Subject to the adoption of the 10th Edition of the Nice Classification, the Chinese Trademark Office has further adjusted some of the examination criteria on judging similarity of goods, which in particular concerns Class 25.

According to the new criteria, the goods “clothing” in Class 25 is broad enough to cover the goods in subclasses 2501~2505, such as “layettes [clothing] (subclass 2502); bathing suits (subclass 2503); waterproof clothing (subclass 2504); costumes (masquerade-) (subclass 2505)”. Moreover, the goods originally in Subclass 2506, namely shoes for climbing mountains, shoes for climbing mountains (with metal nails), running shoes (with metal nails), jumping shoes, football boots, football shoes, gymnastic shoes, studs for football boots (shoes) and ski boots, have been merged into Subclass 2507, which covers various general footwear and accessories. Notwithstanding the above, the general class heading of "clothing, footwear and headgear" still cannot cover various accessories such as “gloves, scarves, socks, girdles, and etc.”.

On the other hand, the Trademark Office has not indicated whether the new standard shall have any retroactive effects to the applications filed prior to January 1, 2012.

In addition, the Tongda Trademark Service Center (TDTM) under the Chinese Trademark Office has issued a new rule on official trademark searches, which enters into effect as of March 1st, 2012. According to the new rule, full class search is no longer acceptable. Each trademark search can only cover 10 items of standard goods/services in 1 class under Nice Classification (10th Edition). If the goods to be searched are more than 10, separate trademark searches shall be conducted. Moreover, the TDTM is slowing down the search pace, so an ordinary search will take 6 working days while urgent search will be suspended for now.

He said, when answering questions raised by reporters that, China will effort on modification of the Criminal Law to scientifically describe relevant criminal acts and strengthen the deterrence of penalty; to legislate those judicial interpretations aiming at cracking down infringement and counterfeits and having been proved feasible in practice; to increase the amount of fines to the amount of fixed fines at a certain multiple of the value of infringing products and services; to perfect civil evidence rules to counter the difficulties in producing evidences for right-holders in certain areas; to research on the enforcement of damages in the area of cracking down infringement and counterfeits; to research on the application conditions under relevant stipulations in the Criminal Law such as that of enormous amount, that of serious consequences, that of severity, etc., enhancing the practicability of legal stipulations.

Besides the continuous acceleration of examination process, China begins to establish and perfect its trademark examination system, and ensure the smooth processing of online trademark applications. By the end of November 2011, China had examined 1.0749 million application of trademark registration and reviewed 30,400 trademark cases, further shortening the trademark examination period and review period.

According to statistics by the Trademark Office of the General Administration for Commerce and Industry, the present number of trademark application total has achieved 9,576,000, the number of trademark registration total has achieved 6,559,000, and the number of valid trademark total is 5,423,000, all ranking the 1st place in the world.

According to Chen Rui, Vice Dean of Beijing First Intermediate People’s Court, after China’s entry into the World Trade Organization, the Court became a court with specific jurisdiction for administrative cases concerning grant and confirmation of trademark and patent rights. The Court is the only court at first-instance in China to handle such cases.

It is said that the number of accepted intellectual property right cases has grown ten times during past ten years, half of which are foreign-related cases. According to Chen Rui, the number of trademark and patent cases accepted by the Court in 2002 was only 200, while in 2011 it increased to 2,311. In all 10,404 cases during the 10 years, the proportion of foreign-related cases in the total number of accepted cases is 38%, while the number of cases in which foreign parties’ claims were finally supported (completely or partly) accounts for 55.2% of all foreign-related cases. That is to say, foreign parties won nearly 60% of the cases, and the total amount of damages obtained by them is more than RMB 50 million Yuan.

It is reported that the number of patents for invention owned by domestic applicants presents a satisfactory trend. Up to the end of November 2011, Chinese enterprises own 180,273 patents for invention, up 36.8% than those at the end of 2010; and the patents for invention owned by enterprises amount to 52.6% of valid patents for invention from domestic applicants, up 1.5 percentages than 51.1% at the end of 2010. The leading role of enterprises in IP innovation activities is further strengthened.

PPH refers to that, where an Office of First Filing (OFF) deems that at least one claim of an application filed by an applicant is patentable, the applicant may request an office of second filing (OSF) to expedite examination of subsequent filings based on the working result of the OFF as long as relevant subsequent filings meet certain conditions.

The Sino-German Patent Prosecution Highway Pilot Project only includes regular PPH and excludes PCT-PPH. An applicant may make a PPH request to the State Intellectual Property Office of China (SIPO) in accordance with Procedure of Making a PPH Request to the SIPO Under the Sino-German Patent Prosecution Highway (PPH) Pilot Project, or make a PPH request to the Das Deutsche Patent- und Markenamt (DPMA) in accordance with Procedure of Making a PPH Request to the DPMA Under the Sino-German Patent Prosecution Highway (PPH) Pilot Project. The pilot period will last two years and expire on January 22, 2014.

According to the latest statistics from China’s State Intellectual Property Office, up to the end of 2011, the number of valid patents in China totals 2.74 million, up 23.6% than the previous year. Among them, the number of valid patents for invention is 697,000, up 23.4% than the previous year, the number of valid patents for utility model is 1.121 million, and the number of valid patents for design is 922,000. Among the valid patents for invention, 351,000 ones are owned by domestic entities, amounting to 50.4% of the total. In China (excluding Hong Kong, Macao, and Taiwan), the number of patents for invention per10,000 persons reaches 2.37.

On December 12, 2011, the Guangzhou Court adjudicated according to relevant laws that the alleged infringement by Xuze Leather Product and Li Zhongkui breached the provision of Article 52 of the Trademark Law and infringed Louis Vuitton’s exclusive trademark rights including the right to “ ”; at the same time, the Guangzhou Court held that the alleged infringing behavior by Xuze Leather Product and Li Zhongkui breached the provision of Article 9 of the Anti-unfair Competition Law and their false publicity campaigns constituted unfair competition. Therefore, the Guangzhou Court held that Xuze Leather Product and Li Zhongkui shall jointly pay Louis Vuitton liquidated damages in the amount of RMB 2 million Yuan.

The U.S. company Ashland is a specialty chemical company enlisted in Fortune 500 of global companies, with its clients in more than 100 countries around the world. It is the global leader in the areas such as specialty chemical for papermaking. Ashland owns advanced technology titled “manufacturing methods and products of water-in-water polymer dispersion” which utilizing water-in-water polymer dispersions as retention/drainage aids and flocculants to solve problems in prior art. Ashland protected its technology by trade (technical) secrets and patent rights.

In 2009, Ashland became aware of the fact that a former chief officer of its affiliated company had established an industrial auxiliary company in Suzhou, utilizing Ashland’s technology to manufacture water-in-water polymer dispersions. It competed directly with Ashland’s affiliate Beijing Angel and took the market share thereof rapidly, causing enormous economic losses to Beijing Angel.

Ashland retained Unitalen Attorneys at Law to file a patent infringement action and a trade secret infringement action against the aforesaid infringing company and the persons in charge respectively in 2010 and in 2011 before Suzhou Intermediate People’s Court, Jiangsu Province, and Beijing First Intermediate People’s Court, demanding the respondents to cease patent infringement and stop using trade secrets, and claiming RMB 20 million Yuan as liquidated damages for patent infringement and RMB 7 million as liquidated damages for infringement on trade secrets.

After several trials and hearings at the courts, and on the basis of accepted the facts of the case, the Courts held mediation meetings and in January 2012, the aforesaid respondents and Ashland entered into mediation agreements on both cases: the respondents promised to respect Ashland’s intellectual property rights, warranted that they would not use Asland’s patents and trade secrets any more, and pay Ashland RMB 22 million Yuan in total to settle the cases. To this point, Ashland enjoyed a complete victory in the patent and trade secret cases.

While the technology in question involves a manufacturing method of chemical products for water treatment for papermaking, it is very difficult to preserve evidence and the technology is very complicated. Both the patent infringement case and the trade secret case are hard cases. Li Yongbo, Kong Fanwen, and Li Hongjiang, Unitalen attorneys at law, and Zhao Zhongzhang, Unitalen patent attorney, together with U.S. attorneys and technicians working for the plaintiff, formed a powerful legal and technical team, and made a reasonable litigation strategy by analyzing and researching the cases in detail. The team worked on preservation of a great amount of evidences by notarization, evaluation by professional institutions and the Court’s evidence preservation procedures before the actions, laying a good foundation for the smooth processing of the cases, and finally safeguarded the best interests of Ashland.

Since the initiation of this award in 2009, “Annual Top-10 Elite Lawyers” organized by the Fangyuan Lvzheng Journal under the Procuratorial Daily attracted significant attention among Chinese lawyers. It is like the Oscar Award for Chinese legal practitioners. The lawyers winning such award are those who are honored and recognized extensively in the profession.

Mr. Yu Zehui’s wining of the Intellectual Property Right Lawyer” of 2011 Top-10 Elite Lawyers would encourage Unitalen attorneys at Law to pursue and achieve more impressive records and extensive recognition in future.

(For details, please contact us)

In appreciation for the excellent work of Unitalen in protecting Tensar Corporation’s intellectual property rights in China.

“Three-direction geogrid” is the first-generation triangle geogrid patent product contributed by Tensar Corporation. It became outstanding in the area of reinforced geotechnical synthetic material with its high-quality functions, and was regarded as the fourth building material after steel, cement, and wood. Tensar Corporation also gained several other international awards and authentications for firstly promoting and applying three-direction geogrid to the field of infrastructure engineering. Till now, Tensar Corporation has obtained about 400 high-quality authorized patents, including “single-direction”, “double-direction” and “three-direction”, in more than 40 countries and regions around the world.

Since 2009, Tensar Corporation found that infringement on its patented product of “three-direction geogrid” became rampant in Beijing, Hebei, Shandong, Sichuan, Jiangsu, Anhui, Chongqing, etc., some infringers not only arbitrarily produce and sell the product of “three-direction geogrid”, but notoriously participate in the tendering process of the State’s key engineering projects (including railway, highway, and others). These behaviors had seriously infringed the patent right of No. ZL03 1 54700.1, and thus doing harm to the patentee’s good reputation and causing enormous economic losse to the patentee and the interested parties.

In 2010 and 2011, Unitalen assigned four attorneys at law, namely, Li Yongbo, Li Hongjiang, Kong Fanwen, and Sun Changlong, and two patent agents Xue Chenguang and Fan Zhiping to team up for “Tensar Patent Right Protection”, filing several patent infringement actions on behalf of Tensar Corporation respectively against several allegedly infringing factories including Chengdu Pike Civil Works Material Co., Ltd., Tai’an Jiarui Building Material Co., Ltd., Hebei Baoyuan Engineering Rubber and Plastics Co., Ltd., etc.; and filing patent invalidation requests against the patentees of “like three-direction geogrid” products, including Hebei Baoyuan Engineering Rubber and Plastics Co., Ltd., Nanchang Tiangao New Material Co., Ltd., Yixing Huatai Civil Works Material Co., Ltd., etc. In 2011, in the judgments of the infringement cases, Tensar Corporation vs. Chengdu Pike and Tensar Corporation vs. Tai’an Jiarui, both Beijing Second Intermediate People’s Court and Jinan People’s Court held that the three-direction geogrid product is a “new product’ in the sense required by the Patent Law, and adjudicated the respondents to cease the infringement and indemnify the economic losses. The Patent Re-examination Board made invalidation declarations respectively on the utility model patents of “like three-direction geogrid” No. 200920042404.1, No. 201020061351.0, and No. 201020286073.9. Abovementioned winning cases enhanced Tensar’s confidence in conducting intellectual property right protection campaign in China and promoted its IPR management in global market.