The firm assisted a client in winning a patent infringement case on the doctrine of equivalents............................2
Qualcomm sued Apple for patent infringement by iPhone.............................................................................2
McDonald's (China): the name of the restaurant is not changed..............................................................2
62% of Samsung's patents being announced invalid in the patent war between Huawei and Samsung.................2
Win-win or no-win: JDB and Wang laoji share the usage of red can packaging..............................................3
The exports of the intellectual property royalty of China increased by 489.4% for the first 7 months..................4
Action plan on protection of IPRs of foreign-invested enterprises...........................................................5
Patent infringement in China: finding the source..........8
The ins and outs of reconsideration..........................10
New development of patent infringement compensation in China.................................................................12
Introduction to the administrative regulations of prioritized patent examination...............................................15
Administrative litigation on review of opposition to trademark " & DEVICE"................................19
Brief analysis on the judicial data (trademark section) of Beijing IP Court in 2016.........................................21
From the editor
In earlier September, twelve state ministries and commissions including SIPO jointly issued an action plan, in order to implement the Notice on a Number of Measures on the Promotion of Foreign Investment Growth issued by the State Council. This action plan requires the twelve state ministries and commissions to take specific actions against illegal acts on intellectual property rights of foreign-invested enterprises, and protect the legitimate rights and interests of foreign-invested enterprises. We reported the details of the action plan in this issue.
At the patent side, we updated the development of patent infringement compensation in China and introduced in detail in what circumstances may an accused infringer not pay compensation to the right holder or may an accused infringer continue exploiting the claimed invention. Further, we probed into the administrative reconsideration before SIPO, which is less used by applicants in asserting their rights yet sometimes is useful for applicants, as well as the contents of the administrative regulations of prioritized patent examination.
At the trademark side, we examined the administrative litigation on review of opposition to trademark " & DEVICE" over "puma" trademark and gave a brief analysis on the judicial data of Beijing IP Court in 2016 in the trademark part.
The firm assisted a client in winning a patent infringement case on the doctrine of equivalents
Recently, we assisted one of our clients in winning a case in a patent infringement litigation over a patent for invention.
The case is related to a kind of seat for bicycles. At issue before the court are the claim construction, the determination of infringement on the doctrine of equivalents and the calculation of damages, which became most critical and difficult for successfully finding infringement and getting compensation. A team of attorneys with extensive experience made reasonable arguments and statements in detail and sufficiently in accordance with the relevant laws and judicial interpretations, and expounded the application of the doctrine of equivalents finding that the accused product fell into the scope of the patent. In addition, our attorneys collected favorable evidence for identifying and supporting the calculation of damages. After two court hearings and submission of written opinions, the efforts of the team yielded fruitful results: the infringing act is ordered to stop and a relatively high compensation is awarded within the statutory range.
Qualcomm sued Apple for patent infringement by iPhone
Qualcomm Incorporated recently announced that it had filed lawsuits with Beijing Intellectual Property Court against Apple for infringement of its patents granted in the past few months, seeking to ban the unlawful manufacture and sale of iPhones in China by Apple. "Apple employs technologies invented by Qualcomm without paying for them", said the spokesman of Qualcomm to Bloomberg News. Qualcomm revealed that the lawsuits are based on three non-standard essential patents covering power management and touchscreen technologies. Apple said they attaches great attention to innovation and are willing to pay reasonable and fair fees for those patented technologies they intend to use. "In our many years of negotiations with Qualcomm, these patents involved have never been discussed", said Apple spokesman. The legal battle between Qualcomm and Apple has lasted for months from January when Apple accused
Qualcomm for overcharging phone chip royalties and withheld the contract value of nearly 1 billion dollars to Qualcomm. In responding to Apple's action, Qualcomm initiated ITC investigation against Apple.
McDonald's (China): the name of the restaurant is not changed
According to the National Enterprise Credit Information Publicity System, McDonald's (China) Co., Ltd. had changed its name in China to one that reflects the chain's main logo: "Golden Arches (China) Co. Ltd.". McDonald's said that the daily business of McDonald's in China will not be influenced and "the name, the food safety standard and the operation process of the restaurant will remain the same as usual". McDonald's insider pointed out that the new Chinese name of McDonald's (China) is from the literal translation of "Golden Arch" as each restaurant of McDonald's has a yellow arched construction "M" being called the golden arch.
According to the business information data, the name of McDonald's (China)'s investor has been changed from McDonald's (China) management Co., Ltd. to Golden Arches (China) management Co., Ltd. as early as August 24, 2017. On October 12, the company changed its name to Golden Arches (China) Co., Ltd. Before that, McDonald's once announced that it will continue the usage of the expression "New McDonald's" after the settlement of the strategic cooperative delivery with CITIC Ltd. and Carlyle Group.
Most of the branch companies of McDonald's (China) have changed their names but there are still some exceptions, such as Shanghai McDonald's catering food co., Ltd. and Wuhan McDonald's catering food Co., LTD, according to the National Enterprise Credit Information Publicity System.
62% of Samsung's patents being announced invalid in the patent war between Huawei and Samsung
Recently, new progress has been made in the patent war between Huawei and Samsung beginning from last year in China.
On September 30, 2017, the Patent Reexamination Board
of SIPO (hereinafter referred to as PRB) issued 8 patent invalidation decisions on the related patents of Samsung, among which, 5 were announced invalid totally, 1 invalid in part and 2 valid.
By far, 15 out of the total 16 patents on the basis of which Samsung sued Huawei for patent infringement in China have got decisions on their validity. 10 patents were announced invalid totally, accounting for 62.5%.
The war in China may trace back to May 25, 2016, when Huawei filed lawsuits for patent infringement against Samsung in the United States and China, specifically in the District Court for the Northern District of California and the Shenzhen Intermediate Court.
According to Huawei, they are willing to settle the disputes with Samsung on a global scale which involves many patents since Samsung illegally used the intellectual property of Huawei and sold its own products throughout the world. In response to Huawei's action, Samsung filed 10 patent infringement lawsuits against Huawei.
On June 27, 2016, Huawei filed further lawsuits against Samsung et al with Quanzhou Intermediate People's Court, seeking for a compensation of 80.50 million RMB. Less than one month later, Samsung sued Huawei with Beijing Intellectual Property Court on July 22, 2016, seeking for a compensation of 161 million RMB. Meanwhile, Huawei sued Samsung for patent infringement with Beijing Intellectual Property Court.
In the patent war between Huawei and Samsung, totally 16 patent infringement cases were initiated by Samsung against Huawei, with 10 cases before the Shenzhen Intermediate Court, 6 before the Beijing Intellectual Property Court.
In April, 2017, the Quanzhou Intermediate Court made its first instance decisions on the lawsuits filed by Huawei against Samsung, holding that 22 products of Samsung infringed the patent rights of Huawei and that Samsung shall stop manufacturing, selling and offering to sell 22 kinds of Galaxy serial cellphones containing the patented technologies. Meanwhile, Samsung is ordered to pay a compensation of 80 million RMB and 500 thousand RMB for the reasonable costs to stop infringement.
As mentioned before, on September 30, 2017, the PRB announced 5 Samsung patents invalid, 1 Samsung patent invalid in part and 2 Samsung patent valid. All of the
invalidation actions were initiated by Huawei. Among the 16 patents on which Samsung filed lawsuits against Huawei, only 3 were maintained valid, 2 were announced invalid in part and 10 were announced invalid totally.
Win-win or no-win: JDB and Wang laoji share the usage of red can packaging
The battle for scrambling for the red can packaging between the plaintiff, appellant, Guangdong JDB Beverage and Food Co., Ltd. and the defendants, appellees, Guangzhou Wang Laoji Health Industry Co., Ltd. and Guangzhou Pharmaceutical Holdings Ltd. (collectively referred to as GPH) came to an end on August 17, 2017. The Supreme People's Court issued its judgement, holding that whereas both GPH and JDB have made great contribution to the packaging of the red can of Wong Lo Kat Herbal Tea, the two companies can share the interests on the packaging of the red can of Wong Lo Kat Herbal Tea.
On July 6, 2012, GPH and JDB filed a lawsuit respectively, claiming for the rights and interests to the famous productspecific packaging and decoration of red can Wong Lo Kat Herbal Tea and accusing the other party for illegally producing and selling the herbal tea product with red can packaging and decoration.
Guangdong High People's Court held in the first instance
that GPH has the rights and interests to the red can Wong Lo Kat Herbal Tea's specific packaging and decoration and the producing and selling of red can Herbal Tea by Wang Laoji Health Industry under the authorization of GPH doesn't infringe; JDB producing and selling red can Herbal Tea with the packaging printed on one side Chinese characters for "Wang Laoji" and the other side Chinese characters for "jiaduobao or printed on both sides Chinese characters "jiaduobao" infringes the rights of GPH. JDB was ordered to stop the infringing behavior and to pay GPH 150 million RMB plus 260 thousand RMB lawyers' fees.
JDB appealed to the Supreme People's Court. The Court found the "famous product" of the law in the present case is the "red can Wong Lo Kat Herbal Tea", the yellow Chinese characters for `wang laoji", the red background and their combination as a whole constitute the specific packaging and decoration of red can Wong Lo Kat Herbal Tea. Being the right holder of the registered trademark "wang laoji", GPH alleged that since the trademark is an integral part of the packaging and decoration and functions as an identifier of the product source, customers would take it for granted that the red can Wong Lo Kat Herbal Tea belongs to the right holder of the trademark "wang laoji", while the recipe and taste of the tea would not affect customers' recognition and judgement of the product. Once being licensee of the trademark "wang laoji" and the practical operator of red can
Wong Lo Kat Herbal Tea, JDB argued that the rights and interests to the packaging and decoration and the belonging of the trademark right are two issues and shall be treated separately. What consumers like is the red can Wong Lo Kat Herbal Tea produced by JDB with special recipe, the packaging and decoration at issue was used by JDB and was closely connected with JDB's product. Therefore, the relative rights and interests of the packaging and decoration belong to JDB.
The Supreme People's Court held that taking the historical development process of the red can Wong Lo Kat Herbal Tea, the cooperation of the two parties, the consumer cognition and the equity into consideration, both GPH
and JDB had made great contribution to the creation, development and the reputation of the packaging and decoration at issue. Assigning the ownership of the packaging and decoration to either party will cause unconscionability and probably harm the interests of the public. Therefore, the rights and interests of the packaging and decoration of the red can Herbal Tea shall be mutually possessed by GPH and the JDB on the premise of respecting the consumer cognition, abiding by the bona fide doctrine and without harming the legal interests of others.
The exports of the intellectual property royalty of China increased by 489.4% for the first 7 months
On September 7, 2017, the Ministry of Commerce published the work progress in commerce areas in its routine press briefing. It is reported that during the past 7 months, the total service imports and exports amounts to 2.6529 trillion RMB, a year-on-year growth of 10.6%. Among which, the value of exports accounts for 807.72 billion RMB, increasing 4.4% and the value of imports accounts for 1.8452 trillion RMB, increasing 13.5%. The deficit registered 1.0375 trillion RMB. The characteristics presented by the service imports and exports industry include that the export structure has been optimized, the imports of some emerging areas registered a faster growth, traditional imports and exports industries maintain a stable growth and the deficit in service imports and exports industries has been narrowed up remarkably. Of which, the exports of the intellectual property royalty increased on a year-on-year basis of 489.4%.
In the area of emerging industries, during the first 7 months, the emerging industries in China, except the insurance and financial industry, maintain a positive growth. Among which, the imports value of telecommunication, computer and information service industries amounted to 71.79 billion RMB, a year-on-year increase of 74.2% and the imports value of intellectual property royalty registered 112.58 billion RMB, a year-on-year increase of 25.8%.
It is reported that last year, the international payment of intellectual property royalty of China reached 24 billion US Dollar and the international payment IPR royalty for the first half year of China reached 14.3 billion US Dollar, up 23% year-on-year.
Action plan on protection of IPRs of foreign-invested enterprises
In order to implement the Notice on a Number of Measures on the Promotion of Foreign Investment Growth issued by the State Council, construct a market environment with fair competition and an excellent investment environment, further promote foreign investment growth, improve the quality of utilization of foreign investment, crack down on violations against the intellectual property rights of foreign-invested enterprises, and protect the legitimate rights and interests of foreign-invested enterprises, the present action plan is formulated.
1. Fighting against infringements of trade secrets
To enhance the administrative protection of trade secrets, crack down on infringements of trade secrets, and carry out judgements on the cases of infringing trade secrets in accordance with the laws, so as to effectively protect the interests of the right holders. (The State Administration for Industry & Commerce and the Supreme People's Court shall be responsible respectively according to their functions.)
2. Fighting against infringements of trademark rights, such as Free-riding
To enhance the efforts in protecting the well-known trademarks, geographical indications and foreign-related trademarks, investigate and prosecute violations such as trademark squatting and free-riding, and order a crackdown on major copyright piracy. To strengthen supervision of emarket, focus on combating violations such as counterfeiting and false advertising, and improve the level of collaborative networks. (The State Administration for Industry & Commerce shall take the lead.)
3. Fighting against infringements of patent rights
Directed to key areas such as e-commerce, food and drug, environmental protection, safe production and high technology and key links such as exhibition and import and
export, to carry out in-depth the "Thunder" special action on enforcement of law and protection of rights related to patents, bring 12330, the platform of offence-reporting, complaining and assistance of the protection of rights, into full play, precisely and quickly combat infringements of patent rights and counterfeiting of patent rights of foreigninvested enterprises, and steadily increase the combating momentum. (The State Intellectual Property Office shall take the lead.)
4. Fighting against internet piracy and other copyright violations
To seriously investigate and prosecute acts of piracy and focus on investigating a number of major and significant cases. To strengthen the governance of internet piracy, carry out the "Sword Net 2017" special action, and further enhance the efforts in copyright regulation in the areas of internet videos, music, software, animations, and teaching materials and in the platforms of e-commerce, software application stores. To deepen the promotion of software legalization. (The State Administration of Press, Publication, Radio, Film and Television shall take the lead.)
5. Fighting against infringements of new plant variety rights
To organize and carry out the fight against the production and sale of infringed and counterfeited seeds and sprouts, and continue in performing actions of administrative law enforcement in combating the infringements of new plant variety rights in agriculture and forestry. (The Ministry of Agriculture and the State Forestry Administration shall be responsible respectively according to their functions.)
6. Cracking down on import and export of goods infringing intellectual property rights
To further improve the mechanism of law enforcement of intellectual property rights at customs, continue to carry out special actions of customs protection of intellectual property
rights directed to key commodities and key channels, and launch joint law enforcement actions with relevant international organizations and overseas law enforcement authorities. (The General Administration of Customs shall take the lead.)
7. Reinforcing safety supervision of delivery link
To proactively promote the construction of "Green Shield" project for safety supervision of the delivery channels, strengthen market supervision and law enforcement inspection, and urge enterprises to strictly enforce the three regulations of "acceptance inspection, real-name acceptance, and security check by passing through the screening machines" for safety management of delivery channels, and highlight the enhancement of delivery safety management of overseas online shopping products in ebusiness. (The State Post Bureau shall take the lead.)
8. Cracking down on infringement and counterfeiting crimes
To foster a comprehensive anti-counterfeiting by information directing investigation, improve the initiation and organization mode of the cluster campaign as well as "integration" combating mechanism, strengthen the offensive of the cluster campaign, and perform a full-chain fight against infringement and counterfeiting crimes. (The Ministry of Public Security shall take the lead.)
9. Strengthening the prosecutorial supervision
To focus on handling a number of infringement and counterfeiting crimes with serious circumstances and serious adverse effects, and strengthen the research and supervision of key cases and novel cases. To perform thorough investigations into duty crimes, such as malpractice, corruption and abuse of the law, playing favoritism and committing irregularities, behind the infringement and counterfeiting criminal cases. (The Supreme People's Procuratorate shall take the lead.)
10. Strengthening the judiciary judgement
To strengthen the judgement work of civil, criminal and administrative cases in key industries and key areas of infringement and counterfeiting according to the laws, and strengthen the supervision and guidance. (The Supreme People's Court shall take the lead.)
11. Strengthening the external publicity work
In multilateral and bilateral intellectual property cooperation and negotiations, to actively publicize the work deployment and implementation as well as the results achieved related to the action plan, and establish a good image of China's IPR protection. (The Ministry of Commerce shall take the lead.)
II. Time Schedule
1. Mobilization and deployment
Prior to September 10, 2017, the action plan is to be issued so as to perform mobilization and deployment, put forward the mission requirements and make clear the division of responsibilities. All localities and all member units concerned are to study a refined implementation scheme in accordance with the action plan and formulate specific implementation measures.
2. Organization and implementation
During September to December of 2017, all localities and all member units concerned are to carry out an intensive action and severely investigate and prosecute criminal violations against intellectual property rights of foreign-invested enterprises, and timely expose a group of typical cases, thereby forming a strong deterrent. Developments of significant cases are to be timely reported to the Office of the National Leading Group on the Fight against IPR Infringement and Counterfeiting.
3. Summarization of experiences and lessons
Prior to December 31, 2017, all localities and all member units concerned are to make a comprehensive summarization of this action and submit a special action report to the Office of the National Leading Group on the Fight against IPR Infringement and Counterfeiting. The Office of the National Leading Group on the Fight against IPR Infringement and Counterfeiting is to summarize and promote good experiences and practices as it regards appropriate.
III. Work requirements
1. Enhancing organization and leadership
All localities and all member units concerned are to be fully aware of the important significance of improving the work of protection of intellectual property rights of foreign-invested enterprises, enhance organization and leadership, implement work responsibilities, strengthen guidance and inspection, and do well in publicity and guidance. Leading Group Offices at all levels are to strengthen coordination, and timely supervise and inspect the implementation. All localities and all departments concerned are to earnestly carry out special statistics and submit a progress report of investigation of the cases and related work during the preceding month prior to the 15th of each month.
2. Closely cohering and cooperating
All member units concerned are to enhance the crossdepartment and cross-regional cooperation, improve the cooperation mechanism, do a good job in clue circulation, evidence transfer, assistance in investigation of case, joint law enforcement, strengthen the linkage of administrative law enforcement and criminal justice, and further enhance the joint efforts in the supervision and regulation of law enforcement.
3. Increasing the case handling efficiency
Relevant law-enforcing and judicial departments are to smooth reporting channels for offence-reporting and complaining and make public the telephone number for offence-reporting and complaining. Related cases are to be accepted in time and handled quickly according to the laws, and a number of major and significant cases of very high concern and with serious adverse effects are to be handled intensively, so as to further enhance the level of protection of intellectual property rights of foreign-invested enterprises.
Patent infringement in China: finding the source
By Yuanyuan Tian (Ms.)
Article 70 of the Chinese Patent Law, which came into effect on October 1, 2009, reads: "Any person who, for production and business purpose uses, offers to sell or sells a patentinfringing product without knowing that it was made and sold without the authorisation of the patentee, shall not be liable to compensate for the damage of the patentee if he can prove that he obtained the product from a legitimate channel."
Article 25 of the Interpretation (II) of the Supreme People's Court on Patent Infringement Disputes, which came into effect on April 1, 2016, clarifies that:
"Where a party uses, offers for sale, or sells infringing products which have been manufactured and sold without the authorisation of the patent holder, not being aware of this and for production and business purposes and proves the legitimate source of the products with evidence, shall be supported by the People's Court if the patent holder requests the party to stop the acts of use, offer for sale or sale, with the exception that the user of the allegedly infringing products can prove he had paid a reasonable amount for the products.
`Not being aware' refers to actually not being aware and should not be aware.
The `legitimate source' refers to the situation that the products were obtained through normal means of business including legitimate sales channels, normal sales contracts, etc. Regarding the legitimate source, the user, the party offering for sale, or the seller should provide relevant evidence in conformity with the trading habits. "
"Not being aware" is opposite to "actually know". "Should not be aware" refers to a presumption of awareness of infringement based on evidence. In practice, it usually requires a patentee to prove that an opposing party actually knows about the infringement. For example, if the party has received a notice from a patentee, or been given an administration punishment, or even filed an invalidation request against the patent, it proves that the party actually knew this.
To summarize: (i) a person who infringes a patent by offering
for sale and/or selling an infringing product from a legitimate source with no knowledge that his acts constitute patent infringement is not liable for damages but should stop the infringement acts; and (ii) a person who infringes a patent by using an infringing product from a legitimate source with no knowledge that his act constitutes patent infringement is not liable for damages and may continue to use the accused product.
The source of infringement
In Sun Junyi v Zheng Ning (2014), the Chinese Supreme Court elaborated on the intention of the legitimate source defense and held that "the legitimate source defense is prescribed in article 70 of the Patent Law in order to maintain the normal order of the market and to encourage the fight against the source of infringement".
Obviously, the legislators believe that tracing the source of
the infringing product is very important to restrain infringement. And in practice, investigating the act of making the infringing product is rather difficult compared to the acts of offering for sale or selling. The legitimate defense encourages the defendant to confess to the maker of the infringing products.
The above provisions, however, might dramatically reduce the value of a patent in some instances. For example: a patent claims a special machine for manufacturing a disposable package. The patentee operates in the markets for the machine and for the packages. The patentee sold only three such machines in China. The patentee uses its machines to manufacture the packages and its profit mainly relies on the selling of the packages. A party buys several infringing machines from an infringer through a normal channel and uses them to manufacture the packages.
If the party is sued by the patentee for infringement, it could assert the legitimate defense against the patentee to continue to use the accused machines. The damages collected from the manufacturer of the machines are generally calculated from the sale price of the machines. It normally will not cover the losses caused by continuous use of the machines by the party, because the market share of the patentee's packages may be significantly reduced and the patentee may suffer substantial profit losses on the sale of the packages.
In this circumstance, denying the patentee a damage remedy from the party would undermine the value of the patent monopoly and lead to unjust enrichment of the party. In an extremely serious circumstance, the party might instruct the manufacturer to commit a contributory infringement in order to seize the market for the packages. It is usually very difficult for the patentee to obtain adequate evidence for prepared contributory infringement. The awarded damages from the machine maker cannot compensate the losses of the patentee in this case.
In the above example, the total exemption from patent infringement liability of the user of the accused manufacturing machine is quite arguable. There may be a compromise. In 2005 the Guangdong Higher People's Court mediated two parties in a patent infringement dispute to reach a settlement that the defendant continues to use the infringing products by paying reasonable royalties. Likewise, the financial interests of the patentee in the above example may be adequately protected by awarding reasonable
royalties which are calculated based on, for example, the licensing fee minus the damage remedy from the machine maker to avoid double rewards. The innocent party held liable for the reasonable royalties may have a contractual cause of action for breach of warranty to get some protection.
In summary, the courts should be cautious and take a "total circumstance" consideration in applying the legitimate source defense in practice, especially the consequence of granting a total exemption from the liability of infringement act of use under the legitimate source defense, although there is no literal exception to the defense prescribed in the articles.
(published on WIPR September/October issue, 2017)
The ins and outs of reconsideration
By Xiaojun Guo
In patent prosecution, reexamination or invalidation proceedings, the State Intellectual Property Office of China (SIPO) or the Patent Reexamination Board (PRB) undertakes examinations and informs the applicant, petitioner or patentee of its decisions (in essence "specific administrative acts") by various notifications in different phases.
Against those decisions, unless otherwise specified by the laws or regulations, the applicant may either initiate legal proceedings before the Beijing Intellectual Property Court or file a request for administrative reconsideration with SIPO.
Some decisions, such as rejection decisions of SIPO, reexamination decisions and invalidation decisions of the PRB, are not subject to administrative reconsideration. If an applicant is not satisfied with a rejection decision, it can only file a request for reexamination with the PRB. If an applicant
is not satisfied with a reexamination decision or a party is not satisfied with an invalidation decision, it can only appeal against the decision to the court.
Although various decisions in relation to patent applications or patents can be subject to administrative reconsideration, such proceedings were not prevalent in the past. Only in recent years has there been a rapid growth of the cases. In 2016, SIPO received 165 administration reconsideration cases, an increase of 129% over 2015.
Most of the administrative reconsideration cases concern procedural matters, although they may involve substantive matters, such as rejection of a priority claim because the later and the prior applications relate to different subject matter.
In an administrative reconsideration case, two consecutive numerals of the priority number were wrongly transposed. SIPO rejected the priory claim and the decision was affirmed in the administrative reconsideration proceedings.
Another administrative reconsideration case involved the priority claim of a Chinese design application to a prior US design application, which was denied because part of the broken lines in the prior application were amended into solid lines to show an entire product. The decision of the design division was affirmed during the administrative reconsideration proceedings and SIPO held that the subject matter in the two applications was different.
In another administrative reconsideration case, the applicant requested SIPO to cancel the previous decision of an examination division that its divisional application was deemed not to have been filed. The applicant said the opinions of the examiner on the unity of the claims were raised in the rejection decision and did constitute effective opinions for filing a divisional application. SIPO refused the request and made a decision of administrative reconsideration affirming its previous decision.
The administrative reconsideration proceedings are conducted within SIPO, but by the division of legal affairs--a
separate division from the examination divisions. In spite of this, the examiners handling reconsideration matters and the examiners in charge of examinations are normally trained in the same system, they share information within SIPO, and some examiners of the division of legal affairs are from the PRB or the examination divisions.
It is not surprising therefore that the examiners of the division of legal affairs are inclined to sustain decisions made by the examination divisions or the PRB in administrative reconsideration proceedings.
The time to file
When should someone consider filing a request for administrative reconsideration instead of initiating legal proceedings right away?
A decision issued by examination divisions is normally made by one examiner. In administrative reconsideration proceedings, however, the applicant can normally rely on a panel of three experienced examiners and can even ask for a face-to-face meeting with them. The applicant may sometimes get constructive input from those experienced examiners, although the examiners are obliged to follow the provisions of the Patent Examination Guidelines strictly.
A request for administrative reconsideration shall be filed within 60 days of a decision of the examination divisions; this time limit is the same as that for initiating legal proceedings. However, the administrative reconsideration proceedings are much more flexible and easier than legal proceedings. For example, the power of attorney doesn't need to be notarised and legalised, and the evidence doesn't need to be prepared as strictly as in legal proceedings.
The administrative reconsideration proceedings are free of official fees. SIPO shall normally make a decision of administrative reconsideration within 60 days. Upon receiving the decision, the applicant may initiate legal proceedings within 15 days. Counting from the previous decision of the examination divisions, it offers the applicant an additional 75 days to get ready for a possible administrative litigation.
Alternatively, the applicant may appeal against a decision of administrative reconsideration with the State Council to obtain a final decision. However, this less occurs in practice.
(Published on WIPR )
New development of patent infringement compensation in China
By Chuanliang Lu
I. Attention received for low patent infringement compensation
In recent years, China's intellectual property legislation has been continuously improved, and protection of intellectual property rights has been constantly strengthened, which is particularly evident in patenting system that is most closely related to national policy for the promotion of innovation. At the legislative level, the State Intellectual Property Office of China is promoting the fourth revision of the Patent Law of the People's Republic of China. At the judicial level, the Supreme People's Court issued two judicial interpretations of patent infringement disputes in 2015 and 2016 respectively and related judicial guidance documents in response to the long-standing issue of "low compensation" in patent litigation.
II. Changes in legal norms for patent
Provisions for patent infringement compensation are set forth in Article 65 in the latest amendments to the patent law (draft). On the basis of the initial provisions, a punitive compensation system for intentional patent infringement is introduced. It is provided in Article 65 of the draft amendments that, "for the intentional Patent Infringement, the people's court may, according to such factors as the circumstances, scale and consequence of the infringement, the amount of compensation determined according to the previous two paragraphs shall be increased to two to three times". The punitive compensation to intentional infringement will serve as a further deterrent to such acts of intentional infringement as repeated infringement or the like.
In the "Regulations on the Application of Law in the Trial of Patent Dispute Cases" promulgated by the Supreme
People's Court of the People's Republic of China in 2015, limitation over the amount of statutory compensation for patent infringement is deleted, and "generally from RMB5,000 to RMB300,000with a maximum not exceeding RMB500,000" in the initial provisions of determining the amount of compensation was amended to "determining the amount of compensation in accordance with the provisions of Paragraph 2 of Article 65 of the Patent Law on the basis of such factors as the type of patent right, the nature and circumstances of the infringement".
The "Interpretation (II) on a number of Issues Regarding the Application of Law in the Trial of Patent Infringement Cases" promulgated by the Supreme People's Court in 2016 provides solution for difficult proof in patent infringement litigation as well as for low compensation. Article 27 of this judicial interpretation makes some improvement to the rules of proof for the amount of compensation in patent infringement litigation. According to the preliminary proof of the patentee and the relevant evidence possessed by the infringer, the burden of proof on profits obtained by the infringer is assigned to the infringer, and this shall be in line with the order of calculation of the amount of compensation provided in Article 65 of the Patent Law.
It is particularly indicated in the Outline of China's Intellectual Property Protection (2016-2020) issued by the Supreme People's Court in 2017 that, a scientific and rational intellectual property infringement compensation system shall be established, and a compensation system compatible with the value of the intellectual property shall be established, taking into consideration of the loss of the patentee, the profit obtained by the infringer, the license fee, the statutory compensation and costs in safeguarding the rights and interests.
III. Continuously increased amount of patent infringement compensation in judicial practice
By making a statistical analysis on the winning cases in patent infringement litigation in the past three years, it is found that the amount of compensation obtained by the patentees has shown a significant rising trend. The average amounts of compensation ruled in 2015, 2016 and the first half of 2017 are RMB350,000, RMB1,024,000 and RMB1,103,000, respectively.
The percentage of the amount of compensation ruled by the court to the amount of compensation claimed by the
patentee is also increased year on year. The average percentages in 2015, 2016 and the first half of 2017 are 44.6%, 57.6% and 87.7%, respectively. In terms of the amount of compensation, the average amount of compensation obtained by patentees from abroad or from Hong Kong, Macao and Taiwan is RMB1,022,000, significantly more than the average amount of compensation of RMB757,000 obtained by patentees from the mainland China over the same period (Data Source: Beijing Intellectual Property Court official WeChat "Intellectual Property Beijing").
IV. Statutory compensation is still the mainstream in judicial practice, but the number of cases exceeding the amount of statutory compensation is gradually increased
According to the provisions of the Chinese Patent Law, the amount of patent infringement compensation shall be calculated by using the following methods, and these methods are in an applicable consecutive sequence as the following: (1) the losses suffered by patentee due to infringement; (2)the profits obtained by the infringer from the infringement; (3) a reasonable multiple of the patent license
fee shall be referred to; (4) statutory compensation (RMB10,000-1,000,000). In judicial practice, the losses suffered by the patentee in the first consecutive place are often difficult to prove and rarely used. Submission of evidence of the profits of the infringer obtained from the infringement in the second consecutive place is usually necessary for obtaining a large amount of compensation. A reasonable multiple of patent license fee in the third consecutive place is not commonly seen in judicial practice. Where the specific amounts in the preceding three consecutive places cannot be proved according to the evidences of the case, the court may apply the statutory compensation according to the circumstances of the case. If the evidences provided by the parties concerned or the evidences collected in investigation can prove that the applicable statutory compensation is obviously unfair, an amount may be ruled by breaking the upper limit of the statutory compensation.
Evidence is obtained by preservation of evidence for the profits obtained by the alleged infringer. In the patent infringement case of Zhengtai Company v. Schneider Electric Low Voltage (Tianjin) Co., Ltd., Wenzhou City Intermediate People's Court of Zhejiang Province, determines a profit of RMB355 million obtained from the infringement by calculating an average operating profit of Schneider according to the financial material from the industrial and commercial administration and tax department, by preserving as evidence, sales documents of the allegedly infringing products.
Sales data for publicity on websites or other media, sales data from E-business platforms can be used as the preliminary basis for the amount of infringing sales. The industry's average profit margins can be used as the profit margins of the accused product. The alleged infringer's turnover for publicity can also be used as the preliminary evidence of the profits obtained from the infringement. Submission of these evidences are conducive to the judge to rule an amount of compensation within or beyond the amount of statutory compensation. In the patent infringement cases such as Stricker v. Fada, the court ruled that the defendant's financial account and so on shall be preserved as evidences, but the defendant refused to perform the ruling. However, the patentee submitted evidence to prove that the defendant's website proclaims an annual turnover of the infringing product of RMB50 Million to 100 million, and a monthly output of the infringing product of
600,000 sets. Thus, the court ruled on this basis that the defendant shall pay an amount of compensation of RMB2 million.
China's patent infringement compensation system is gradually established. Patent infringement costs increase year by year. Costs for safeguarding the patent rights are decreased. In the judicial practice, the patentee attaches importance to provide evidence to the infringement, but ignores provision of evidence for the infringement compensation, which leads to the application of the statutory compensation when the judge makes a judgment, i.e., ruling an amount of compensation from RMB10000 to RMB1,000,000, by considering comprehensively such factors as the type of patent right, the infringing circumstances and the infringing duration. However, regarding such cases for which the exact amount of losses or profits from the infringement is difficult to be proved, in order to break the amount of statutory compensation, the patentee may submit evidence to prove that the applied statuary compensation is obviously unfair, in which case, the court may synthesize all the evidences of the case, so as to determine an appropriate amount of compensation over the limit of the statuary compensation. Where it is impossible to obtain evidence for the infringement of the defendant, on the basis of submission of preliminary evidence to prove that the infringer obtains far more profits than the statuary compensation, the patentee may request the court to collect evidence for the profits obtained by the defendant from the infringement by making investigation as entitled. If the infringer refuses to provide the evidence, it or he shall bear unfavorable legal consequences. The system of punitive compensation for intentional infringement is currently only embodied in the draft legislation of the patent law, it still needs to be observed whether or not it can become a formal legal provision.
Introduction to the administrative regulations of prioritized patent examination
By Qi Liu (Ms.)
In order to enrich and develop the situations for using the prioritized patent examination system, further shorten the examination cycle, improve the efficiency, as well as boost up Chinese economy, the Chinese Patent Office released the "Administrative Regulations of Prioritized Patent Examination" (hereafter referred to as "New Regulations"), which came into effect as of August1, 2017. The old Regulations, in effective since August 1, 2012, have been annulled at the same time.
The Release of the New Regulations will definitely be good news to all the patent applicants. What kinds of cases can apply the New Regulations, what kinds of documents need to be submitted, and how is the examination conducted? With all the questions, Let's probe into this New Regulations.
1. What kinds of Chinese patent applications/ patents can apply the prioritized examination
A. The scope of the applicable Chinese patent applications
The New Regulations have expanded the scope of the applicable Chinese patent applications and regulate four kinds as below, for which the prioritized patent examination can be applied:
Chinese patent application for invention during the substantial examination procedures (the only situation in the Old Regulations);
Chinese patent applications for utility model and design;
Chinese patent applications for invention, utility model and design during the Re-examination procedures;
Chinese patents for invention, utility model and design during the Invalidation procedures.
B. The scope of the applicable situations (Rule 3 and 4)
The New Regulations have broadened the applicable conditions and regulate that, if a Chinese patent application or a Chinese patent application in re-examination
procedures measures up one of the six situations as below, it would be qualified to request the prioritized examination:
It involves the national key development industries, including but not limited to energy conservation and environment protection, new generation of information technology, biotech, High-end Equipment Manufacturing, new energy, new materials, new energy vehicles, intelligent manufacturing;
It involves the key development industries of which is encouraged by the provincial governments and prefecturelevel city government;
It involves the fields of technologies relating to internet, big data, cloud computing and that technologies or products evolve rapidly;
The patent applicant or the applicant requesting reexamination gets everything ready to implement or has already started to implement, or has shown that a third party is implementing its invention-creation;
It should be the first filing in China and be claimed as the priority for the filing a patent application in another country or region on the same subject matter;
For a invalidation case which also involves a patent infringement case, the parties in action have already requested the local patent department to settle, or submit the case to the court, or request the Arbitration mediation organization for arbitration and mediation;
Other situations that has significant interests for China and the public, and therefore need to be examined as a priority.
C. The filing methods of the applicable Chinese patent applications
The Chinese patent application or the patent application in re-examination should be an E-filing case;
The Chinese patent in invalidation procedures can be either an E-filing case or a paper filing case, but E-filing is preferred.
From the above rules , it is clear that the scope of the applicable applications/patents has extended to all kinds of patent applications/patents and almost covers the substantial procedures for a Chinese patent application in its whole lifespan. In comparison, the required documents in the New Regulations are much more simplified and feasible for preparation.
2. What documents need to be submitted for the prioritized examination?
A. The request form
The request form for a Chinese patent application in substantial examination is different from the one for a Chinese patent application in re-examination and invalidation procedures;
For two Chinese patent applications filed on the same day for the same subject matter (in accordance to Article 9, Chinese Patent Law), if the patent application for invention requests the prioritized examination, the Chinese application number for the same-day-filing application for utility model is necessary to be filled in the request form.
B. Prior art and prior design
It is the only necessary document for a Chinese patent application in substantial examination to request prioritized examination;
Prior art refers to the definition in Article 22, para 5 of the Chinese Patent Law, i.e. any technology known to the public before the date of filing in China or abroad;
Prior design refers to the definition in Article 23, para 4 of the Chinese Patent Law, i.e. any design known to the public before the date of filing in China or abroad;
The applicant should focus on the prior arts or prior designs that are mostly relevant to the Chinese patent application, and with the ideas that the documents are to facilitate the examiner to accelerate the examination;
Patent documentation with only the documentation serial numbers and published date, indicating the relevant paragraph or picture numbers are sufficient;
As for the non-patent documentation, such as magazines or books, it is suggested providing the full pages or the relevant pages.
C. Other relevant supporting documents, which refer to the documents that would prove that the case falls into one of the situations described in rule 3 or 4 in the New Regulations
An introduction made by the applicant, explaining that the technologies in the Chinese patent applications belongs to the key industries, the technologies or the products regulated in Rule 3;
The copy of Certificate that could attest the technologies in the Chinese patent applications belongs to the key development industries of which is encouraged by the provincial governments and prefecture-level city government;
The product photos, the product catalog, the product manual etc. that would prove the applicant has already prepared to implement the Chinese patent case;
The sale contract, the supply agreement, the purchase
invoices and other documents that would prove the trade and sale of the products, in order to prove that the applicant has already started to implement the Chinese patent case or there would be potential infringement upon the Chinese patent case;
The Official Filing Receipts of other national or regional filings, that would prove the first-filing Chinese patent case is claimed as the priority for other national or regional filings. In case that the first-filing Chinese patent applications is claimed as the priority for the PCT application, the PCT application number in the request forms is sufficient.
The request form should be also executed by the local Patent Office or the related State Departments for recommendation;
The related State Departments refer to the state departments in charge of technology, economy and industry, as well as the member of the state intellectual property strategy mediation associates (established in 2016, with 28 government departments, and based in Chinese Patent Office;
Three exceptional situations: the first-filing Chinese patent application, the patent application in re-examination which the request for prioritized examination has been once made during the substantial examination procedures; the prioritized examination is requested by the local Chinese Patent Office, the courts or the Arbitration mediation organization.
E. In case of the joint applicants, the request for the prioritized examination should be consented by all the coapplicants
For the Chinese joint applicants, the signature on the request form is sufficient;
In case that one of the co-applicants, or all the co-applicants are foreign applicants, the Consent Declaration signed thereby is necessary.
Having had the applicable applications/patents and the supporting documents, the procedures to initiate the request for prioritized examination are as follows.
For a Chinese application for invention: after entry into the substantial examination procedures;
For a patent application for utility model or design: after filing the new application and the full payment of the filing fees;
For a Chinese patent application/patent in re-examination procedures or invalidation procedures: after the request for re-examination or invalidation and the full payment of the requesting fees, and before a decision is made.
B. Acceptance by the Chinese Patent Office
For Chinese patent applications: after receiving the Request for prioritized examination as well as the documents in support, it will take about 3 5 working days for the Chinese Patent Office to issue the Notifications about whether the Request is accepted or not;
For Chinese patent applications/patents in re-examination procedures or invalidation procedures: the Chinese Patent Office will examine the Request as well as the documents in support and send the Notifications about whether the request is accepted or not as soon as possible.
C. The terms and procedures
For a Chinese patent application for invention: the first office action will be issued within 45 days from the date of Official Receipt of the Request for prioritized examination, and the final decision to grant or rejection will be made within one year;
For a Chinese patent application for utility model or design, the final decision on grant or rejection will be made within 2 months from the date of Official Receipt of the Request for prioritized examination;
For a Chinese patent application in re-examination procedures: the final decision to withdraw or withhold the Rejection Decision will be made within 7 months from the Official Receipt of the Request for prioritized examination;
For a Chinese patent for invention or utility model: the case will be closed within 5 months, and for a Chinese design patent, it will be within 4 months from the Official Receipt of the Request for prioritized examination.
D. Time for response
For a Chinese patent application for invention: a notification or office action should be responded within 2 months from
the notification date;
For a Chinese patent application for utility model or design: a notification or office action should be responded with 15 days;
When responding the notification or office action, the applicant cannot use the postal days.
For a Chinese patent application in re-examination procedures or a Chinese patent in invalidation procedures, the term for response is as same as an ordinary application/ patent.
Bearing in mind the prioritized examination can not guarantee your safety in the examination as the New Regulations also regulate the situations where the Chinese Patent Office can terminate the prioritized examination and convert the procedures to the standard ones.
4. Termination of the prioritized examination
A. For a Chinese patent application, if one of the four situations as below arises, the Chinese Patent Office can terminate the prioritized examination, and use the ordinary procedure to continue the examination. The Chinese Patent Office will inform the applicant of the termination as soon as possible
After the request for prioritized examination is accepted, the applicant makes voluntary amendments under the Implementing Regulations, Rule 51, para 1 and 2;
The response to a notification or office action is overdue or extended;
The documents filed in support of the Request for the prioritized examination are found as false or fake, and in bad faith;
The patent application is found abnormal during the examination procedures.
B. For a Chinese patent application/patent in reexamination procedures or invalidation procedures, if one of the six situations as below arises, the Chinese Patent Office can terminate the prioritized examination, and take the ordinary procedure to continue the examination. The Chinese Patent Office will inform the applicant of the termination as soon as possible
The response to the notification is delayed;
After the request for prioritized examination is accepted, the applicant requesting the invalidation submits supplementary grounds and evidence;
After the request for prioritized examination is accepted, the patentee makes amendments of the claims instead of deletion.
The re-examination procedures or the invalidation procedures is suspended;
The procedures for re-examination or invalidation rely on the conclusions of other cases;
Difficult cases, which is approved by the Director of the Reexamination Board.
The New Regulations mentioned above reveals the substantial efforts made by the Chinese Patent Office to speed up the examination procedures and to invigorate the patent applications and enforcement, which, undoubtedly, is exciting news for the most qualified Chinese individuals and entities. However, it is well worthy of our notice that the New Regulations have excluded the foreign applicants.
It is the Recommendation that is difficult for the foreign applicants to obtain to validate their qualification. While, since the New Regulations clearly indicate one exception for submitting the Recommendation, i.e. the first-filing Chinese patent applications, the foreign entities would feel free to request the prioritized examination, given that they have their creation-invention or designs firstly filed in China and claim the first-filing Chinese patent application to other countries or regions.
On the other hand, a Chinese patent application/patent jointly owned by both a Chinese and a foreign entity shall also enjoy the prioritized examination, so that all the sufficient documents for requesting the prioritized examination can be in good preparation by the Chinese coowner. In practice, foreign applicants with Chinese subsidiaries or affiliates, given that their Chinese applications/patents belong to the applicable situations, may take this measure to accelerate the examination.
As the New Regulations are beneficial for both domestic and foreign applicants, we can take it for granted that the Chinese Patent Office will receive more requests in this regard from August 1, 2017 and the examination in China will develop at full speed.
Administrative litigation on review of opposition to trademark " & DEVICE"
By Chengyan Zhao (Ms.)
I. Case introduction
Case number of the first instance: (2014) Yi Zhong Xing (Zhi) Chu Zi No. 6182
Case number of the second instance: (2016) Jing Xing Zhong Zi No. 3250
Appellant (plaintiff in the original trial): Puma Se
Appellee (defendant in the original trial): Trademark Review and Adjudication Board of the State Administration for Industry & Commerce of the People's Republic of China
Third party: Shishi City Xiongbaolang Garment Development Co., Ltd.
Puma Se lodged opposition and review of opposition to the trademark "&DEVICE" No. 3297579 (hereinafter referred as "the opposed mark") of Shishi City Xiongbaolang Garment Development Co., Ltd. (hereinafter referred as "Xiongbaolang Co., Ltd.") based on their trademark "PUMA & DEVICE" IR No. 582886 ("the cited mark 1") and trademark "DEVICE" IR No. 593987 ("the cited mark 2"). The Trademark Review and Adjudication Board ("TRAB") ruled that the opposed mark and the two cited marks did not constitute similar marks in respect of similar goods, so the opposed mark was approved for registration. The court of first instance overruled the claim of Puma Se mainly because of the trademark No. 736710 ("the basis mark") owned by Xiongbaolang Co., Ltd. The court of second instance did not approve the conclusion of the court of first instance that the opposed mark was the extension of the business goodwill of the prior trademark. The decisions of the original trial and of the TRAB were cancelled by the court of second instance.
II. Main facts and decisions:
The cited mark 1:
The basic registration of this mark is in Germany, with the registration date of June 3, 1991. The designated goods are "clothing, footwear, headgear and
etc." in class 25. It is valid for protection in China now.
Cited mark 2:
The basic registration of this mark is in Germany, with the registration date of September 19, 1990. The designated goods are "clothing, footwear, headgear and etc." in class 25. It is valid for protection in China now.
The opposed mark:
The application date is September 5, 2002, with the designated goods of "clothing; layettes; swimsuits; water-proof clothing; football shoes; shoes; hats; hosieries; gloves (clothing); neckties; belts (clothing)" in class 25.
The basis mark:
The application date is September 1, 1993, and the registration date is March 21, 1995. The designated goods are "clothing" in class 25. It is a valid registration now.
Puma Se submitted many evidential materials to prove the fame of the cited marks, and asked to get the cited marks recognized as well-known trademarks in China. Xiongbaolang Co., Ltd. submitted some certificates of awards of the basis mark.
The TRAB ruled that the opposed mark and the cited marks had coexisted and formed a relatively stable market order. The court of first instance ruled that the basis mark had gained certain fame through use and there was no evidence to prove that the coexistence of the opposed mark and the cited marks had caused any confusing or misleading results; as the opposed mark was identical to the device part of the
basis mark and the goods of two marks were the same or similar, the business goodwill of the basis mark could certainly be extended to the opposed mark; thus the coexistence of the opposed mark and the cited marks on the same or similar goods would not be likely to cause confusions among consumers as of the origin of goods. The court of second instance ruled that the registrant held independent trademark rights on their different trademark registrations. There was no certain extended relationship between the prior mark and the later mark. The changes made by Xiongbaolang Co., Ltd. to the prior mark increased the possibility of confusion among common consumers, which could not be deemed as justified. Therefore, the decisions of the TRAB and of the original trial were incorrect in law application, which should be cancelled by law.
III. Analysis and further thoughts
The decision of the court of second instance clearly indicates: the key issue to consider in determining whether the later trademark application of the same registrant is an extended application of the prior registration is, whether the prior trademark registration has gained certain fame through use, which therefore leads the relevant public to connect the later-filed identical or similar trademark application with the prior trademark registration and to believe the goods bearing the two marks come from the same trademark registrant or have certain relationships.
When examining the business goodwill extension of the prior trademark registration, the court of second instance has mainly considered the following factors:
The time of application of the basis mark's and of the cited marks': the filing date of the basis mark of Xiongbaolang Co., Ltd. is later than that of the two cited marks of Puma Se;
The use evidences and fame of the two parties' marks: from the use evidences, it can hardly be determined that the basis mark is obviously more famous than the two cited marks;
The comparison between the prior mark and the later mark: comparing to the basis mark, the opposed mark is more similar to the cited marks;
The comparison between the goods of the prior mark and of the later mark: the basis mark is only approved on "clothing", and the goods covered by the opposed mark are
Based on the above analysis, the court of second instance has ruled, Xiongbaolang Co., Ltd. made the opposed mark more and more similar to the cited marks by changing the prior marks' sign and extending its designated goods. These changes increase the possibilities of confusion among common consumers. Thus, the court of second instance does not approve the conclusion of the court of first instance that the opposed mark is an extended application of the prior mark based on its business goodwill.
As the representative of Puma Se, the writer has the following further thoughts:
When the so-called "basis mark" No. 736710 was filed for application, Puma Se lodged opposition and review on opposition to it. However, at that time, a) TRAB's decision was final, which was not submitted to judicial review, b) Puma's goods in China were mainly footwear, and c) clothing and footwear were strictly considered as dissimilar; so this mark was approved for registration on "clothing". To those "edge ball" trademark registrations caused by historically reasons, we suggest the client trying best to keep them in the scope of the already registered signs and goods. If their registrants make them more and more similar to the clients' marks by amending the sign and the goods, we would suggest clients firmly cracking down on such activities.
Nowadays, there are some entities and individuals who try to copycat others' famous marks "step by step": filing an application which is not very similar to the target mark first, with the goods closely related but not the same or similar, then subsequently filing several amended applications with slightly different signs and broader goods description; the later marks are more and more similar to the famous mark, and finally the aim of copycat is accomplished.
In this particular case, the court of second instance has mainly analyzed four factors. The writer believes that the four factors are serving the same key issue, namely, whether "it increases the possibility of confusion among common consumers". In other cases, the factors being considered could be more or less. However, as long as the application of the later mark would increase the possibilities of confusion among common consumers, it should not be approved for registration by simply adopting the theory of extended business goodwill of the basis mark.
Brief analysis on the judicial data (trademark section) of Beijing IP Court in 2016
By Gang Hu
As one of the three IP courts first established in China, Beijing IP Court has always played the role of pioneer in the reform of judicial judgment of intellectual property in China. The analysis on the judicial data of Beijing IP Court is significant since it is not only aiming at the objective evaluation of a court but also disclosing the current situation in the judicial protection of the most advanced and top-level intellectual property in China. The following is a brief analysis to the important figures of the judicial protection data (trademark section) of the Beijing IP Court in 2016.
In 2016, the Beijing IP Court totally accepted 4840 administrative cases regarding authorization and affirmation affairs, among them 88.31% administrative cases (4274 in total) relating trademark affairs.
The average duration of trial in 2016 for Beijing IP Court acting as court of first instance, to conclude trademark civil cases is 331 days. Whereas, the average duration of trial of trademark administrative Cases is only 158 days. However, the average duration of trial for different nature of trademark administrative cases has significant difference. The specific details are as follows.
Brief of Case Review on Official Refusal
Average Duration of Trial in 2016 (Days)
Review on Opposition
Review on Non-registration
Review on Non-use Cancellation
Brief of Case
In the cases with administrative ruling cancelled according to the judgment by Beijing IP Court in 2016, the substantial
and procedural issues are as follows:
Issues Involved Same or Similar Trademarks and
Cancellation on Non-use
Priority Rights / Preemption in bad faith
164 143 122
Beijing IP Court newly accepted 5,936 trademark-related administrative cases of first instance in total and concluded 4,356 cases in 2016, 34.9% higher than those in 2015. Among them, there are 964 cases with administrative ruling overruled, making the rate of overruling 24.0%. In other words, about one fourth trademark-related administrative cases were reversed by Beijing IP Court. Then, it is worthwhile to stick to your own opinions through judicial procedure.
In the recent years, "preemption in bad faith" has become a hot topic in the protection of trademark rights. In the trademark-related administrative cases concluded by Beijing IP Court in 2016, there are 284 cases involving preemption in bad faith in total, representing 7.1% of the total cases judged; among them, there are 129 cases with preemption in bad faith affirmed by the court, representing 45.4% of the total cases involving such issue. In addition, it is worth mentioning that there are 383 cases involving well-known trademarks judged in the trademark-related administrative cases. The judicial authority strictly and prudently affirms the well-known trademarks on the principle of judgment on individual cases. The proportion of cases with trademarks affirmed by judicial authority as well-known trademarks in 2016 is 11.7%.
In the trademark-related civil cases, in 2016, Beijing IP Court concluded 108 trademark-related civil cases in total. Among them, there are 26 civil cases of first instance, among which 14 cases are concluded through judgment, and the plaintiff's winning rate is 92.9%.
In the civil judgment of first instance, there are 11 cases with well-known trademarks affirmed, and there are 10 cases in which the plaintiff wins the litigation, realizing a winning rate of 90.9%.
It is particularly important to point out that, in the trademarkrelated civil litigations, there are 12 cases with plaintiff involving foreign parties in total, which are concluded through judgment and in which the foreign parties (plaintiff) win the litigation. Among them, there are three trademark civil litigation cases involving affirmation of well-known trademark. The average value judged in all three cases is around 2. 26 million RMB (0.29 million Euros) higher than the average valued judged in 2015, which explains the compensation judged in the cases involving affirmation of well-known trademarks in 2016 is overall higher than that in the previous year. Therefore, it is indeed positive news to encourage the foreigners to defend their legitimate and crucial part of their IP assets, the well known trademark, from any dilution and infringement in the Chinese market.
This publication is designed to provide our friends and clients with up-to-date information regarding intellectual property in China. It is not intended to provide legal advice. We welcome your suggestions and comments.