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China IP Express 340

Trade Mark

Freudenberg Group wins an important trade mark infringement case

After many years, a trade mark dispute between the Freudenberg Group and a certain Chinese firm (‘the firm’) has finally ended with victory for the Freudenberg Group.

In 2002, the firm applied to register the trade mark ‘Freudenberg’ in class 17, in relation to rubber products and goods made from rubber including sealant material, which are the core products of the Freudenberg Group. When the firm refused to cease its use of the trade mark, the Freudenberg Group officially opposed the application. The opposition was based on the Freudenberg Group’s prior use of the mark in China: one of the most important pieces of evidence was a copy of the production list published by the Freudenberg Group in 1997, which proved first use of the ‘Freudenberg’ mark in China

Recently, the Trademark Appeal Board of the State Administration for Industry and Commerce rejected the firm’s application to register the trade mark ‘Freudenberg’. “Registration would infringe the prior right of the Freudenberg Group and cause confusion to the market. China is now paying more and more attention to the protection of IPR, which will make China a more attractive country to investors,” says Dr Schmid, deputy head of the legal department of the Freudenberg Group, when interviewed on 7 July.

Source: 14 July 2011, http://www.chinaiprlaw.cn/file/2011071420262.html

Copyright

Work on the third amendment of China’s Copyright Law has begun

The Press and Publication Office of the National Copyright Administration has announced that preparation of the third amendment of China’s Copyright Law began on 13 July.

The original Copyright Law, promulgated on 7 September 1990, came into force on 1 June 1991. It was amended for the first time on 27 October 2001, and for the second time on 26 February 2010. According to Liu Binjie, head of the Press and Publication Office of the National Copyright Administration, ‘with the rapid development and wide application of high technology (especially digital technology and network technology), the system of Copyright Law has faced formidable challenges’. The third amendment of the Copyright Law is very significant. It aims to deal with current problems relating to the creation, application, protection and management of copyright in China, while continuing to seek a balance between the interests of authors, transmitters and the public. Copyright law from developed countries will be used for reference.

Source: 14 July 2011,

http://www.ipr.gov.cn/gndtarticle/updates/govupdates/201107/1238575_1.html

This month, Beijing First Intermediate People’s Court handed down a final decision in a case relating to the alleged infringement of copyright in the Founder Qian typeface database. The Court held that P&G’s use of ‘飘柔’ (Rejoice), which appears in the Founder Qian typeface database, on its products (such as shampoo) did not constitute infringement of Founder’s copyright. The element had been used with the implied consent of Founder.

Founder claimed that by selling the Qian typeface database software, it was not authorising the use of any single word, such as ‘飘柔’ (Rejoice), contained in the database. Such words should be regarded as separate art works. Buyers had no right to commercially reuse the individual typeface designs.

In the opinion of the Court, the Qian typeface database is not divided into a personal edition (home edition) and an enterprise edition. Hence, it was reasonable for all buyers of the software to assume that Founder did not prohibit the commercial use of a single word from the database. As a result, advertising companies were entitled to permit their advertisers to produce and issue material designed using the typeface database. Accordingly, P&G’s use of ‘飘柔’ (Rejoice) had been impliedly authorised by Founder and did not constitute copyright infringement.

Source: 14/07/2011, http://bjgy.chinacourt.org/public/detail.php?id=93385

Patent

China responds to the allegation that its High Speed Rail infringes IP belonging to Japan’s Shinkansen

China has refuted Japan’s suggestion that its High Speed ​​Rail infringes Japan Shinkansen’s intellectual property rights. It claims that the technology employed by Beijing-Shanghai High Speed ​​Rail is far more advanced than that of Shinkansen.

Wang Yongping, the spokesman for China’s Ministry of Railways, said that China, which is building the world's largest High Speed ​​Rail network, would not give up the right to apply for a technology patent. Since 2009, China North Vehicle Group and China Academy of Railway Sciences had begun to apply for patents abroad. Earlier this month, Japan’s Kawasaki Heavy Industries, Ltd (‘Kawasaki’) indicated that it would take action if China were to apply for patents relating to its High Speed ​​Rail. However, China responded that although Beijing-Shanghai High Speed ​​Rail was using technology imported from both the East Japan Railway Co. Ltd. and Kawasaki, the technology that it was seeking to patent was innovative. Wang Yongping said: “Shinkansen and Beijing-Shanghai High Speed ​​Rail are not at the same level. A lot of technical features of China’s High Speed ​​Rail are more advanced than those of Shinkansen.”

Source: 12/07/2011, http://www.chinaiprlaw.cn/file/2011071220219.html

IP General

1. The number of such cases has increased rapidly. From 2006 to 2010, the Court had accepted 237 Intellectual Property cases involving foreign parties, an increase of 116.1% over the period 2001-2005.
2. Trade mark disputes accounted for 42.6% of the total number of these cases.
3. In the main, foreign parties came from developed countries; in particular, the USA and Germany.
4. More than half the cases were either discontinued or settled through mediation.

Characteristics of Intellectual Property cases involving foreign parties.

1. These cases attracted more public attention and news reports.
2. In most cases, the foreign parties were plaintiffs and they were successful.
3. Many well-known and reputable businesses have been involved in cases defending their rights against repeat infringers.
4. The proportion of the cases that proceeded to judgment is higher than that of the cases involving only domestic parties.
5. There are many cases in which foreign parties have sued again, after withdrawing their initial action.

Problems which require more attention in Intellectual Property cases involving foreign parties

1. There has been much trade mark infringement in supermarkets and professional markets.
2. In many cases, plaintiffs have been asked to confirm the well-known status of their trade marks.
3. There are some issues relating to ‘statutory compensation’. If it is proved by evidence that the damage suffered or profits lost amounted to more than RMB 500,000 (approx. US$78,000), the Court will award reasonable and adequate relief, which is more than the ‘statutory compensation’, which is based on the ‘Principle of Indemnity’.
4. Sometimes serious infringement of intellectual property rights will give rise to concurrent criminal, administrative and civil liability.
5. More and more frequently, foreign rights holders choose to turn the dispute into one involving only domestic parties, by taking action in the name of their Wholly Owned Foreign Enterprise or licensee.

Countermeasures and suggestions for dealing with Intellectual Property cases in accordance with the law.

1. The right holder bringing a lawsuit should prepare carefully for the litigation, and ensure that claims are reasonable.
2. Parties can choose among various alternative means of dispute resolution in Intellectual Property cases e.g. mediation by guilds or arbitration organisations.
3. The communication and cooperation between different departments could be strengthened to better protect Intellectual Property.

Source: http://www.shezfy.com/book/bps/2010/p08.html