Recently China Supreme Court published the 16th batch of guiding cases in intellectural property field, covering not only primary categories of traditional IP cases but also new types of complex cases such as anti-monopoly and anti unfair competition in Internet industry.

The 10 guiding cases published by the Supreme Court are:

Guiding Case No. 78: Beijing Qihoo Technology Ltd. v.s. Tencent Technology (Shenzhen) Ltd. and Shenzhen Tencent Computer Systems Ltd. on abusive use of dominating market position.

Guiding Case No. 79: Xiaoqin Wu v.s. Shanxi BC & TV Network on bundled transactions.

Guiding Case No. 80: Fuyuan Hong and Chunxiang Deng v.s. Guizhou Wufu Mill Food Co. Ltd. and Guidzhou Jincai Ethnic Culture R&D Co. Ltd. on copyright infringement.

Guiding Case No. 81: Xiaoyan Zhang v.s. Xianhe Lei, Qi Zhao and Shandong Aishuren Audio-vido & Book Co. Ltd. on copyright infringement dispute.

Guiding Case No. 82: Suiyong Wang v.s. Shenzhen Ellassay Costume Industry Co. Ltd. and Hangzhou Yintai Century Department Store Co. Ltd. on trademark infringement.

Guiding Case No. 83: Weihai Jiayikao Household Appliances Co. Ltd. v.s. Yongkang City Jinshide Industry & Trading Co. Ltd. and Zhejiang Tmall Network Co. Ltd. on invention patent infringement.

Guiding Case No. 84: Eli Lilly and Company v.s. Changzhou Huasheng Pharmacy Co. Ltd. on invention patent infringement.

Guiding Case No. 85: Friedrich Grohe AG & Co. KG v.s. Zhejiang Jianlong Sanitary Ware Co. Ltd. on design patent infringement.

Guiding Case No. 86: Tianjin Tianlong Seed Industry Technology Co. Ltd. v.s. Jiangsu Xulong Seed Industry Technology Co. Ltd. on new plant specie right infringement.

Guiding Case No. 87: Criminal case of Mingsheng Guo, Mingfeng Guo and Shubiao Sun criminal for counterfeiting registered trademark.

(Source: China IP Daily)

Extracted from WIPO news (http://www.wipo.int/pressroom/en/articles/2017/article_0003.html)

March 15, 2016, WIPO announced that trademark owners filed over 3,000 cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) with WIPO in 2016, an increase of 10% over the previous year.

There are over 1,200 new generic Top-Level Domains (gTLDs) now operational, among which, over 340 new gTLDs came online in 2016. Meanwhile cybersquatting disputes relating to new gTLDs rose to 16% of WIPO’s 2016 caseload, which covered a total of 5,374 domain names.

.XYZ, .TOP and .CLUB are most common new gTLDs in dispute.

It’s reported that UDRP cases in 2016 involved parties from 109 countries. Among the countries where filings originated, the U.S. remained first with 895 cases filed, followed by France (466), Germany (273), the U.K. (237) and Switzerland (180).

Among the top five filing countries, France (+38%) saw the highest growth in cases filed.

The top sectors of complainant activity were banking and finance (12% of all cases), fashion (9%), heavy industry and machinery (9%), internet and IT (8%), biotechnology and pharmaceuticals (7%) and retail (7%).

Philip Morris leads the list of filers – 67 cases – followed by AB Electrolux (51) and Hugo Boss, LEGO, and Michelin (42 each).

WIPO Director General Francis Gurry said: “The continuing growth in cybersquatting cases worldwide shows the need for continued vigilance by trademark owners and consumers alike.”

He also mentioned that “This is even more important as a considerable number of these disputes involve incidents of online counterfeiting”.

“In such cases, WIPO assists in restoring these domain names to trademark owners, thereby curbing consumer deception.” He continued.

Since the WIPO Arbitration and Mediation Center administered the first UDRP case in 1999, total WIPO case filings passed the 36,000 marks in 2016, encompassing over 66,000 domain names.

SEB, a French company, was granted Chinese invention patent No. 200580018875.3 for a dry fryer (patent at issue) on Sep 9, 2009. Entrusted by Jarden Corporation, a British company, Unitalen put up a team of seven lawyers and patent attorneys working on invalidation of the patent at issue since 2010. October 20, 2015, the Patent Reexamination Board made a decision to maintain the patent at issue on the grounds that the tehnical solution of the disputed patent is an invention opening up a whole new field, which is completely different from the prior arts of cooking baskets for oil bath frying, baking ovens and stir-fry pan, and that the patentee created the terminology "dry frying" as well as the cooking method and the corresponding device expressed by the terminology.

Dissatified with the Decision, Unitalen team kept searching for more prior art evidences, and found Beijing Intermediate Court once gave a different conclusion in an administrative litigation concerning invlidation of No. 200910159735.8 patent, a divisional of the patent issue, that “dry frying” as a distinguishing technical feature is a usage or a method feature, which cannot affect the determination of the novelty and inventive step of a product if it is merely a description of the usage of or method of the product claimed for protection. In addition, Unitalen team located two pieces of evidence of common knowledge, namely 1) “Food Industry Manual” published by China Light Industry Press in January 2002 indicates “frying in a flat bottom pan with a thin layer of fat (dry frying, little oil)” is one of the two ways of frying; and 2) “Electrothermal Cooking Utensiles” published by South China University of Technology Press in August 1990 records the ways how heat is converted as nothing more than conduction, convection and vortexing.

With the newly found evidence, Unitalen team initiated another invalidation proceeding against the patent at issue. On March 1, 2017, Patent Reexamination Board made the 8th decision on the patent at issue and declared that all its 34 claims shall be invalid for lacking novelty and inventive step.

Unitalen will pay close attention to the possible administrative procedures to follow.

Remark: According to Patent Examination Guidelines, based on the nature of the distinguishing features of the invention from the closest prior art, inventions are divided into six types: invention opening up a whole new field, invention by combination, invention by selection, invention by diversion, invention of new use of known product, and invention by changing elements. Among the above, “invention opening up a whole new field” refers to a totally new technical solution that is unprecedented in the technical history and opens a new era for the development of sicence and technology in a certain period of time, e.g. China's four major inventions - compass, papermaking, typography and gunpowder.

AUPU bath master is an innovative product developed by Hangzhou Aupu Electric Co., Ltd. (hereinafter referred to as “Hangzhou Aupu”), with multiple functions including lighting, ventilation and heating. Their trademark 奥普 (AUPU in Chinese) was registered in June 1998 and recognized as a well-known trademark for hot air Bath Devices and bath heaters goods in Class 11.

In March 2002, Zhejiang Ruian Qicai Trade Co., Ltd. registered trademark under No. 1737521 (hereinafter as AOPU 奥普), in respect of "metal building materials, metal towel racks", etc. in Class 6, which was transferred for several times and had not been put into use until Hangzhou Aupu’s 奥普 1+N bath ceiling was launched in 2005 became a best-selling product. Perceiving a business opportunity here, Zhejiang Modern New Energy Co., Ltd. (hereinafter as "Modern New Energy") acquired the AOPU 奥普 mark in 2009 and used it massively on integrated ceiling products through licensing and franchising. The severe collision between AOPU Integrated Ceiling and AUPU bath master inevitably led to a legal fight that lasted for 8 years.

The first battle: with the AOPU integrated ceiling seriously disrupting the normal operation of Hangzhou Aupu, Hangzhou Aupu sued the licensees and distributors of Modern New Energy for trademark infringement and unfair competition in Zhengjiang and Beijing respectively, noting that the defendants deliberately highlighted 奥普to take advantage of HANGZHOU Aupu’s business reputation. During 2011-2012, Hangzhou Intermediate People's Court, Zhejiang High Court and Beijing No.2 Intermediate People's Court affirmed the defendants’ conducts as constituting infringement and unfair competition. Modern New Energy then changed its market strategy by giving up the use of “AOPU Integrated Ceiling” on goods of lighting, ventilating and heating in Class 11 while strictly using the AOPU 奥普 mark on metal ceiling in Class 6. At the same time, Modern New Energy decided to launch a counterattack on Hangzhou Aupu’s use of “奥普 1+N” on bath ceiling in Class 6.

The third battle: When Hangzhou Aupu sought trademark registration of 奥普集成吊顶 （AUPU integrated ceiling） and 奥普集成浴顶 （AUPU integrated bath ceiling） et al, Modern New Energy raised oppositions based on its trademark No. 1737521 AOPU 奥普. After the procedures of opposition, opposition review and two instances of judicial appeal, Hangzhou Aupu finally obtained the trademark registrations.

The fourth battle: At the same time, through opposition, opposition review and judicial appeal, Hangzhou Aupu successfully stopped Modern New Energy’s from expanding its scope of goods in Class 6.

The second battle: In 2010, Modern New Energy sued Hangzhou Aupu’s affiliate company for infringing trademark No. 1737521 AOPU 奥普. Suzhou Intermediate People’s Court, Jiangsu High Court and later Jiangsu High Court all considered defendant’s use of 奥普on ceiling and panel as exceeding the scope of Hangzhou Aupu’s own registration for “奥普”, thus infringing trademark No. 1737521 AOPU 奥普. Per defendant’s request for re-trial, the Supreme People’s Court heard the case, concluding that the scope and level of protection extended to a registered trademark shall be consistent with the contribution made by the right owner to the trademark’s distinctiveness and reputation, and that the defendant disclosed sufficient information to achieve a clear distinction on the sources of goods thus would not create confusion or the consequence of taking advantage of other party’s business reputation. Accordingly, the retrial verdict dismissed all the claims of Modern New Energy.

The fifth battle: To bring an end to the war, Hangzhou Aupu applied to Trademark Review & Adjudication Board (hereinafter referred to as “TRAB”) for invalidation of trademark No. 1737521 AOPU 奥普 owned by Modern New Energy. After nearly 6 years of review, TRAB decided that, despite the well-known status of Hangzhou Aupu’s cited mark, due to the lack of bad faith evidence and the dissimilarity between two parties’ goods, the disputed mark which had been registered for more than 5 years and co-existed with Hangzhou Aupu’s cited mark for 13 years shall be maintained. In disagreement, Hangzhou Aupu filed an administrative litigation before Beijing IP Court. In June 2016, Beijing IP Court made a ruling, affirming the well-known status of Hangzhou Aupu’s cited mark, the bad faith nature of disputed trademark registration, the close relationship between two parties’ goods, and the likelihood of confusion and misidentification to be caused by the disputed mark, which was further affirmed by Beijing Higher People’s Court during the appeal procedure initiated by Modern New Energy and TRAB.

Thus far, Unitalen helped Hangzhou Aupu win a comprehensive and thorough victory in the serial trademark infringement and trademark right affirmation cases.

March 22, at the Capital Intellectual Property Service Industry Conference hosted by Beijing Municipal Intellectual Property Office, Unitalen was awarded "2016 Beijing Outstanding Patent Agency" and "First Batch of Beijing Intellectual Property Service Brand Agency", and won the highest star (AAAA) rating in the patent agency rating assessment conducted by Beijing Municipal Patent Agency Association.

March 30, 2017, Hangzhou Aupu Electronic Co. Ltd. (Hangzhou Aupu) Chairman, Jie Fang, and Legal Director, Qiang Cui, visited Unitalen and honored the firm with a gift plague to express their gratitude for the victories acquired in all the Aupu trademark cases.

Over the last 15 years, Unitalen represented Hangzhou Aupu in 34 non-litigation and 19 litigation cases, fighting against Zhejiang Modern New Energy Co., Ltd. in a number of battles, staging a magnificent war in-between.

Meanwhile we’d also like to thank Aupu and all the other clients, for the days we have worked side by side. It’s your abundant trust and support that spark our passion and devotion; and it’s your utmost attention and close cooperation that build us a solid cornerstone in the rear.