At the request of World Intellectual Property Organization, all member states of the Nice Union shall adopt version 2023 of the 12^th edition of International Classification of Goods and Services for the Purposes of the Registration of Marks (i.e., the Nice Classification) as of January 1, 2023. Applications for trademark registration filed on and after January 1, 2023 shall apply to the new version of the Nice Classification for classification of goods and services, and applications for trademark registration filed prior to this date shall apply to the previous version of the Nice Classification. Based on the Nice Classification, Trademark Office of China National Intellectual Property Administration has made corresponding adjustments to the Classification Table of Similar Goods and Services and has published the Nice Classification together with the revision of the Classification Table of Similar Goods and Services.

Attachment: NCL(12-2023) Chinese version and revision in Classification Table

Trademark Office of China National Intellectual Property Administration

December 26, 2022

In order to thoroughly implement the central government’s strategic plan on promoting the establishment of the Guangdong-Hong Kong-Macao Greater Bay Area, and to help Hong Kong Special Administrative Region residents to protect intellectual property rights in mainland China more conveniently and effectively, the China National Intellectual Property Administration will, in the form of a pilot project, make convenient arrangements for prioritized examination of invention patents of Hong Kong Special Administrative Region applicants in mainland China.

According to the pilot project, as of January 1, 2023, permanent residents in the Hong Kong Special Administrative Region and companies established in accordance with the Companies Ordinance of Hong Kong Special Administrative Region and other legal entities or organizations in the Hong Kong Special Administrative Region can submit relevant application documents through the Guangzhou Agency and Shenzhen Agency of the Patent Office of the China National Intellectual Property Administration, so that any eligible patent application for invention can obtain prioritized examination in mainland China.

The patent application for invention applicable to the pilot project shall be a patent application for invention in the substantive examination phase of Hong Kong Special Administrative Region applicants in mainland China, which pertains to a technical field of the Measures for the Administration of the Prioritized Examination of Patents (No. 76 Order of CNIPA), with its relevant application classification number falling within the scope of the Relationship Table for Reference of Strategic Emerging Industry Classification and International Patent Classification (2021).

Hong Kong Special Administrative Region applicants can submit application documents for prioritized examination of patents to the service window of the Guangzhou Agency or Shenzhen Agency of the Patent Office of the China National Intellectual Property Administration in person or by mail but shall not submit the request for prioritized examination of the same patent application to the two agencies repeatedly. For the specific application procedure, please refer to the website of Guangzhou Agency or Shenzhen Agency and application guidelines for prioritized examination of invention patents of Hong Kong Special Administrative Region applicants in mainland China.

Material for reference: application guidelines for prioritized examination of invention patents of Hong Kong Special Administrative Region applicants in mainland China

(Source: website of CNIPA)

According to the joint decision of China National Intellectual Property Administration, European Patent Office, Japan Patent Office, Korean Intellectual Property Office, and United States Patent and Trademark Office, IP5 Patent Prosecution Highway (IP5 PPH) Pilot Project will be extended for another three years, from January 6, 2023 to January 5, 2026. Relevant requirements and procedures of submitting a PPH request by the applicant under the pilot project remain unchanged.

(Source: website of CNIPA)

According to the joint decision of China National Intellectual Property Administration and Industrial Property Office of the Czech Republic, China-Czech Patent Prosecution Highway (PPH) Pilot Project launched on January 1, 2018 will be extended for another three years, from January 1, 2023 to December 31, 2025. Relevant requirements and procedures of submitting a PPH request with the two offices remain unchanged.

(Source: website of CNIPA)

Case Brief:

The "BAMBOO SALT" brand series toothpaste produced and sold in China by LG Household & Health Care Co., Ltd. (hereinafter referred to as "LG") and its subsidiary in China, LG Household & Health Care Trading (Shanghai) Co., Ltd. (hereinafter referred to as "Lejin") was once recognized as "a well-known trademark" in the relevant trademark management cases of the China Trademark Office.

The decoration of the "竹盐（清新茶香）(BAMBOO SALT (Fresh Tea Flavor))" toothpaste claimed by LG in the case has a green tone, with the bamboo forest as the background on the left, small characters "LG 生活健康(LG Household & Health Care)" and "竹盐BAMBOO SALT", and the characters "清新源(Fresh Source)" in the vertical long red band; in the middle part, with the bamboo forest as the background, tea leaves as green background and bamboo tubes containing bamboo salt in a circular pattern, and characters "清新茶香牙膏(Fresh Tea Flavor Toothpaste)" arranged horizontally; on the right, there are a bamboo knot pattern having bamboo leaves in a dark green background and small characters "清韵茶香(Fresh Tea Flavor)".

LG found through investigation that the defendant, a certain company in Guangdong (hereinafter referred to as "the defendant") used the logo "竹盐素(BAMBOO SALT ELEMENT)" similar to the "BAMBOO SALT" series trademark of LG and Lejin (hereinafter referred to as "the plaintiff") on the "BAMBOO SALT ELEMENT" toothpaste produced, sold and promoted by the defendant, and the decoration of the products of the defendant was highly similar to the decoration of "BAMBOO SALT (Fresh Tea Flavor)" toothpaste of the plaintiff.

In order to effectively safeguard the "BAMBOO SALT" brand, the plaintiff entrusted Unitalen to file a civil lawsuit, claiming that the defendant had committed trademark infringement and unfair competition by unauthorized use of commodity decoration with certain influence of others.

Case Trial Process:

The Foshan Chancheng District People's Court as the court of the first instance, held that the logo "BAMBOO SALT ELEMENT" prominently used on packaging of the accused infringing product constituted the "trademark use" specified in Article 48 of the Trademark Law.

The accused logo "BAMBOO SALT ELEMENT" has completely included the registered trademark "BAMBOO SALT" of LG. According to the evidence on record, the trademark "BAMBOO SALT" of LG has gained relatively high reputation and market reputation in toothpaste products, and the accused infringing product is also a daily necessity. Especially in the case that the color and location of the toothpaste package used by the accused infringing logo is similar to the way in which the plaintiff uses its registered trademark "BAMBOO SALT", the relevant public is very likely to make a misunderstanding. Therefore, the above two logos are confusingly similar, and the action under litigation of the defendant constitutes an infringement of an exclusive right of seven registered trademarks of the plaintiff.

As for the part of unfair competition, the court of the first instance held that although the trade dress of the "BAMBOO SALT (Fresh Tea Flavor)" toothpaste presented a uniqueness unrelated to the functional effect of the commodity, in the case that the registered trademarks involved in the decoration of the product have been protected based on the Trademark Law, the evidence on record is insufficient to prove that the overall design of the product involved in the case has established a relatively stable correspondence with the commodity thereof through actual use of the plaintiff, thus playing the role of identifying the source of the commodity, so the above design does not constitute a trade dress with certain influence.

After the adjudication of the first instance was made, both the plaintiff and the defendant filed an appeal to Foshan Intermediate People's Court of Guangdong Province.

During the second instance, registration of seven trademarks of the plaintiff was upheld by the China National Intellectual Property Administration after the defendant filed a request for invalidation.

Upon trial, the court of the second instance held that the seven trademarks have been approved and registered and are still valid up to now. The first instance judgment was correct in determining that the use of the other party for the "BAMBOO SALT ELEMENT" logo constitutes trademark infringement.

As for the unfair competition, the court of the second instance held that the trade dress involved in the case was related to a design concept with "bamboo" as the core, and the main colors and decorative patterns of the decoration were all related to "竹(bamboo)". The trademark "BAMBOO SALT" is an integral part of the decoration and is closely combined with the green background, bamboo forest, bamboo patterns and other elements in the decoration. The "BAMBOO SALT" series trademark has a relatively high reputation, and the generated spillover effect can enable the relevant public to use the trade dress including the trademark "BAMBOO SALT" as a whole to identify the source of the commodity. Therefore, the trade dress including the trademark "BAMBOO SALT" should be recognized as a mark with certain market reputation and distinguishing characteristics to distinguish the source of the commodity, which pertains to the trade dress with certain influence protected by the Anti-Unfair Competition Law.

The design used by the defendant on the "BAMBOO SALT ELEMENT" toothpaste produced and sold by the defendant is also based on green, with the characters "BAMBOO SALT ELEMENT" on the left side and the bamboo forest as the background, and the bamboo pattern on the right side. The overall composition, color and text layout are similar to the trade dress of "BAMBOO SALT (Fresh Tea Flavor)" toothpaste of the plaintiff in visual effect. According to the provision of Article 6.1 of the Anti-Unfair Competition Law, using without authorization others' trade dress with certain influence of the defendant constitutes unfair competition. Therefore, the court of the second instance corrected the determination of unfair competition in the judgment of first instance according to law.

On this basis, the second instance issued the judgment to uphold the judgment of the first instance on trademark infringement and changed the judgment on the failure of the first instance to determine that the other party constituted unfair competition. At the same time, the amount of compensation was further increased over the first instance.

Thus, LG and Lejin won the lawsuit in rights protection in China.

In addition, after the judgment of the second instance came into effect, the defendant took the initiative to contact the plaintiff regarding the execution of the judgment, including the payment of compensation. This also saves the plaintiff from applying for enforcement procedures, which can be said to achieve the purpose of efficient rights protection.

Case Significance:

From a technical point of view, although the attorney did not accept the fact that the first instance failed to determine constitution of unfair competition, if the defendant had not appealed, the plaintiff might choose not to appeal based on multiple considerations, and the plaintiff would not have won the complete rights protection in the second instance.

Case Brief:

The respondent, a well-known clothing company in Guangzhou, is a subsidiary of a certain well-known listed company in Hong Kong, which has been engaged in clothing design and production for many years and operates multiple clothing brands that have extremely high reputation in China. The respondent designs and produces multiple cloth lines with infringing magnetic buttons, and is engaged in sales and promised sales on Taobao, JD, WeChat Mall and other network platforms. The above acts seriously violate the patent rights of Fidlock.

In the good faith of solving the infringement of the company through friendly negotiation, Fidlock sent a reminder letter to the company on March 9, 2022, informing the company that the overall structure and component features of the magnetic button accessories used in the clothing products publicly sold and promised to be sold in Taobao, Tmall official flagship stores, JD official flagship stores, WeChat official stores and the like at least comply with all the features defined in independent claim 1 of the patent involved in the case. However, within several months after receiving the reminder letter, the company, knowing that the acts thereof have constituted infringement, has always held a negative attitude towards the settlement, and puts off the negotiation process in the name of reconciliation while still refusing to stop the relevant infringement acts.

After several months of ineffective negotiation, Fidlock could only take legal measures to safeguard its legitimate rights and interests and filed a patent administrative dispute resolution request with the Intellectual Property Office of Guangzhou Development Area on August 12, 2022. On August 16, 2022, the Intellectual Property Office of Guangzhou Development Area accepted the request for administrative settlement of the patent infringement dispute, set up a collegiate panel for the examination of the case according to law, and arranged a field inspection before an oral hearing. On December 9, 2022, the collegiate panel presided over the oral hearing and fully listened to the detailed statements of Unitalen attorneys and the respondent on the case. Subsequently, the Intellectual Property Office of Guangzhou Development Area made a ruling on December 13 that the alleged infringing products fell within the protection scope of patents of Fidlock, and ordered the respondent to immediately stop sales and promised sales of the clothing with "magnetic buttons" infringing the patent involved in the case.

So far, with the efforts of Fidlock and the litigation team of Unitalen, Unitalen client Fidlock won again in patent administrative rights protection.

Case analysis:

Unitalen client Fidlock achieved a rapid and comprehensive victory in patent administrative rights protection, which once again highlighted the unique advantages of intellectual property administrative procedure in reducing dispute resolution costs and improving efficiency in resolving dispute cases.