No.196 November
28, 2022 |
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| Unitalen News |
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In this issue
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 Announcement of the China National Intellectual Property Administration on Acceptance of the European Union Products including Inländerrum to Declare for Protection of Geographical Indication Products (No. 506)
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Announcement of the China National Intellectual Property Administration
No. 506
According to the Agreement Between the European Union and the Government of the People's Republic of China on Cooperation on, and Protection of, Geographical Indications, Provisions on the Protection of Geographical Indication Products, and Protection Methods of Overseas Geographical Indication Products, the application for the protection of geographical indication products of 175 European Union (EU) products, including Inländerrum, has been accepted according to laws. Upon formal review, the information of the 173 EU products including Inländerrum is hereby released; two geographical indication products, Haut-Médoc and Saint-Estèphe, have been under protection and will not be repeatedly released here.
Relevant institutions or individuals, if having any objection to the China's geographical indication products protection upon the 173 EU products including Inländerrum, may raise such objection in writing to the CNIPA within two (2) months from the date of announcement. The application materials are preserved in the Intellectual Property Protection Department of the CNIPA for future reference.
Correspondence Address: Reception Hall of the CNIPA, No. 6, Xitucheng Road, Jimen Bridge, Haidian District, Beijing (Notation: geographical indications objections).
Postal Code: 100088
Contact Number: 010-62086534
Attachments:
1.Information of acceptance and release of the 173 EU products including Inländerrum.pdf
2.List of two protected EU geographical indication products Haut-Médoc and Saint-Estèphe.pdf
China National Intellectual Property Administration
December 2, 2022
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| WIPO Report: Asia Drove Global IP Filings to New High Last Year |
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The latest World Intellectual Property Indicators report released by the World Intellectual Property Organization (WIPO) on November 21 showed that the global intellectual property filings for patents, trademarks and designs in 2021 still hit a new high, which is benefited by the increased filings in Asian countries such as China, South Korea and India.
The report showed that global innovators have filed 3.4 million patent applications in 2021, with a year-on-year increase of 3.6%, and the applications received by Asian offices accounted for 67.6% of the world's total. Among them, the applications from China, South Korea and India increased by 5.5%, 2.5% and 5.5% respectively. Among the data of about 150 countries and regions compiled in the report, the CNIPA received 1.59 million patent applications in 2021, ranking first. Offices in the United States, Japan, South Korea and Europe are not far behind.
Also, in terms of the filings of trademark and industrial design, China also ranked first in the world.
(Source: news.cn)
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| CCPIT: IP Rights help Foreign Companies Continue to Optimize the Business Environment in China |
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Recently, the China Council for the Promotion of International Trade (CCPIT) released the Research Report on China's Foreign Investment Business Environment in the Third Quarter of 2022. According to the Report, from January to September this year, the invention patent filings by foreign companies in China represented by the CCPIT's Patent and Trademark Law Office increased by about 5.8%, compared with the same period of the previous year. Among them, the invention patent filings by US and European applicants in China have increased significantly, reached about 5.2% and 4.8% respectively, showing that foreign companies maintain confidence in the development of the Chinese market and high recognition of the business environment in China.
Also, the data showed that from January to September this year, the high-value invention patent applications filed abroad by the Chinese companies with superior intellectual property rights and represented by the CCPIT's Patent and Trademark Law Office and China Patent Agent (H.K.) Ltd. (CPA) have increased by about 40.6% and 12.2% respectively, compared with the same period of the previous year. And the trademark applications filed abroad by the Chinese companies with superior intellectual property rights and represented by CPA have increased approximately 106.1% over the same period of the previous year. In addition, from January to September this year, the invention patent applications filed by the Chinese companies with superior intellectual property rights in the RCEP member states and represented by the CCPIT's Patent and Trademark Law Office have increased by about 45.6%, compared with the same period of the previous year, showing that since the implementation of the Regional Comprehensive Economic Partnership (RCEP), Chinese companies have a strong momentum in intellectual property layout and investment and operation in the RCEP member states, and the protection and application of patents are more mature.
(Source: China Intellectual Property News)
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| China's Innovation Index Hits New High in 2021 |
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According to the calculations of the China Innovation Index Research group of the Social Science, Technology and Cultural Industries Statistics Division of the National Bureau of Statistics in China (NBS), China's innovation index in 2021 reached 264.6 (based on 100 in 2005), representing an increase of 8.0% over the previous year, and maintained a growth trend for 16 consecutive years.
It was reported that China's innovation index is calculated from 20 evaluation indicators in four fields: innovation environment, innovation input, innovation output and innovation effectiveness. In 2021, the indexes in the four fields reached 296.2, 219.0, 353.6 and 189.5 respectively, representing an increase of 11.3%, 4.4%, 10.6% and 2.8% respectively over the previous year. Among them, the five evaluation indicators and indexes in the field of innovation output that reflects the intermediate output results of innovation have all achieved growth, respectively, the index of patent authorization per 10,000 R&D personnel increased by 16.2%, the index of technology market turnover per 10,000 scientific and technological activity personnel increased by 16.2%, the index of trademark ownership per 100 enterprises increased by 13.6%, the index of scientific and technological papers per 10,000 people increased by 4.2%, and the index of proportion of invention patent authorizations to the patent authorizations increased by 3.5%.
(Source: China Intellectual Property News)
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| Cases in Spotlight
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| Unitalen Represented "Power Dekor" to Snipe at the "Free-Riding" Cross-Class Registration, and Succeeded in Revoking the Sued Ruling
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Case Summary:
Power Dekor Group is the prior right holder of the trademark and name "圣象" (Shengxiang), and is entitled to the exclusive right to use the trademarks " " and " " on the goods of "Floor Boards" etc. in Class 19. The trademark "圣象" (Shengxiang) has been used continuously since 1996 and has a high reputation and influence, and has been given legal protection in administrative cases and civil infringement cases many times.
The disputed trademark is the trademark " " in Class 41, which was applied for registration by YIN, an individual business, on June 11, 2019 in services of "Educational services; Nursery schools; Organization of exhibitions for cultural or educational purposes; Television entertainment; Party planning [entertainment]; Providing sports facilities; Providing recreation facilities; Club services [entertainment or education]; Holiday camp services [entertainment]; Health club services [fitness and physical training]", etc., and was approved for registration on February 7, 2020.
In the Sued Ruling regarding the invalidation against the disputed trademark, the China National Intellectual Property Administration (CNIPA) held that: although the cited trademarks were once recognized as well-known trademarks in China, the disputed trademark was designated for use in services of "Educational services; Sports facilities; Entertainment services" etc. in Class 41, while the trademark "圣象" (Shengxiang) was designated for use in goods of "Floor Boards" etc. in Class 19. There are obvious differences in terms of functional use, consumption place, consumer object, service purpose, etc. The registration and use of the disputed trademark would not mislead the public and damage the interests of the right holder of the cited trademarks. Therefore, the registration of the disputed trademark does not constitute the circumstances referred to in Article 13.3 of the Trademark Law, and the registration of the disputed trademark shall be upheld.
Power Dekor refused to accept the Sued Ruling and entrusted Unitalen to file an administrative lawsuit with the Beijing Intellectual Property Court. Upon a comprehensive analysis of the facts and evidence materials of the case, the attorney representing this case believed that: the registration of the disputed trademark violates the provision of Article 13.3 of the Trademark Law 2014; the cited trademarks have reached well-known prior to the date of application of the disputed trademark; although the approved services of the disputed trademark are not similar to the approved goods of the cited trademarks, they are related to a certain extent and the public may be easily misled; more importantly, the real identity of the registrant of the disputed trademark is an operator in the same industry, not a real business operator in "Educational service, Entertainment" services, and when applying for registration of the disputed trademark, this registrant should have known Power Dekor Group and the cited trademarks.
Court Decision:
Beijing Intellectual Property Court's first-instance judgment revoked the Sued Ruling and ordered the CNIPA to make a new decision.
Typical Significance:
The highlight of this case is that Unitalen attorneys have profoundly and accurately grasped the principle of "on-demand determining and individual case valid" in the Trademark Law on well-known trademarks. The precedent that the same trademark has been recognized as well-known in other earlier cases does not necessarily become a natural reason for obtaining well-known trademark protection in later cases.
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| "Offense and Defense" in Dispute over Trademark Right in OEMs
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Recently, a Unitalen-represented case of confirmation of non-infringement upon the trademark right and dispute over liability for damages due to application for customs intellectual property protection measures was successfully mediated under the organization of the People's Court of Pudong New Area, Shanghai. In this dispute, Unitalen was involved in the two stages of customs seizure and civil litigation, helping the entrusted party of OEM to change from defense to offense, from passive to active in the dispute, and finally fulfilled its appeal.
Customs seizure stage
Offense side : Domestic trademark holder
Defense side : Entrusted party of OEM (represented by Unitalen)
I. Basic case at the customs stage
In 2021, a Jiangsu Company S (pseudonym) declared to Shanghai Customs to export a batch of lamps and lanterns in the form of general trade. And a Company Y (pseudonym) applied for customs seizure on the grounds that this batch of lamps and lanterns was suspected of infringing upon its trademark right filed with the General Administration of Customs, and security deposit was paid. Because the goods were seized, the Company S approached Unitalen for assistance.
After reviewing the materials and discussing with the Company S, the attorney learned that the seized goods were all in OEM: that is, the Company S in China accepted the commission from the overseas trademark owner a Chilean company to manufacture relevant lamps and lanterns, and, according to its written authorization, to affix the trademark provided by the Chilean company on the manufactured products and the external packing, and all the manufactured lamps and lanterns are exported to Chile and not sold in China.
II. Coping strategies
Based on the experience of handling such customs seizure cases, for the goods of OEMs, if the exporter can clearly state the reasons why the exported goods are in OEMs, and provide the trademark registration certificate of the overseas entrusting party in the destination country, the trademark authorization letter to the domestic entrusted party and other materials, the customs will generally make an assertion that it cannot be determined whether it is an infringement. The attorney wrote a Statement of Non-Infringement on behalf of the Company S and provided relevant evidence to the customs. Finally, Shanghai Customs issued a Notice on the Status of Intellectual Property Rights of Imported and Exported Goods, by which an infringement could not be determined.
Civil litigation stage
Offense side : Entrusted party of OEM (represented by Unitalen)
Defense side :Domestic trademark holder
I. Basic case at the litigation stage
In the process of sorting out the facts of the case, the attorney found that the Chilean company had registered the relevant trademark in Chile, Peru and other South American countries a long time ago and carried out commissioned manufacture in China. The domestic registered trademark of the Company Y had obvious traces of imitation. After checking the trademark data under the name of the Company Y, it was found that the Company Y also registered other trademarks similar to those of the well-known lamps and lanterns manufacturers in South America.
II. Offense strategy
According to relevant laws and regulations, if the customs cannot determine whether the detained goods violate intellectual property rights, unless the person applying for the seizure confirms the immediate release of the goods, it needs to wait 50 working days from the date of detention to release the goods if a notice from the court to assist in enforcement is not received. Coupled with the process time before being detained, once the goods are seized, it will cause a significant delay in delivery time. The Company S may continue to manufacture products in OEM for the Chilean company in the future. Also, the customs seizure also caused losses to the Company S, and Company S needed to make up for the losses.
Therefore, after discussing with the Unitalen attorneys, Company S decided to turn from defense to offense, and initiated a lawsuit for confirmation of non-infringement upon trademark rights and a lawsuit regarding the dispute over the liability of damages due to application for customs intellectual property protection measures, so as to eliminate the current unclear legal status of export goods, and make up for the losses. The attorney formulated a multi-level offensive strategy for this case.
(I) Dispute over confirmation of non-infringement upon the trademark rights
1.Taking "OEM" as a shield
At the litigation stage, the plaintiff first continued to claim that the exported goods were manufactured in OEM, which did not infringe upon the defendant's right to exclusive use of registered trademark.
2.Taking "prior rights" and "abuse of rights" as a spear
After the Supreme People's Court's "HONDA Case" retrial judgment was made, the judicial views on OEMs have changed, and it is with some uncertainties to determine whether a domestic entrusted party has infringed upon trademark rights. In order to further consolidate the plaintiff's claim, the plaintiff's attorney further strengthened the claim from the perspectives of prior rights and abuse of rights: that is, claiming that the design part of the defendant's domestic registered trademark is the work of the Chilean company that is entitled to the prior copyright, the word part is the same as the Chilean company's prior used name, and the Chilean company holding the prior right. According to the principle of good faith and the main points of the judgment determined by the Guiding Case No. 82 of the Supreme People's Court, it is believed that not only the plaintiff did not constitute trademark infringement, but the defendant constituted abuse of rights.
3.Using property preservation as a bargaining chip
While filing the case, the plaintiff also initiated a property preservation procedure, and the court ruled to freeze part of the defendant's bank deposits and the deposits paid to the customs.
(II) Dispute over the liability of damages due to application for customs intellectual property protection measures
There are contradicting views in judicial practice regarding the principle of attributing liability for damages caused by application of customs intellectual property protection measures. There is a view that Article 14 of the Regulation on the Customs Protection of Intellectual Property Rights stipulates that the premise of the right holder's liability for compensation is "improper application", so whether the application is improper, and the time point of subjective fault should be considered in the case. There are also views that the key is whether the detained goods can be identified as infringement by the customs or court, if not, it is an improper application. Taking into account the different viewpoints in judicial practice, the attorney in this case suggested that the plaintiff make claims at multiple levels, namely:
The first level: claiming that as long as it is confirmed that the trademark right has not been infringed, the plaintiff's claim for compensation should be supported.
The second level: it is difficult to claim that the defendant's acquisition of the trademark right is legitimate, and the application for customs seizure constituted an improper application from the very beginning.
The main reason is that: Article 28 of the current Regulation on the Customs Protection of Intellectual Property Rights has set the conditions for compensation as "where the customs is unable to ascertain that the detained suspected infringing goods have infringed upon the intellectual property right holder's intellectual property, or the people's court rules that the said goods have not infringed upon the intellectual property right holder's intellectual property right", and the condition of "improperly taking protection measures" in the 1995 Regulation has been abandoned. Moreover, the defendant knew clearly about the Chilean company's trademark, and it was improper from the beginning to apply for customs seizure of the export goods commissioned by the Chilean company to manufacture after the defendant has registered the trademark.
Case outcomes
During the first-instance trial of this case, the court organized the plaintiff and the defendant to reach a mediation: the defendant confirmed that the plaintiff's use of the trademark of the overseas entrusting party on the lamps and lanterns manufactured and exported to Chile did not infringe upon the defendant's right to exclusive use of the registered trademark and paid the plaintiff a certain settlement amount.
Another goal of the plaintiff in this case is to hope that the future OEM goods can be exported to the Chilean company normally without being seized. After negotiation, the defendant also issued a power of attorney to the plaintiff in addition to the mediation agreement, confirming that the plaintiff has the right to mark the relevant trademarks individually or in combination on the goods exported to the Chilean company and of which the importing country and the destination country are both Chile, the outer packaging or containers, transaction documents, and export declaration materials.
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| Unitalen News
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| Unitalen Continue to Win Several Awards from Asia IP 2022 China IP Awards, and Several Partners Included in the List of "IP Experts TOP 100 CHINA" in 2022
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Recently, Unitalen won the honorary medals from Asia IP 2022 China IP Awards. In the four fields of "patent litigation", "patent prosecution", "trademark litigation" and "trademark prosecution", Unitalen was selected into the list of China's IP annual leading firms and was awarded the "Beijing Firm of the Year"!
Additionally, Asia IP announced the 2022 list of the "IP Experts TOP 100 CHINA", and five partners from Unitalen, Li Deshan, Huang Ying, Zhao Lei, Pan Wei, Zheng Yi, were listed in the top 100 because of their high-quality professional services and the general recognition from domestic and foreign industries and customers!
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