE COMPANY LIMITED (3rd Plaintiff) （“第三原告”）
TW CAFÉ LIMITED (4th Plaintiff) （“第四原告”）
(together "the Plaintiffs") （合稱“原告”）
TWG TEA COMPANY PTE LTD (1st Defendant) （“第一被告”）
TWG TEA (HK) COMPANY LTD (2nd Defendant) （“第二被告”）
(together, "the Defendants") （合稱“被告”）
The Plaintiffs belong to the Tsit Wing Group, which has carried on business in Hong Kong for many years as a wholesaler of coffee and tea products. Over the years, the business has expanded to include the operation of coffee shops, the distribution of branded coffee and tea machines, and the supply of instant beverage products to supermarkets. In 2006, the second Plaintiff registered two marks, both containing the letters TWG, in relation to goods including coffee and tea and sugar (‘the Plaintiffs' Marks’).
The Defendants are part of Singapore-based The Wellness Group, which operates tea shops in Singapore and other countries. In 2011, the Defendants opened a tea salon in Hong Kong adopting a cartouche mark, which uses "1837 TWG TEA" in the middle, and a balloon mark with the words "TWG TEA" and "PARIS SINGAPORE TEA" (‘the Defendants' Marks’). They adopted these marks with full knowledge of the Plaintiffs' Marks.
The Plaintiffs sued the Defendants for trade mark infringement and passing off. A judgment was handed down in their favour in July 2013. The Defendants appealed.
The Defendants' Counsel asserted that although the Plaintiffs marks were registered without any colour limitation (being series marks consisting of coloured as well as black and white versions of the marks), they had always been used in a distinctive colour combination: the three circles representing overlapping coffee beans were always depicted in yellow-brown-orange. In addition, the Plaintiffs' Marks were said to be often used together with the full English or Chinese name of the Plaintiffs --- Tsit Wing. As such, it was submitted that the Court should taken into account the actual use of the Plaintiffs' Marks in assessing the likelihood of confusion.
The Court of Appeal rejected the Defendants' arguments as it disregarded the notional and fair use of the Plaintiffs' Marks. The Court of Appeal held that there was a high degree of similarity between the Plaintiffs' Marks as registered and the Defendants' Marks and accordingly dismissed the appeal. Amongst other relief granted, the Defendants were restrained from using the Marks on their tea salon and related businesses and ordered to pay costs on an indemnity basis.
被告屬於新加坡Wellness集團，在新加坡和其他國家經營茶館。 2011年，被告在香港開了一家茶室，並在充分知悉原告商標下，採用一個中間寫著“1837 TWG 茶”的渦卷裝飾標誌和一個寫著“TWG TEA”和“PARIS SINGAPORE TEA” 的氣球型標誌（以下簡稱“被告標誌”）。
被告的律師聲稱，縱使原告商標於註冊上沒有顏色限制（其為包含彩色及黑白色版本的系列商標），原告商標一直使用具有顯著性的黃-棕-橙色組合以三個圓圈代表三個相互重疊的咖啡豆。此外，原告商標亦被指經常與原告的中英文名字 - 捷榮一併使用。因此，被告律師認為，法院應考慮原告商標的實際使用以評估商標混淆的可能性。