No.191 June 28, 2022 |
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| Unitalen News |
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In this issue
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 Nice NCL11-2022 Classification Table for China-Japan-South Korea Trademark Applicants
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Per the arrangement among China, Japan and South Korea for the cooperation in the field of trademark protection, the Trademark Office of the China National Intellectual Property Administration recently announced the correspondence table of codes for China-Japan-South Korea similar groups of goods and services under code of the Nice Classification NCL11-2022. For details please follow the link to the table:
Nice NCL11-2022 Classification Table.xlsx
(Source: Trademark Office of CNIPA website)
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| China's Patenting in "Belt & Road" Countries on Two-way Growth in 2021
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According to the Patent Statistical Bulletin of China and Countries Along "Belt and Road" (2021) recently released by Strategic Planning Department of CNIPA, the numbers of published patent applications and grants of Chinese enterprises in countries along the Belt and Road were 8,596 and 4,711 respectively, a year-on-year increase of 29.4% and 15.3% in 2021. The numbers of applications and grants for invention patent from countries along the Belt and Road were 25,000 and 16,000 in China, a year-on-year increase of 7.7% and 18.1%, respectively.
In 2021, the number of published patent applications of Chinese enterprises in member countries of the Regional Comprehensive Economic Partnership (RCEP) was 7,318, which accounted for 85.1% among all the published patent applications of Chinese enterprises in countries along the Belt and Road, with a year-on-year increase of 23.0%; and among all the patent grants of Chinese enterprises in countries along the Belt and Road, 3,158 were authorized in RCEP member countries, accounting for 67.0%, with a year-on-year increase of 24.8%.
Among the published patent applications of Chinese enterprises in countries along the Belt and Road in 2021, the number of patent applications in the field of digital communication was the largest, up to 2,073.
Enterprises from Guangdong-Hong Kong-Macao Greater Bay Area made the most published patent applications in countries along the Belt and Road in 2021, up to 3479 applications, accounting for 40.5% of the total, with a year-on-year increase of 16.8%.
A total of 1,615 enterprises in China developed a patent application layout in countries along the Belt and Road in 2021, a rise of more than 200 enterprises over the previous year. Enterprises from Beijing and Guangdong dominated, equally sharing the top ten on the rank.
(Source: China Intellectual Property News)
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| CNIPA's Announcement on Adjustment of the Standard of Nucleotide or Amino Acid Sequence Listings Electronic File (No. 485)
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According to the relevant resolutions of the World Intellectual Property Organization (WIPO), as of July 1, 2022, the WIPO Standard ST.26 "Recommended Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings using XML (eXtensible Markup Language)" shall apply to any patent application with nucleotide or amino acid sequence listings in electronic file. In order to implement the Standard, relevant matters are hereby announced as follows:
I.For national patent applications and PCT international applications filed to CNIPA as of July 1, 2022, if the patent application documents contain sequence listings, the electronic file of the sequence listings shall comply with the requirements of WIPO Standard ST.26.
Further information regarding WIPO Standard ST.26 is available on the WIPO website:https://www.wipo.int.
II.For national patent applications and PCT international applications filed prior to July 1, 2022, the applicant shall still submit the sequence listings in accordance with the Standard for the Presentation of Nucleotide and/or Amino Acid Sequence Listing and Its Electronic File (No. 15 Order of CNIPA) and the Revision of Part of Feature Keyword Table in the Standard of the Intellectual Property Industry (Electronic File Standard) (No. 248 Announcement of CNIPA).
III.When the patent applicant submits the national patent application in the electronic form with the electronic file of the sequence listing under WIPO Standard ST.26, the applicant shall also file a sequence listing in the PDF format for calculation of the additional cost of the Description.
(Source: CNIPA website)
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| China Witnessed a Year-on-Year Trade Growth with BRICS Countries by 12.1% in Past Five Months
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According to the data released by the General Administration of Customs of PRC on June 21, bilateral trade between China and the four BRICS countries, Russia, Brazil, India, and South Africa continued to grow in the first five months of this year, with a total value of 1.31 trillion yuan, a year-on-year increase of 12.1%, and 3.8 percentage points higher than the overall growth rate of China's foreign trade in the same period.
Specifically, for the past five months, China's exports to the other BRICS countries increased 18.1% to 656 billion yuan, and its imports gained 6.6% to 651.71 billion yuan.
In term of countries, Russia is China's biggest partner in the BRICS countries. In the first five months of the year, China had a bilateral trade of 419.8 billion yuan in total, an increase of 26.5%. Among them, exports were 156.7 billion yuan, an increase of 5.2%, and imports were 263.1 billion yuan, an increase of 43.9%. In addition, China's trade with Brazil and India increased 7.3% and 10%, respectively, and reached 415 billion yuan and 344.25 billion yuan, respectively; and its trade with South Africa decreased 5% to 128.65 billion yuan.
In terms of trade products, mechanical and electronic products, as well as labor-intensive goods, accounted for about 69.7% of China's total exports to other BRICS countries, and energy and agricultural products, as well as metal mine and ore accounted for about 76.3% of China's total imports from other BRICS countries.
(Source: the Xinhua News Agency)
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| IP5 Heads Held Its 2022 Series of Meetings
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The five largest intellectual property (IP) offices in the world, aka IP5, from June 8 to 9, had its 2022 series of meetings of heads of the offices online, organized by this year's host – the European Patent Office (EPO). Delegation leaders of the respective offices are Shen Changyu, Commissioner of the China National Intellectual Property Administration (CNIPA), António Campinos, President of the EPO, Mori Kiyoshi, Commissioner of the Japan Patent Office (JPO), Lee Insil, Commissioner of the Korean Intellectual Property Office (KIPO), Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO). Lisa Jorgensen, Deputy Director General of the World Intellectual Property Organization (WIPO), attended the meeting as an observer on behalf of Director General Daren Tang.
The meetings passed the 2022 Joint Statement of the IP5 Offices. At the meetings, IP5 heads approved the achievements and next steps in global dossier, collaborative search & examination pilot, implementation of the IP5 NET/AI roadmap, patent practice alignment and reached consensus on IP5's long-term cooperation in sustainable development.
(Source: CNIPA Official WeChat Account)
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| China and Malaysia Extend PPH Pilot Program
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The CNIPA and the Intellectual Property Corporation of Malaysia jointly decided to extend the China-Malaysia Patent Prosecution Highway (PPH) pilot program, originally started on July 1, 2018, for another five years effective from July 1, 2022 to June 30, 2027. The relevant requirements and procedures for submitting PPH requests in the two offices remain unchanged.
(Source: CNIPA website)
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| Cases in Spotlight
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| Unitalen Representing Emperor Group Succeeded in Invalidating Counterfeit Trademark Across Classes by Judicial Recognition of Well-known Trademark
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Case Brief:
Emperor Group has six companies listed on the main board of the Hong Kong Stock Exchange, with business scopes covering finance, real estate, watches and jewelry, entertainment, hotels, media, furniture and interior decoration, etc. So far, it has become a comprehensive enterprise group with diversified businesses.
Recently, regarding the case of administrative dispute of Emperor Group represented by Unitalen suing CNIPA and the third party HK YING HUANG INTERNATIONAL GROUP HOLDINGS LIMITED over the request for invalidation of Trademark No. 12067509 " ", after the first instance in the Beijing Intellectual Property Court and the second instance in the Beijing Higher People's Court, the Beijing Higher Court made the (2021) Jing Xing Zhong No. 6500 administrative judgment of the second instance on February 7, 2022, determining as follows: the cited Trademark No. 1160070 " " of the Emperor Group has constituted a well-known trademark on goods in "jewelry; precious stones" prior to January 18, 2013, the third party's application for registration of the disputed trademark violates the provision of Article 13.3 of the Trademark Law (2014), constituting a reproduction and copy of a well-known trademark; and the services such as "pleasure boat transport; marine transport" on which the disputed trademark is approved for use are closely related to the goods in "jewelry; precious stones" on which the well-known trademark is approved for use, and the use of the disputed trademark misleads the public, thereby possibly damaging the interests of the Emperor Group. The second instance court overturned the first instance judgment and finally invalidated the disputed trademark.
Typical significance:
Winning this case is a milestone for the Emperor Group’s subsequent right protection actions, as mainly shown in the following aspects:
Firstly, this is the first judgment for the Emperor Group to obtain judicial recognition of its trademark as a well-known trademark. The time of the cited Trademark No. 1160070 being recognized as a well-known trademark is further advanced to January, 2013, which can be used as an important basis and reference for subsequent right protection actions;
Secondly, according to the statistics of CNIPA, the average percentage for the first instance decisions to overturn the Trade Review and Appraisal Board (TRAB) decisions is only 8.2%, and the average percentage for the second instance decisions to overturn the TRAB decisions is only 13.9%. Under the judicial trend where the first instance judgments are very likely to be upheld by the second instance courts, the first instance judgment was successfully changed in this case, and the cited Trademark No. 1160070 of the Emperor Group was further recognized as a well-known trademark, which fully recognized Emperor Group’s brand management over the years and was of great significance to the subsequent right protection.
Thirdly, regarding the protection of the trademarks of the Emperor Group, CNIPA's previous records on administrative recognition and protection of the well-known trademarks were all directed at the goods in Class 18 and Class 25 which are closely related to goods in Class 14 "jewelry; precious stones". This judgment achieved cross-class protection from goods in Class 14 "jewelry; precious stones" to the services in Class 39 "pleasure boat transport; marine transport" for the first time, and widened the scope of right safeguarding and protection of the cited Trademark No. 1160070 as a well-known trademark.
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| Unitalen Representing "ZHOU LIU FU" Won a Complete Victory in Civil Retrial and Procuratorial Supervision Case in Fujian Province!
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Case fact:
The two defendants in the original trial (Zhongbai Jewelry Store and Chendai Town Zhou Liu Fu Jewelry Store) used the above sued marks on the background walls, store signs, jewelry counters, jewelry boxes, billboards, packaging bags, quality assurance certificates and other places in their stores and made the following defense: firstly, this was a reasonable use of the franchisor's business name rather than trademark; secondly, the franchisor enjoyed the right of prior use. The first instance judgment determined that " "(Zhou Liu Fu), " "(Zhou Liu Fu Jewelry) and other sued infringing marks which prominently used "周六福"(Zhou Liu Fu) constituted trademark infringement, while the mark "香港周六福黃金鉆石首飾公司加盟店"(Hong Kong Zhou Liu Fu Gold Diamond Jewelry Company Franchised Store) that did not prominently use "周六福"(Zhou Liu Fu) constituted unfair competition. The two defendants in the original trial appealed, and the second instance judgment revoked the determination of unfair competition in the first instance judgment, on the grounds that the two defendants lacked subjective bad faith, and that no evidence proved that their marks were "confusing and misleading enough to the relevant public", and thus did not constitute unfair competition. After the retrial request made by Zhou Liu Fu Jewelry Co., Ltd. ("Zhou Liu Fu Jewelry"), Fujian Provincial Higher People's Court determined as follows in the (2021) Min Min Zai No. 250 and (2021) Min Min Zai No. 253 civil judgments: (1) the trademarks " " and " "(Zhou Liu Fu) have possessed relatively high reputation and the two defendants in the original trial, as peer competitors, should reasonably avoid these trademarks; (2) "周六福"(Zhou Liu Fu) is the most recognizable and distinctive part in the sued infringing mark " ". The trade name of this Hong Kong company is exactly the same with the word part in the registered trademark of the right owner. In the case that the business scopes of both parties overlap, such using manner is sufficient to cause confusion and misunderstanding and thus constitutes unfair competition; (3) the two defendants in the original trial have no right to defend by using a subsequently obtained business authorization to claim for prior use; (4) the copyright registration date provided by the two defendants in the original trial as evidence is later than the application date of the right owner's registered trademark, which cannot prove the prior copyright; and (5) according to the judicial spirit of the Supreme Court, if enterprises registered abroad carry out business activities in the mainland, they must abide by the domestic laws and reasonably avoid the prior rights that have been protected by the domestic laws when using business marks such as the foreign name of enterprises. Therefore, the two defendants in the original trial cannot be exempted from infringement liability, but after assuming the infringement liability, they can claim rights from the franchisor based on the contract.
Both defendants in the original trial were unsatisfied with the retrial judgment of the Fujian Provincial Higher People's Court and filed an application for civil procuratorial supervision with the Fujian Provincial People's Procuratorate. After civil supervision and review, the Fujian Provincial People's Procuratorate rejected the supervision application of the two cases and determined that: the trademarks " " and " " of the right owner have high reputation in the market, and the sued infringing mark " " is used in prominent positions in stores and billboards, wherein "香港"(Hong Kong) is the name of the administrative region, "黃金鉆石首飾"(gold and diamond jewelry) refers to the scope of business, "公司"(company) or "加盟店"(franchised store) is the form of organization, none of which has the function of identifying the source of goods; and only the trade name "周六福"(Zhou Liu Fu) is the most distinctive and identifiable part of the foreign enterprise name, and is exactly the same as the Chinese part of the registered trademark of the right owner. Therefore, the defendants should avoid the legitimate prior right. In the case of overlapping business scopes of both parties, the using manner of the sued infringing mark can easily confuse and mislead the consumers, thereby eating into the trading opportunities of Zhou Liu Fu Jewelry. Therefore, the retrial judgment is clear in fact determination, correct in the application of law and is proper, and thus the supervision application of the two defendants in the original trial is rejected.
Typical significance:
Domestic entities should perform the careful review duty with reasonable attention when joining a commercial chain. Especially when using the enterprise name registered abroad as a business mark, it is necessary to carefully review whether the prior rights of the peer business operators are infringed, so as to avoid high infringement compensation claims despite low threshold for franchising.
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| Unitalen Representing Smart Delivery Cabinet Finally Won Patent Invalidation and Administrative Litigation
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Case brief:
In 1993 Arno Kütt, one of Cleveron’s owners, founded AS Eerung – a company that manufactured and sold furniture. In 2000, the owners of today's Cleveron started a furniture retailer ON24. By 2009, ON24 has already become the largest furniture retailer in Estonia. In 2006, ON24 created a logistics company SmartPost, and started to develop its unique click and collect solutions, creating hardware and software for automated parcel terminals. In 2007, the name Cleveron was registered. In 2009, SmartPOST parcel terminal network-based delivery service was declared the Logistics Deed of the Year in Estonia. Cleveron is the innovation leader in creating robotics-based parcel terminals and developing last mile click and collect pickup solutions for retail and logistics sectors. Its product range goes from automated smart lockers to parcel robots and parcel terminals.
In the process of entering the China's market, Cleveron found that the PackRobot devices exhibited to the public at the Post-Expo held in Paris in 2015 and actually sold have been counterfeited by a Chinese enterprise which had applied for a patent for utility model. Cleveron entrusted Unitalen litigation team to file a request for invalidation against the above patent after its negotiation failed, and finally all the patent rights for the utility model under the title of "GOODS CARRYING DEVICE FOR WAREHOUSE TYPE AUTOMATIC STORING AND TAKING EQUIPMENT" of that infringing enterprise were invalidated.
Case analysis:
This case has gone through two rounds of invalidation proceedings. In the first round of invalidation proceedings, CNIPA held that although the petitioner made the video published on YouTube website notarized in Hong Kong, the authenticity of the video published on YouTube website was not recognized because the video publishing and modification rules of YouTube website were unknown, and made a decision to uphold the validity of the patent right. Cleveron then filed an administrative litigation against the decision on the invalidation. After trial, the Beijing Intellectual Property Court reversed the invalidation decision and made the judgment that the video published on YouTube website can be used as prior art evidence to evaluate the novelty and inventive step of the patent right involved. In the second round of invalidation proceedings, CNIPA finally recognized all the evidence and determined that the relevant evidences could confirm each other and are sufficient to prove that PackRobot products had been exhibited at the Post-Expo held prior to the application date of the patent involved, and were for public sale in the market prior to that date. Meanwhile, the relevant graphic, literal and video evidence disclosed by PackRobot products have been sufficient to disclose the relevant features of the claims. Even if a small number of features of the claims still cannot be directly observed from the above evidence, these features are all common knowledge in the art. Finally, CNIPA determined that the relevant claims lack novelty or an inventive step and made a decision to invalidate all patent rights.
Thus, Unitalen’s litigation team has successfully helped the client invalidate the counterfeit patents of the competitor and protected the production and sales of the client's products in China from undue infringement threats.
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| Unitalen News
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| Unitalen Partners Including Head of Unitalen, Yu Zehui Participated in "Expert Seminar on Trademark Protection in the Wholesale and Retail Industry" Held by Beijing Trademark Association
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On June 10, 2022, Beijing Trademark Association (BJTA) held the "Expert Seminar on Trademark Protection in the Wholesale and Retail Industry" for advanced research on trademark protection in the commodity wholesale and retail industry. At the seminar, the experts discussed on two main topics of "feasibility and solutions of trademark registration in the wholesale and retail industry" and "feasibility and solutions of trademark protection in the wholesale and retail industry under the existing registration framework", to provide intellectual support for the completion of the Research Report on Trademark Registration and Protection in the Wholesale and Retail Industry. Yu Zehui, chairman of partners committee of Unitalen, Zhang Yazhou, Unitalen partner and lawyer, and Zhao Lei, Unitalen partner and lawyer attended this seminar as members of the Expert Committee of the BJTA.
The BJTA established a research group on "trademark protection in commodity wholesale and retail industry" on May 9, 2022. Yu Zehui, president of the association acted as the group leader, and Zhang Yazhou, an expert of the Third Session of Expert Committee of the BJTA, also Unitalen partner and lawyer acted as the deputy group leader. At the seminar, the experts achieved good discussion results, after 4 hours of communication and exchange, which provided a useful reference for the follow-up drafting of the report.
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| Unitalen Received Honorary Title from the Client Mitsubishi Electric Corporation
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In the afternoon of July 7, general manager of the Intellectual Property Division of Mitsubishi Electric Corporation, Cui Chengzhe, deputy general manager Tejima Yuta, together with the delegation visited Unitalen and awarded the honorary title of "Excellent Cooperative Law Firm of 2021" with the Certificate of Appreciation to Unitalen. Li Yang, deputy head of Unitalen, Wei Wei, chief of the Third International Trademark Department, and Wang Peichao, Unitalen partner and others warmly welcomed and accompanied the guests in the discussion.
Unitalen was awarded by Mitsubishi Electric Corporation for "outstanding contribution to the practical proposal on the commodity catalogue notarization method as a countermeasure against counterfeit design applications ". Mitsubishi Electric Corporation selects one or two excellent cooperative firms worldwide for an award every year. Unitalen is the only Chinese firm to receive this award in this year, and it has been the second time for Unitalen to receive this honor since 2019.
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| The "一品石" Copyright Infringement Case Represented by Unitalen Selected into Summary of Annual Report of the Supreme People's Court on Intellectual Property Cases (2021) |
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Recently, the Supreme People's Court of the People's Republic of China issued the Summary of Annual Report of the Supreme People's Court on Intellectual Property Cases (2021), and the "一品石"(Yipinshi) copyright infringement case represented by Unitalen was selected as a typical copyright case.
The comments on the typical significance of the case in the report are as follows:
★Determination of the originality of art works
In the case of the copyright ownership and infringement dispute [(2021) Supreme People's Court Min Zai No. 121] (hereinafter referred to as "一品石" copyright infringement case) between the retrial applicant Qingdao Cuckoo Electronics Co., Ltd. ("Qingdao Cuckoo") and the respondent ZHENG Jianhong and Zhanjiang Astone Electric Appliance Co., Ltd., the Supreme People's Court pointed out that the design of calligraphy characters, despite reference to the existing fonts in the public domain, belongs to the author’s original expression, and should be determined as a work of art in the sense of the copyright law, as long as it reflects the author's personalized selection, adoption and arrangement.
★Registration and use of the sued infringing mark does not affect the determination of copyright infringement
In the aforementioned "一品石" copyright infringement case, the Supreme People's Court pointed out that although the mark used by the sued infringer has been registered as a trademark and the time limit for filing a request for invalidation stipulated by the law has passed, as long as the mark infringes others' prior copyright, the infringer should bear civil liability for copyright infringement in accordance with the law. Whether the copyright owner has used his work as a trademark does not affect the protection of his copyright.
Related reading: CUCKOO Finally Won The Retrial And Won The Overall Lawsuit Six Years After It Encountered Malicious Squatting And Malicious Lawsuits!
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| Unitalen IP Awarded as "Outstanding IP Service Team in China" (2021) |
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Recently, the "12th China IP International Annual Forum 2022 Annual Conference of In-house IP Managers in China" hosted by the China Intellectual Property magazine announced the annual awards online. Unitalen won another honor as "Outstanding IP Service Team in China (2021)" with its high-quality service, excellent professional qualification and efficient team operation.
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