The Supreme People's Court of the People's Republic of China (PRC) released the fourth batch of 15 typical cases of IPR judicial protection in the seed industry by People's Courts, which were selected from the cases concluded by the national courts in the past year, with the purpose to fully leverage the guiding role of typical cases, strengthen IPR protection in the seed industry, promote innovation and high-quality development of the seed industry through high-level judicature, and provide more powerful judicial services and guarantees to accelerate revitalization of the seed industry and maintain China's food security.

Attachment: The Supreme People's Court of the PRC Released the Fourth Batch of Typical Cases of IPR Judicial Protection in the Seed Industry by People's Courts (with the judgment documents attached)

(Source: The General Office of the Supreme People's Court of the PRC)

In accordance with the cooperation arrangement of China, Japan, and Korea in the trademark field, in order to further facilitate the applicants, the comparison table of codes for China-Japan-Korea similar groups of goods and services under the Nice Classification NCL12-2024 is hereby published.

Attachment: Publication of China-Japan-Korea Similar Groups of Goods and Services Under the Nice Classification NCL12-2024

(Source: website of the Trademark Office of the CNIPA)

Recently, the WIPO released the statistics data on global intellectual property applications in 2023. The data shows that in 2023, the number of PCT (Patent Cooperation Treaty) international patent applications worldwide amounted to 272,600, decreasing 1.8% from the previous year. China continued to be the top origin with the largest application volume of 69,610. The United States ranked second in the world with an application volume of 55,678, closely followed by Japan, the Republic of Korea, and Germany.

In terms of applicants, Huawei Technologies Co., Ltd. of China ranked first in the world with 6,494 PCT international patent applications, and Samsung Electronics of Korea ranked second, closely followed by Qualcomm of the United States, Mitsubishi Electric of Japan, and BOE Technology of China. Among the top 10 applicants, Contemporary Amperex Technology Co., Ltd. of China marked the fastest growth in volume, with an increase of 1,533 applications published in 2023, ranking from 84th to 8th.

In the field of education, the University of California of the United States was still the largest applicant with the highest volume, with Soochow University of China ranking second. The University of Texas system of the United States, Tsinghua University of China, and Stanford University of the United States followed. Among the top five educational institutions, Tsinghua University had the greatest growth rate.

Among the published PCT international patent applications, computer technology accounted for the largest proportion at 10.2%, followed by digital communication, electrical machinery, medical technology, and pharmaceuticals. The application volume in the five fields accounted for about 2/5 of the total published PCT applications in 2023.

(Source: People's Daily Overseas Edition)

Case Brief

In 2021, a famous internet company discovered that its trademark of Class 9 was registered preemptively in Class 28 in the EU, and the designated goods was "toys", etc.

For the above trademark, the famous internet company entrusted Unitalen to file an opposition application. In the opposition case, we advocated that based on the confusion and misidentification clause of Article 8 (1) (b) and the well-known trademark clause of Article 8 (5) of the EU Trademark Law, the trademark applied for and the opposer’s prior identical trademark on goods of Class 9 and services of Class 41 constituted similar trademarks on the same or similar services, which could easily lead to confusion and misunderstanding of consumers; and the application for its registration involved improper use of the reputation of the opposer’s prior trademark, and should not be approved.

After review, the European Union Intellectual Property Office (EUIPO) did not support the aforementioned opposition reasons. Subsequently, Unitalen was commissioned by the client to submit an opposition review application. In the opposition review application, Unitalen lawyers communicated multiple times with the lawyers of the foreign firm and asserted the strong correlation between related software and services of Class 9; 41 and toys of Class 28 by searching for prior cases, collecting and sorting evidence of use in the EU, and providing trademark application registration files and use information of multiple companies in the same industry operating Class 9; 41 and Class 28 simultaneously, and added a large amount of evidence of use in the EU to prove the enjoyed reputation.

After a review examination, the Review and Adjudication Board of the EUIPO determined that goods of "toys" and the like in Class 28 and related goods in Class 9 constituted a low degree of similarity. At the same time, in combination with the supplementary evidence submitted in the review, the Examiner believed that the client's trademark had accumulated a relatively high reputation, and the application for the disputed trademark constituted an improper free-riding behavior of attaching to the reputation of the prior trademark. Therefore, none of the designated goods was allowed, and it was ruled that the opposed party bore the reasonable cost of the opposition.

Case Analysis

After opposition and opposition review, Unitalen ultimately assisted the client with successful cross-class opposition to the registered trademark of Class 28 in the EU.

One of the difficulties in the case lies in the limited relevance of goods and the difficulty of cross-class protection. When determining the similarity of goods, the EUIPO, without such divisions as the similar groups in mainland China, mainly depends on the function, use, target groups, consumption channels, and the duty of attention of the relevant public of the goods. At the same time, it will refer to the prior cases.

After searching, in the EU's prior cases, Class 9 was only determined to constitute a similarity with "gaming equipment" in Class 28, but not constitute a similarity with "toys" in Class 28. Based on the aforementioned unfavorable factors, the Unitalen team collaborated with the lawyers of the foreign firm to handle the case and actively collected and sorted favorable cases, evidence, and situations in the same industry. As a result, we successfully convinced the Examiner to support the assertion of similarity of cross-class goods and then support the confusion and misidentification clause in Article 8 (1) (b) on some of the goods.

The second difficulty in the case lies in the collection of evidence for the well-known trademark. The application of the well-known trademark clause of Article 8 (5) of the EU Trademark Law requires to meet the following conditions: (i) a previously registered trademark must have a reputation in the relevant region; (ii) the disputed application must be identical or similar to the prior trademark; (iii) the use of the mark applied for must be able to obtain an unfair advantage, or damage the reputation or distinctiveness of the prior mark; and (iv) such use must lack justified reasons.

In this case, the opposer’s products were launched in the EU only 9 months earlier than the application date of the disputed trademark, less than a year. During the opposition review stage, Unitalen assisted the client in collecting and adding a large amount of use evidence. At the same time, through argumentation of relevant markets in the same industry, Unitalen advocated that the disputed trademark unfairly utilized the distinctiveness and reputation of the prior trademark without justified reasons and benefited from the power of attraction, the reputation, and the prestige of the prior trademark, constituting a "parasitism" and "free-riding" behavior. Finally, the prior trademark was successfully recognized as a well-known trademark on "computer software (recorded)" and the like in Class 9, and thus the goods in Class 28 not constituting a similarity were successfully opposed.

The case has referential significance for enterprises regarding how to crack down on overseas trademark registration in a cross-class manner and how to assert the well-known trademark clause by collecting use evidence in the case where the trademark is used in a relatively short time.

Case Brief

Guangzhou Tian X High-Tech Material Company (Guangzhou Tian X company) and Jiujiang Tian X High-Tech Material Company (Jiujiang Tian X company) are the right holders of the technical secrets for the production of the raw material "Carbomer" for hand sanitizers. HUA X, from 2012 to 2013 during his tenure in Guangzhou Tian X company, repeatedly violated the company's management system and copied technical information related to the Carbomer production process from his office computer to the external storage medium, and took advantage of his identity as the person in charge of Carbomer production development to request drawings of equipment related to Carbomer production process technology from LI X Sheng, the production department director of Jiujiang Tian X company, a subsidiary of Guangzhou Tian X company. HUA X sent the illegally obtained drawings and documents related to the Carbomer production process to LIU X, the legal representative of Anhui NIU X Fine Chemical Company (Anhui NIU X company), ZHU X Liang, HU X Chun and others, and organized research and improvement. Later, HU X Chun amended the design drawings and purchased the related equipment. Finally, Anhui NIU X company produced Carbomer products and sold them at home and abroad. The court of first instance held that Anhui NIU X company, HUA X, LIU X, ZHU X Liang, and HU X Chun infringed on the technical secrets of Guangzhou Tian X company and Jiujiang Tian X company. The court ordered the infringers to stop infringement and determined the amount of damages based on 2.5 times the infringement profits. The court ordered that Anhui NIU X company compensated for an economic loss of 30 million Yuan, and HUA X, LIU X, ZHU X Liang, and HU X Chun assumed partial joint and several liabilities. Guangzhou Tian X company and Anhui NIU X company filed appeals. The Supreme People's Court held in the second instance that the determination in the first instance judgment that Anhui NIU X company, HUA X, LIU X, ZHU X Liang and HU X Chun infringed the technical secrets was proper, while the contribution degree of the infringed technical secrets to product profits was not taken into account in the determination of the amount of infringement profits. Therefore, in the case that the contribution degree was determined to be 50%, the relevant infringement profits were determined to be 6 million Yuan. Considering that Anhui NIU X company itself engaged in infringement as its business and continued with its production and sales to more than 20 countries and regions after its former legal representative was sentenced to criminal punishment for infringing on the involved technical secrets, fully showing evident infringement intention and serious infringement circumstances; therefore, the multiple of punitive damages was increased to the statutory maximum multiple. Considering that LIU X, as the former legal representative of Anhui NIU X company, played a key role in the infringement, LIU X was judged to bore joint and several liability for the full damages of the case. The Supreme People's Court ultimately made the judgment that the amount of damages was calculated based on 5 times the infringement profits, and Anhui NIU X company compensated Guangzhou Tian X company and Jiujiang Tian X company for an economic loss of 30 million Yuan and the reasonable expenses for right protection of 400 thousand Yuan, and LIU X, HUA X, ZHU X Liang, and HU X Chun bore joint and several liability for the aforementioned amount of damages within the range of 30 million Yuan, 5 million Yuan, 1 million Yuan, and 1 million Yuan, respectively.

Case Significance

The case is the first intellectual property infringement case ruled by the Supreme People's Court by applying the punitive damages in accordance with the law. The case explores the corresponding relationship between the severity of infringement circumstances and the multiple of punitive damages, and gives full play of the punitive damages system in effectively protecting right holders, deterring and curbing infringement behaviors, and warning potential infringers. The case has a positive significance in promoting the implementation of the punitive damages system in intellectual property infringement, enhancing intellectual property protection efforts, encouraging private enterprises to innovate and develop, and stimulating social innovation vitality. The case is a guiding case of the Supreme People's Court and has been selected into the "Typical Cases of the People's Courts Fully Utilizing Functions of Trial Roles to Protect Property Rights and the Lawful Rights and Interests of Entrepreneurs (Third Group)" and the "Typical Cases of Intellectual Property Infringement Civil Cases to Which the Punitive Damages Apply" published by the Supreme People's Court.

(Source: The General Office of the Supreme People's Court of the PRC)

On March 2, 2024, the Second Legal Service Industry Brand Development Forum and Legal Vision 2023 Brand Festival themed "To THE LIGHT CHASER" was grandly held. This event was guided by the China Legal Exchange Foundation and hosted by Legal Vision. The highly anticipated "Brands Guide to Law Firms of Excellence (2023)" was released on site. Unitalen Law Firm, with its outstanding strength and good reputation in the field of intellectual property, was honored as one of the "Top 30 Excellent Brand Law Firms of Legal Vision in 2023".

Recently, the Beijing Patent Attorneys Association released the 2023 patent agency rating results. Unitalen Attorneys at Law was recognized by all sectors for its stable comprehensive strength and was once again awarded the highest level, the AAAAA Patent Agency.