On Jul 4, 2017, China Trademark Office announced a new procedure for changing opponents in trademark opposition cases. According to the Notice, the procedure of changing opponent applies when the trademark right based on which an opposition has been filed is transferred to a third party before an opposition decision is made, and the third party wishes to inherit the opponent position, participate in the follow-up opposition procedure and bear the corresponding consequences. The transfer of trademark right includes voluntary transfers between the opposition applicant and the third party, as well as the statutory transfers resulting from merger, inheritance, litigation and other causes.

The State Administration for Industry and Commerce (SAIC) recently published the Major Tasks for Crackdown of IPR infringement and Counterfeits, which stresses focus on the Belt & Road countries and regions, with highlights in imports and exports, major professional markets, cross-border E-commerce activities and other key areas. In order to meet the needs of Chinese companies for overseas development, SAIC proposed for the very first time to establish information platform for Chinese companies’ trademark enforcement abroad, and to amplify governmental assistance in overseas enforcement actions via multilateral and bilateral talks mechanism.

On July 5, 2017, the Supreme People's Court issued "Judicial Data Report on Intellectual Property Infringement", which shows that from 2015 to 2016, IP infringement cases are mainly closed by withdrawal, accounting for 50.88% of the total.

According to statistics, the number of IP infringement cases nationwide shows an upward trend, the number of 2016 is up 41.34% from that of 2015. Among the cases of 2016, copyright infringement, trademark infringement and patent infringement accounted for 50.20%, 34.17% and 15.63% respectively. Guangdong, Beijing and Zhejiang concluded the largest number of cases. 28 countries are found involved in the IPR infringement cases, among which, US, France and Germany are with the most cases.

The Report also shows that the average trial cycle for IP infringement cases is 105 days, and only 7.93% of the IP infringement cases had the plaintiff's claim all supported.

Opponent : Zhejiang Blue Star International Media Co., Ltd

Opposed party: Rakeno Trading Co., Ltd

奔跑吧兄弟 ( “Run bros!” in English) is the original name of a TV program introduced and produced by the opponent, and the program’s episodes are broadcasted in Zhejiang TV in a rolling manner. The opposed party applied for trademark registration of 奔跑吧兄弟 for goods in Class 18. The opponent believed that the opposed mark has infringed upon the opponent’s prior right to the well-known name of the TV program as well as the opponent’s copyright, and filed an opposition based on Article 32 of China Trademark Law.

The Trademark Office supported the opponent’s claim that “奔跑吧兄弟”, as a prior well-known name for TV program, shall be protected as a prior right under Article 32 of the Trademark Law, and that the opposed trademark shall not approved for registration.

The typical significance of this case lies in acknowledging well-known names for films and TV programs as a kind of prior rights and granting the same protection as to copyright and other prior rights provided in Article 32 of China Trademark Law. The name of a well-known film or TV work is of great commercial value and influence, which haved called for protection against trademark squatters for years. To bring a solution to this issue, it’s a significant breakthrough to include well-known film and TV program name into the scope of prior rights provided in Article 32 of the Trademark Law so as to extend protection over it.

The Supreme People's Court (2016) No. 85 Administrative Verdict on the Retrial of the administrative dispute over invention patent invalidation among the Patent Reexamination Board of the State Intellectual Property Office, Novozymes and Jiangsu Boli Bio-Products Co., Ltd..

Case Summary

This case concerns the invention patent entitled "Thermostable Glucoamylase" ( “the Patent”) granted on June 28, 2006 and owned by Novozymes. On March 11, 2013, at the request of Shandong Longda Bioengineering Co., Ltd. (“Longda”) and Jiangsu Boli Bio-Products Co., Ltd. ( “Boli”), the Patent Reexamination Board of the State Intellectual Property Office (“the Board”) made No. 17956 decision (“the Decision”) based on the modified claims filed by Novozymes, declairng part of the claims are invalid. The claims relating to the focus of this dispute is as follows:

6. an isolated enzyme with glucoamylase activity, which is connected with SEQ ID NO :7, and the degree of homology between the full-length sequences shown in 7 is at least 99%., and has an isoelectric point of less than 3.5 measured by isoelectric focusing.

10. the isolated enzyme according to any one of claims 6-9, wherein the enzyme is derived from filamentous fungus talaromyces, wherein filamentous fungus are T.emersonii strains

11. the enzyme of claim 10, wherein the filamentous fungus is T. emersoniiCBS.793.97

12. a cloned DNA sequence, wherein the DNA sequence shows an enzyme with glucoamylase activity; the DNA sequence comprises the following components: a) coding part of the glucosaccharase of a DNA sequence shown in SEQ ID NO: 33; b) the DNA sequence shown in the 649th - 2724th positions in SEQ ID NO: 33 or its complementary strands;

13. the DNA sequence of claim 12, wherein the DNA sequence is derived from filamentous fungus talaromyces, wherein the filamentous fungus are bacterial strains of T. emersonii.

14. the DNA sequence of claim 13, wherein the filamentous fungus are T.emersoniiCBS793.97.

The Decision maintained the validity of the disputed claims by concluding that, as the specifications has proven the enzyme from the T.emersonii CBS793.97 has glucoamylase activity, the technical personnel in the field can predict that the polypeptides derived from T.emersonii strain and having a degree of at least 99% of homology with the full length sequence shown in SEQ ID NO: 7 shall also have the activity of glucoamylase; therefore claims 10 and 11 can be supported by the specifications, so are the technical scheme of claim 12 (a) and (b), which are qoted in claim 13 and 14.

The court’s first instance verdict, however, revoked the Decision, stating that although the disputed claims have defined specific strains, the defined amino acid sequence and DNA sequence can include other sequences due to the way of writing concerning homology and openness, and that, given the lack of support by sufficient experimental data in this patent specification, the summary of the disputed claims has clearly exceeded the contents of the specification. The court of second instance maintained the first instance verdict.

Patent Reexamination Board and Novozymes both applied for retrial. After hearing, the Supreme People 's Court revokes the first and second instance judement and maintains the decision at issue.

Typical Significance

In this case, the Supreme People's Court holds that, according to Article 26 (4) of the Patent Law, the technical scheme required for protection under the claims should be obtainable or summarizable by the technical personnel in the technical field concerned from the contents fully disclosed in the specifications and shall not exceed the scope of the specifications.

For SEQ ID NO: 7 having a total length of 591 amino acids, although there is still a difference of about 5 or 6 amino acid positions from the sequence with 99% or more homology, in addition to the homology characteristics, Claim 10,11 have further defined that the enzyme is derived from the T.emersonii strain and the specific strain T.emersonii CBS793.97.

The technical personnel in this field generally believe that specie is the basic unit of taxonomy, and in some basic characteristics, individuals in the same specie exhibit a high degree of similarity to each other. The gene sequence of the same fungus or of an enzyme encoded in the body of the same fungus is generally determined, and occasionally there are very few variant sequences with very high homology, so are the the enzymes encoded by the gene.

In this case, the dual limitations of more than 99% homology and the strain or source of the strain have reduced the scope of protection of claims 10 and 11 to extremely limited enzymes. Moreover, claims 10 and 11 also include the limitation in claim 6 for enzymes isoelectric point and the function of glucoamylase activity.

Thus, as the examples 1-4 of the specifications have proven the above-mentioned SEQ ID NO: 7 has a glucoamylase activity, the protection scopes of claims 10 and 11 are able to be supported by the specification, so are the technical schemes of claim 12 (a) (b) quoted in claim 13 and claim 14.

In this case, the Supreme Court has clarified the rules in judging whether biological sequence claims with use of homology and the limitations of source and function can be supported by the specifications, and the examination standards for biological sequence invention patents. It has provided guiding significance to the writing and examination of proteins or gene-related patents applications, which is also conducive to the promotion of biotechnology industry innovation and development.

Hangzhou Intermediate People's Court (2015) No. 356 Civil Verdict on the appeal of copyright infringement dispute between Hangzhou Big Head Son Cultural Development Co., Ltd. and CCTV Animation Co., Ltd.

Case Summary

In 1994, Shiyu Cui, director of cartoon "big head son and little head father" (1995 edition, hereinafter referred to as “the 95 version”), and others visited Zedai Liu’s home inviting him to create character images for the upcoming 95 version of the cartoon series. Immediately on the spot, Zedai Liu outlined the front view portraits of three characters "big head son", "little head father" and "apron mother" with a pencil, and gave the draft to Shiyu Cui, without concluding a written agreement on the copyright of the works.

After Shiyu Cui brought back the draft, the creation team for the 95 version made further design and re-creation based on Zedai Liu’s draft. Althoguh Zedai Liu no longer participated in the creation since, he was listed as the character designer when the 95 version was co-produced by the CCTV and Oriental TV and broadcasted in 1995.

December 14, 2012, Zedai Liu transferred the copyright of his art work images of "big head son", "little head father" and "apron mother" to Liang Hong, who further transferred the copyright to Hangzhou Big Head Son Culture Development Co., Ltd. (hereinafter as “Big Head Son Company”). When CCTV Animation Co., Ltd. (hereinafter as “CCTV Animation”) produced the cartoon named "New big head son and small head father" (hereinafter as “the 2013 version”) and broadcasted on CCTV, local TV stations, and CCTV online, Big Head Son company sued CCTV Animation for infringing on their copyright by readapting the above-mentioned art work images to new characters without the copyright owner’s permission and corresponding payment, and asked the court to order CCTV Animation stop infringement, announce apology on newspaper, eliminate the impact, and compensate for its economic losses and reasonable costs.

Hangzhou Binjiang District Court found that, Zedai Liu as the commissioned party shall enjoy the integral copyright of the three art works he created; Big Head Son company has acquired the copyright of the above-mentioned art works, except for the personal right thereto, through transfer; without the right owner’s permission, CCTV Animation used the related works through adaption in the 2013 version of cartoon and the related exhibitions and propagandas to earn profit, which has infringed upon the Big Head Son company’s copyright, and shall bear the corresponding liability. In view of the actual situation of the case, the court held that an increased amount of indemnity shall be rendered to replace an injunction. Accordingly, CCTV Animation was ordered to pay 400,000 yuan for each character imgage. The first instance verdict was later maintained by Hangzhou Intermediate People 's Court, and Zhejiang Higher People's Court also rejected CCTV Animation’s request for retrial.

Typical Significance

This case involves the ownership of cartoon character image copyright and disputes arisen in subsequential use. In this case, due to the lack of clear understanding by all parties, including the investing studio, the television stations, as well as the creation staff, on their rights and obligations and a clear agreement, after many years, the court had to apply the rules of law to determine the ownership of rights reasonable and legally. Meanwhile, under the premise of affirmed infringement, the court increased the amount of idemnity to replace an injunction order, taking into account the background of creation and the actual situation, balancing the protection of copyright owners and the public policy to encourage the creation and broadcast of works. How this case was handled has provided certain guiding significance to the similar cases.

June 3-4, 2017 Power Nation Intellectual Property Forum was held at the National Convention Center. At the meeting, the organizing committee announced a list of outstanding lawyers in IP field, and Unitalen partner Yazhou Zhang was elected "best trademark litigator”.

Over years, Yazhou Zhang together with others at Unitalen litigation team assisted clients such as VISA, BMW, Lafite, Ferrari, Armstrong, Oppo, Louis Vuitton, MACO, Power Dekor, Huiyuan, etc. in many major trademark litigations. Yazhou Zhang is serving as the consulting committee expert for the Supreme Court IP Case Directive Research Base in Beijing, and the legal consultant and analysis expert for Sichuan Provincial Administration for Industry & Commerce. He was awarded by Beijing Law Association as Beijing outstanding lawyer for many years.

June 23, 2017, IP House "2016 China Top Ten IP Litigation Agencies Award Conference" was held in Beijing. Unitalen litigation team was selected among Top Ten China IP Litigation Agency and Top Ten China Trademark Administrative Litigation Agency.

The sample data for this list comes from the IP verdicts concluded by Chinese courts from January 1, 2016 to December 31, 2016, which is processed with use of IP House’s big data tagging to collect data such as case volume, success rate, clients reputation, agency history and typical cases selected, and then come up with the cumulative score in accordance with the weight of each factor from high to low

Unitalen’s overall strength in IP litigation has also benn highly recognized by the highest judicial authorities. Several attorneys and agents were appointed as consulting committee experts for the Supreme Court IP Case Directive Research Base in Beijing.

Recently, the international authoritative IP media, "Intellectual Property Management" (IAM), announced the latest ranking of 2017. Unitalen is listed among "2017 IAM Global Patent 1000"; and by virtue of strengths in patent filing, patent litigation and patent transactions etc., Unitalen is included in the list of recommended firms once again. In addition, Deshan Li, deputy director of Unitalen, as a trusted expert in patent filing, once again topped the list of leading patent professionals, and recommended by IAM.

"IAM Global Patent 1000" has been published for six years, which conduct in-depth research among all IP litigation and non-litigation lawyers and law firms in the major global jurisdictions to come up with the rating, so as to recommended first-class patent firms and patent professionals around the world. Its data serves as one of authoratitive refernces for global patent practitioners.