“In 2022, 457 new cases involving foreign parties, or Hong Kong, Macao, and Taiwan parties were received, accounting for 10.4% of the newcases, representing a year-on-year increase of 4.6%.”

Read the English version of the report here: Annual Report of the Intellectual Property Court of the Supreme People’s Court 2022 English version published on 11 April 2023

ABSTRACT

This article focuses on platforms operating in the algorithmic twilight zone between presenting search results and blocking them. To avoid risks or to optimize at the copyright holders’ request, platforms directly or in a time-phased way de-rank unauthorized but possibly legal content into relative oblivion. This midway manipulation of traffic to suspected content is opaque to the uploader of content, and the general user, lacks any redress mechanism, and possibly chills the freedom to share transformed content that includes copyrighted works. One can argue that the fundamental rights preempt license conditions which are incompatible with it.

Read more here.

(Photo from www.vecteezy.com)

The latest China Trademark website shows that the trademark applications of “马好帅 (Ma Haoshuai, or “the handsome horse” if translated by its meaning) “, “牛稳稳 (Niu Wenwen, or “the stable cow” if translated by its meaning)”, and “鸡冉冉 (Ji Ranran, or “the sounding chicken” if translated by its meaning)” submitted by Tencent Technology (Shenzhen) Co., Ltd. (“Tencent”) have been approved by the authority for registration. By pronouncing these trademarks, it is not hard to find that they are expressing a lovely meaning while having fluent tongs when pronouncing them. In other words, these animal trademarks are easy for people to remember.

In the rough statistic, Tencent has more than 40,000 trademarks, many of which are animal-related, especially the iconic penguin. Penguin trademarks applied by Tencent cover the registration categories from transportation, storage, and website services to fitness equipment, with names as “功夫企鹅 (Kung Fu Penguin)”, “企鹅娘 (Penguin Sister) “, “超级企鹅 (Super Penguin)” etc. Longer trademarks such as “企鹅不走 (Penguins Do Not Leave)”, “企鹅成长 (Penguin Growth)” and “企鹅健身 (Penguin Fitness)” are also waiting for substantive review by trademark authorities.

(Photo from the annual report of Tencent for the financial year of 2021 www.newtonghua.com)

What’s interesting is, correspondent to its widely-known nickname of “penguin factory”, it seems like Tencent would like to find a home for these penguins, as it is applying for the trademark of “企鹅岛 (Penguin Island)” recently. Meanwhile, other animals like dogs and cats are also in the application sequence of Tencent. “全民狗狗 (National Puppy)”, “支付猫 (Payment Cat)”, “支付小猫 (Payment Kitten)” have been successfully registered.

So, maybe what Tencent want to do, is to build an animal universe (lol). What do you think of this?

News sources (in Chinese): https://tinyurl.com/55j7rrey

Trademark links (selecting马好帅, 牛稳稳and 鸡冉冉 for examples):
https://tinyurl.com/56abu4wc
https://tinyurl.com/mr27vb3w
https://tinyurl.com/3h8karuh

For hotpot fans, qianye tofu (千页豆腐, also translated as “thousand-page tofu”) should be a familiar dish. Benefit from its special preparation method, the taste of qianye tofu is more elastic than traditional tofu.

                                                                                                     (Photo from the Netease News)

In 2014, a food company in Suzhou (“Suzhou Company”) successfully registered “Qianye” (千页) as its trademark (“Qianye”), and the registered type is tofu products. With the development of the food industry including the hot pot industry, qianye tofu was more and more well-known by the public and widely used to refer to the specific tofu mentioned above. Therefore, in 2016, a food enterprise in Shanghai (“Shanghai Company”) insisted that Qianye has become a commodity name in the field of bean products, which can no longer be distinguished from its sources. In the argument of the Shanghai Company, qianye tofu has lost the significant basis for the use of the trademark, and thus applied to the authority for the cancellation of the registration of Qianye.

On November 13, 2020, the State Intellectual Property Office (“IP Office”) made a decision (商评字[2020]第291437号) to maintain the registration of Qianye. The Shanghai Company refused to accept this decision and filed an administrative lawsuit in Beijing Intellectual Property Court (“Beijing IP Court”) against the IP Office. However, the Beijing IP Court rejected Shanghai Company’s claim. In this regard, the Shanghai Company appealed to Beijing Municipal High People’s Court (“Beijing High Court”), and was finally supported by Beijing High Court in April 2022 by ordering the IP Office to make a new decision.

(Photo from www.newtonghua.com)

What’s interest is, in this case, the Beijing High Court held that for the degradation of a trademark (from a trademark to a general name of the goods it registered to use), factors such as the time standard, the subject standard, the regional standard, the commodity standard and the standard of proof shall be taken into consideration comprehensively and shall not take the subjective fault of the trademark owner as a premise. In other words, even if registrants have no fault or malice, trademarks can still be regarded as degenerated into a common name for objective reasons. In this case, even when the Suzhou Company has no intentional fault, the Qianye trademark could still be found as degenerated into a common name following the change of the industries.

Congratulations to the manufacturers of qianye tofu, and please produce more delicious and healthy tofu to us.

News sources (in Chinese): http://www.foridom.com/index.php/Index/article/id/1008
Court judgment (in Chinese): https://www.bjcourt.gov.cn/cpws/paperView.htm?id=fd62315335d14c07a9caf8ee337dde57&n=1

Written by IP Lion

Mind your archers and mages: Shanghai IP Court found copyright infringement by comparing the characters of game icons [IP Lion]

The Shanghai Intellectual Property Court (“Shanghai IP Court”) ruled in a recent judgment that materials from the mobile phone game 龙之影 (Shadow of the Dragon) constitute copyright infringements on another game named龙之谷 (Dragon Nest).

The Shanghai IP Court held that game icons have originality and artistic value and are able to constitute artworks in the sense of copyright law and thus should be protected. The icon of龙之影claimed by the infringed party is composed of red and blue colors, and the left and right are spliced by two face images with the same look, together with different colors and different visual effects. The court found that this icon has high originality and artistic value and can be protected as an artwork under copyright law.

Apart from above, Shanghai IP Court also found that the copyrights of “warrior”, “priest” and “archer” of 龙之谷 were also infringed by龙之影.

In its reasoning, Shanghai IP Court compared two “warrior” characters against one another, a “priest” against a “mage”, and an “archer” against an “elf” that is contained in the icon, and found that compared with the icons of 龙之谷, the icons of龙之影are composed of similar human faces, similar color matching of the left and right scenes, and the contour, hairstyle, and expression of the faces contained are also similar to the icon of龙之谷. Pursuant to this, the court found the copyright of龙之谷is infringed.

So, what kind of character you prefer to play in a MMORPG game?

News sources (in Chinese): http://www.foridom.com/index.php/Index/article/id/915
Court judgment (in Chinese): https://wenshu.court.gov.cn/website/wenshu/181107ANFZ0BXSK4/index.html?docId=2090a034b3024879b9d6ae1a00e77e15

China’s first litigation injunction on unauthorized broadcasting of Winter Olympic Games [IP Lion]

To maximize the profit from the 2022 Beijing Winter Olympic Games (“Winter Olympic Games”), China’s webcast giants have invested a great effort in the preparation of broadcasting this world-class event, including legal preparations.

A recent-disclosed injunction from the Court of Tianjin Pilot Free Trade Zone (“the Court”) shows that Tencent applied for a pre-litigation injunction against the illegal broadcasting of Winter Olympic Games programs and was supported by the court.

The Court confirmed that Tencent (the applicant) invested a huge amount of cost to obtain the authorization of broadcasting the Winter Olympic Games on its video platforms, which built its advantage in market competition. In view of the Court, the operator of the “TV Home” app (the respondent of Tencent’s application) provided broadcasting service of the Winter Olympic Games without permission from Tencent and further used such service as an advertising point to attract users to download the “TV Home” app. The Court found such conduct from the TV home is disobeying of good faith and business ethics, which resulted in the loss of Tencent video users and disturbing the market competition order (together with the social interests behind the orderly broadcasting of the Olympic Games), and thus could constitute unfair competition. Accordingly, the Court injuncted the respondent to immediately stop providing relevant contents of the Winter Olympic Games in its app.

What’s interesting about this injunction is that it relates to the bigger picture behind streaming hijack, user loss, and unfair competition: the rapid growth of online social platforms on mobile devices in the past decade. Namely, when we compare this injunction to the 2008 Beijing Summer Olympic Games, it is not so hard to find that, back then, Tencent was not as huge as it is nowadays, and the broadcasting activities were only limited to TVs and PC webs/apps, no smartphones and no relevant apps on mobile devices. Back then, the famous anti-trust and anti-unfair-competition case “Tencent vs. 360” in China’s Supreme People’s Court did not exist, and netizens in China were living in a peaceful world that would not be bothered by fragmented information from mobile devices. Will you miss the days a decade ago?

News sources (in Chinese): https://mp.weixin.qq.com/s/e3oSivUangJ6RsYaXaosqw
Court judgment (in Chinese): https://wenshu.court.gov.cn/website/wenshu/181107ANFZ0BXSK4/index.html?docId=bfb9799918b64a60808eae5e000937c6

Aiming at Generation Z? Luckin Coffee’s “歪歪滴艾斯” trademark registration is pending [IP Lion]

Apart from the talked about netizens in China above, recently, Luckin Coffee successfully registered the trademark of “歪歪滴艾斯”, a symbol of the Chinese generation Z. The relevant trademark was applied in May 2021, which is classified as advertising sales and convenience food. However, on the official website of China’s trademark department, the “歪歪滴艾斯” is now in pending, more specifically, it is in the process of the appeal of refusal.

What’s interesting is, 歪歪滴艾斯[Wāi wāi dī ài sī] is a direct transliteration of the internet trendy word “YYDS” in Mandarin for recent years. As an abbreviation, it means the full name of “Yong yuan de Shen”, that is, “eternal God” in Mandarin. This catchphrase comes from the live stream of the League of Legends (“LoL”) game and has been used by the netizens of Post-00 and post-90 generations on various occasions. Now this YYDS is registered as a trademark by Luckin coffee, which also reveals the importance attaches to the young people’s market from the view of Luckin coffee.

In fact, YYDS originated from a live stream of a Chinese celebrity, who is a fan of professional a LoL player named “UZI”. He shouted many times during the live stream that “Uzi, eternal God.” Later, it was regarded as an exclamation and used by netizens to show their highest praise to almost everything. Some reports show that the use of YYDS even spreads outside of the mainland and is used by young people in regions such as Taiwan, Hong Kong, Macau, and also by the young Chinese in countries like Singapore, Malaysia, and Australia.

In fact, to get closer to young people, Luckin Coffee [in Chinese:瑞幸咖啡(Ruìxìng Kāfēi)] launched the advertising film “Luckin YYDS” in May 2021, ahead of its competitors. In the same period, “#Luckin coffee applied to register the YYDS trademark#” had quickly become a trendy search topic on China’s largest microblog platform, Weibo (a platform that could be regarded as the Chinese version of Twitter).

As one of the generation Z (or above), are you into this way of marketing?

News sources (in Chinese): https://mp.weixin.qq.com/s/obksCN8g5mIlbID5pOct0A
Court judgment (in Chinese): http://wcjs.sbj.cnipa.gov.cn/txnDetail.do?b9La8sqW=LQLS4AlqEHNqrfDXW.thu1JTe9RM_kzi4herwUzT3ikGQZH8UEGzQEGvz7dZSooJci_y34Tj_yPkx8ig3jgrVDoFxo39zjDBSpvLCIAKdwb53UBNOD558aOykQyvWM9txbwKN.evGhKwAzKS1.eUmH5gFuUIcJnL1yYguxkBHgvZ6mgFgr4ox5FdRRTCTZaBMi2sD2jBHsa

Good News for Animation Fans: Shanghai IP Court Verdict In Favor of The Japanese Producer’s Claim to Protect Its Ultraman Images With a Remedy of RMB2.5 million [IP Lion]

The IP disputes between the producer of the famous Japanese animation “Ultraman” series, Tsuburaya Production Co., Ltd. (the plaintiff, “Tsuburaya”), and a group of Chinese companies (the “defendants”) was dropped in the end after an appellate decision by the Shanghai Intellectual Property Court in January 2022. The court found that the abovementioned defendants had previously inserted in their commercial an animation which included the “Ultraman” and “Ultraman Jack” characters of Tsuburaya, which resulted in a profit for the defendants. The court thus identified the insertion by the defendants as constituting copyright infringement, and decided that the defendants had to jointly publish a statement for 10 consecutive days on Youku (www.youku.com) and Tudou (www.tudou. Com) with the intention of eliminating the adverse effects caused to the Tsuburaya by their torts, while placing a statement of the same content on their corresponding Sina Weibo and Wechat accounts, for 30 consecutive days respectively, with RMB2 million compensation to Tsuburaya.

Japanese animation is one of the collective memories of the generation born after 1980, but compared with US cartoon characters (like those of Disney and Marvel, etc.), Japanese animation characters have lagged in claiming their IP rights in China, and therefore, the abovementioned court decision involving Ultraman marks the success of renowned Japanese animation characters gaining domestic protection of intellectual property in China.
With this incentive, will more Japanese animation characters claim their IP rights in China?

News sources (in Chinese): https://mp.weixin.qq.com/s/FF3vaRM-23ngVGyw9YxeZg

Court judgment (in Chinese): http://www.hshfy.sh.cn/shfy/gweb2017/flws_view.jsp?pa=adGFoPaOoMjAyMKOpu6Y3M8Px1tU1NDS6xSZ3c3hoPTMPdcssz

From The Hometown of Spicy Hotpot: The Sichuan High Court Held That Hotpot Stores’ Use of “Green Sichuan Pepper” In Their names Does Not Constitute Trademark Infringement [IP Lion]

Spicy food enthusiasts shall not miss this news: the eye-catching dispute of trademark infringement of “green Sichuan pepper” has ended by an appellate decision of the Sichuan High Court in January 2022.
According to Sichuan High Court, the “green Sichuan pepper (青花椒)” identification used on the brand of hotpot shops did not constitute an infringement of trademarks. The Sichuan High Court held that green Sichuan pepper, the generic name used to refer to the condiments, has a long culinary history in the Sichuan region, while the natural association and delicate boundaries between catering services and dish seasoning products have greatly reduced the significance of this vocabulary. The use of “green Sichuan pepper” on the brand of hotpot shops is not yet able to significantly differentiate the word from the green Sichuan pepper usage in general awareness, and at the same time consumers do not misrecognize and confuse the defendant who operated in Sichuan and the plaintiff who operated primarily in Shanghai, and therefore the plaintiff’s use does not constitute an infringement of trademarks.

The aforementioned series of “green Sichuan pepper” trademark rights protection cases initiated by the plaintiff were filed as early as 2017, and most of them were litigated in 2021, with defendants involved from all over China and most of them were in Sichuan. As a company with principal business places in Shanghai, the plaintiff’s actions aroused the anger and disagreements of many Sichuan food lovers. In their eyes, the decision from the Sichuan High Court becomes the interesting ingredient of this spicy litigation dish.

Did this hot IP news wet your appetite? IP Dragon’s Roar has more for you. Bon appetite!News sources (in Chinese):
https://news.sina.com.cn/c/2022-01-17/doc-ikyamrmz5693223.shtml
http://scfy.chinacourt.gov.cn/article/detail/2022/01/id/6483727.shtml

A Stumbling Block For The Trendiest Mobile Game? A Shanghai District Court Verdict An Immediate Cessation on Apps’ Function of Allowing Minors to Be A “Booster” of The Game “King of Glory” (“王者荣耀”) [IP Lion]

“Boosters” are those people that conduct the upgrading, practice, acquisition of equipment, and other services in online games for the game account holder who pays them with a commission for their services. Because it involves the risk of theft of the game account and disobeys the account management policy of game companies, the boosters mainly work on third-party platforms outside the game reach service with customers on these platforms.

In China at the moment, the trendiest mobile online game is “王者荣耀” (King of Glory), a multiplayer online battle arena (MOBA) game produced by Tencent. Without a doubt, this trendiest MOBA game is targeted by massive booster platforms, where they even allow minors to be a booster.

However, the Pudong District Court of Shanghai made a pre-filed decision in January 2022 on behavioral preservation, ordered the “Power Levelling Help” (“代练帮”) app operated by the Beisheng Company to immediately stop the recruiting and using minor boosters for the game “King of Glory” (“the involved game”), and the “2345 Company” immediately stopped providing the Power Levelling Help app at its “2345 mobile phone assistant” until Beisheng Company stopped the minor’s booster service.

In this case, applicant Tencent claims that it is the copyright holder of the involved game and exclusively operates the game. According to China’s requirements for protecting minors, Tencent applied a system of real name and anti-addiction measures in the involved game, minors are only able to play between 20:00 to 21:00 on Fridays, Saturdays, Sundays, and legal holidays. Apart from these measures, the game service agreement of the involved game also defines that the game user must not provide their game account number to others to do booster-like activities of a commercial nature.

Beisheng Company operates the Power Levelling Help app in the form of “billing cash” and setting up a special category for the involved game to solicit and encourage minors to use their platform to do booster business commercially and thus the minors could avoid the regulation of the anti-addiction system.

This appeal was supported by the court. The court held that the Power Levelling Help app also made it possible for users to bypass the real name and anti-addiction measures, which resulted in compromising the game experience, legitimate interests of other players, and the public interest of protecting minors.

News sources (in Chinese):
https://finance.sina.com.cn/chanjing/gsnews/2022-01-05/doc-ikyakumx8414052.shtml
https://www.sohu.com/a/514551119_116237

Good News For The First Generation of PC Online Game Player in China: Supreme People’s Court’s Verdict Ended The Protracted IP Disputes of “The Legend” [IP Lion]

As one of the collective memories of China’s first generation of online enthusiasts, the large multi-person online role play game the Legend of Mir 2 (“The Legend”), profoundly influenced the development of the game industry in the two decades.

The Korean-based Actoz Soft and WeMade Entertainment originally developed independently as two shared copyright holders of The Legend. But starting from 2016, WeMade successively and independently authorized The Legend to a series of enterprises and established an IP company of The Legend.

Besides that, WeMade also took litigation actions against Actoz Soft. On 30 June 2017, Actoz Soft extended the software license agreement of The Legend to 28 September 2023. WeMade contended that the extension infringed its rights and therefore filed a suit in Shanghai requesting that this extension was ineffective and claimed reimbursement of RMB 1 million. Later, on 23 January 2018, the Shanghai International Arbitration Center determined that Actoz Soft’s extending agreement was effective. WeMade, however, still insisted on the grounds of the agreement’s violation of its rights, bringing proceedings at multiple Chinese courts.

Eventually, in January 2022, the Supreme People’s Court rendered a final decision that the Actoz Soft’s extending agreement was non-tortious and that the conduct of WeMade (using the notice to instead of negotiation, hiding the information of transaction parties and promoting new license holder independently, etc.) infringed Actoz Soft’s legal interests.

WeMade’s behavior (even when arbitration and low-level litigation had already ruled that its behavior was infringing, still filed lawsuits in many Chinese courts to try to proof the other party’s infringement) has many followers in the market. However, pursuing the trial principle of “same case and same judgment” in today’s China, the Supreme People’s Court’s precedent has put a lid on this kind of behavior in the game industry.

News sources (in Chinese):

https://m.21jingji.com/article/20220111/herald/b4f12ba5086cf0e354968969579f4fb1

htmlhttp://www.iprchn.com/cipnews/news_content.aspx?newsId=132731

On December 30, 2020, Shanghai No. 2 Intermediate People’s Court announced its judgment on Michael Jeffrey Jordan v. Qiaodan Sports Co., Ltd., including four parts: (1) the defendant shall make public apology to the plaintiff in the newspapers and on the Internet, clarifying there is no relationship between Qiaodan Sports and Michael Jordan; (2) the defendant shall stop using “Qiaodan” as its trade name; (3) the defendant shall stop using trademarks involving “Qiaodan,” and for those that have become incontestable, the defendant shall use reasonable methods to remind the public of the irrelevancy between the two parties; (4) the defendant shall compensate the plaintiff for mental damages and reasonable costs, respectively 300,000 and 50,000 yuan.

If nothing else, this is going to be the end with regard to the series of “Qiaodan” trademark disputes which have lasted for more than 9 years. Although this is just the first trial decision and Qiaodan Sports theoretically could appeal the ruling, it has little chance to change the ultimate outcome according to the judgment made by the Supreme People’s Court in Michael Jeffrey Jordan v. Trademark Review and Adjudication Board. In fact, Qiaodan Sports clearly understands that it is the losing party, therefore it chose to quickly comply with the judgment and changed its company name to Zhongqiao Sports on January 12, 2021.

“Zhongqiao” implies that it is an abbreviation of “Zhongguo Qiaodan,” meaning Chinese Jordan, and many consumers are annoyed at such slippery behavior. Directly speaking, it is just the most economic way for the company to act in compliance with the court’s order. If the company adopts a brand new name that has nothing to do with the former one, it needs to make huge investments in advertisement and promotion to rebuild its goodwill and reputation. Adopting “Zhongqiao” as the new name, at least the company could reduce some costs even though a part of consumers might look down on its attempt to associate with “Qiaodan.”
“成也萧何，败也萧何,” one famous sentence in China, meaning either success or failure boils down to the same person, appropriately describes the sports company’s developing history. Qiaodan Sports made its achievements partly relying on Michael Jordan’s fame in China, but ultimately lost a large portion of its goodwill due to the series of trademark lawsuits brought by Michael Jordan. It does not work anymore to run a business by capitalizing on other’s reputation, and the correct way is to create and maintain an entity’s own trademark.

OUYANG Yini

Below is the amendment to the Supreme People’s Court’s Interpretation on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Cases (2). See the old version of the Judicial Interpretation on the site of CCPIT here and the amendment on the site of Justra here (hat tip to Susan Finder). You can find the changes in the introduction and Articles 2, 6 and 21.

Please note that bold is an addition and a strike-out is, indeed, a removal.

SPC’s Interpretation on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Cases (2)

In order to correctly hear patent infringement disputes, it is based on the Civil Code of the PRC, Patent Law of the PRC, Civil Procedure Law of the PRC and other relevant legal provisions, combined with trial practice.

Article 1

Where the claims of a patent contain two or more claims, the right holder shall specify in the complaint the claims based on which the accused infringer is being sued for patent infringement. Where such claims are not specified or not clearly stated in the complaint, the people’s court shall require the right holder to specify the claims; where the right holder refuses to do so upon requirement of the people’s court, the latter may rule to dismiss the lawsuit.

Article 2

Where the claims of a patent on the basis of which the right holder asserted patent infringement in a lawsuit are declared invalid by the Patent Administration Department of the State Council Patent Re-examination Board, the people’s court trying the patent infringement dispute may render a ruling to dismiss the lawsuit filed by the right holder on the basis of the invalid claims.

The right holder may file a lawsuit separately if there is evidence showing that the decision to declare the claims invalid is revoked by a binding administrative judgment.

If the patentee files a lawsuit separately, the period for limitation of action shall be calculated from the date of service of the administrative judgment mentioned in Paragraph 2 of this Article.

Article 3

Where, as a result of obvious violation of paragraph 3 or paragraph 4 of Article 26 the Patent Law, the description cannot be used to explain the claims, which does not fall within the circumstances specified in Article 4 hereof and based on which a request is made for declaring the patent invalid, the people’s court trying the patent infringement dispute shall in general rule to suspend the lawsuit; if the patent is not announced invalid within a reasonable period of time, the people’s court may determine the protection scope according to the claims.

Article 4

In spite that the claims, description or its accompanied drawings are ambiguous to a person of ordinary skill in the art in terms of grammars, wordings, punctuations, graphics, symbols, etc., where said person of ordinary skill in the art can clearly arrive at only one unique understanding by reading the claims, description and drawings, the people’s court shall make determination according to said unique understanding.

Article 5

When a people’s court determines the protection scope of a patent, the technical features defined in the preamble and the characterizing portions of an independent claim, and the technical features defined in the reference and the characterizing portions of a dependent claim shall all be considered.

Article 6

The people’s court may construe the claims of the patent concerned by referring to another patent that has a “divisional application” relation with the patent concerned, the file wrappers of said another patent and any binding judgments/rulings in relation to its allowability or validity.

Said file wrappers include the written materials submitted by applicants or patentees during the process of patent examination, re-examination and invalidation, as well as office actions, meeting minutes, oral hearing records, binding patent re-examination decisions, patent invalidation decisions etc. issued by the patent administrative department of the State Council or the Patent Reexamination Board.

Article 7

As regards a close-ended claim for a composition, if an accused technical solution contains technical features in addition to all the technical features of the claim, the people’s court shall determine that the accused technical solution does not fall within the protection scope of the patent, except that the additional technical features are unavoidable impurities in normal quantity.

Said close-ended claim for a composition referred to in the preceding paragraph shall generally not include the claim of a traditional Chinese medicine composition.

Article 8

A functional feature is a technical feature defining the structure, composition, step, condition or their relations by its function or effect in the relevant invention-creation, unless a person of ordinary skill in the art is able to directly and clearly determine the specific embodiment for achieving such function or effect by reading purely the claim.

Where, as compared to the technical feature in the description and its accompanied drawings essential for achieving aforesaid function or effect, the corresponding technical feature of the accused technical solution performs the same function by substantially the same way to achieve the same result, and can be contemplated without creative work by a person of ordinary skill in the art at the time of the accused infringement, the people’s court shall determine that such corresponding technical feature is identical with or equivalent to the functional feature.

Article 9

Where the accused technical solution cannot be applied to the use environment defined by the use environment features of a claim, the people’s court shall determine that the accused technical solution does not fall within the protection scope of the patent.

Article 10

Where the manufacturing process of the accused product is neither identical with nor equivalent to the manufacturing process recited in a claim that includes said manufacturing process to define certain technical features of the relevant product, the people’s court shall determine that the accused technical solution does not fall within the protection scope of the patent.

Article 11

Where the sequence of technical steps is not specified in a process claim but a person of ordinary skill in the art can directly and clearly learn that such technical steps shall be exploited according to specific sequence upon reading the claims, description and drawings, the people’s court shall decide that such sequence of steps is a limitation to the protection scope of the patent.

Article 12

Where phrases such as “at least” or “not more than” are used in a claim to define numerical features, and a person of ordinary skill in the art can learn that the patented technical solution places special emphasis on the roles of such phrases to limit the respective technical features, upon reading the claims, description and  drawings, the people’s court shall not side with the right holder if the later alleges that the technical features different from the numerical features are equivalent features.

Article 13

Where the right holder proves that any amendments or statements made by the patent applicant or the patentee to limit the claims, description or drawings during the patent prosecution or patent invalidation proceedings are definitely denied, the people’s court shall determine that said amendments or statements do not lead to waiver of a technical solution.

Article 14

When determining the level of knowledge and discriminability of an ordinary consumer to a design, the people’s court shall normally consider the design space of the products in the same or similar category as the patented design at the time of infringement. Where the design space is relatively large, the people’s court may determine that it is usually unlikely for an ordinary consumer to notice the minor differences between the compared designs; where the design space is relatively small, the people’s court may determine that it is usually more likely for an ordinary consumer to notice the minor differences between two compared designs.

Article 15

For a patent for designs of products in set, where the accused design is identical with or similar to one of the designs, the people’s court shall determine that the accused design falls within the protection scope of the patent.

Article 16

For a patent for design of a component product with a unique assembly relation among the individual components, where the accused design is identical with or similar to the design of the component product in its assembled sate, the people’s court shall determine that the accused design falls within the protection scope of the patent.

For a patent for design of a component product with no assembly relation or with no unique assembly relation among the individual components, where the accused design is identical with or similar to the designs of all the individual components of the component product, the people’s court shall determine that the accused design falls within the protection scope of the patent; where the accused design lacks the design of one individual component of the component product or is neither identical with nor similar to the design of one individual component, the people’s court shall determine that the accused design doesn’t fall within the protection scope of the patent.

Article 17

For a patent for design of a product with variant states, where the accused design is identical with or similar to the design in all its use states as shown in the relevant views, the people’s court shall determine that the accused design falls within the protection scope of the patent; where the accused design lacks the design in one of its use states or is neither identical with nor similar to the design in one of its use states, the people’s court shall determine that the accused design doesn’t fall within the protection scope of the patent.

Article 18

Where a right holder files a lawsuit to request an entity or individual to pay appropriate fees for exploiting its, his or her invention during the period from the date of publication of the invention patent application to the date of announcement of grant of the invention patent in accordance with Article 13 Patent Law, the people’s court may determine the fees reasonably by referring to relevant royalties of the patent.

Where the protection scope claimed by the applicant upon the publication of the invention patent application is inconsistent with the protection scope of the patent upon the announcement of grant of the invention patent, and the accused technical solution falls within both of the foregoing two protection scopes, the people’s court shall determine that the defendant exploited the relevant invention during the period stated in the preceding paragraph; where the accused technical solution falls within only one of the two protection scopes, the people’s court shall determine that the defendant didn’t exploit the invention during the period stated in the preceding paragraph.

Where a party, without consent of the patentee and for the business purposes, uses, offers to sell, or sells the products that were manufactured, sold or imported by another party during the period stated in Paragraph 1 of this Article after the date of announcement of grant of the invention patent, and such another party has paid or promised in writing to pay appropriate fees prescribed in Article 13 Patent Law, the people’s court shall not side with the right holder asserting that the aforesaid act of use, offer to sell and sell has infringed the patent.

Article 19

Where a sales contract of products is concluded in accordance with laws, the people’s court shall determine that the sale as prescribed by Article 11 Patent Law have been constituted.

Article 20                                                                                                      

As regards the re-processing or re-treatment of a follow-up product obtained from the further processing or treatment of a product directly obtained from a patented process, the people’s court shall determine that such re-processing or re-treatment does not belong to “use of a product directly obtained according to the patented process” as prescribed in Article 11 Patent Law.

Article 21

Where a party, knowing that certain products are the materials, equipment, parts and components or intermediate items, etc. specifically for the exploitation of a patent, without consent of the patentee and for business purposes, provides such products to another party committing patent infringement, the people’s court shall side with the right holder claiming that the party’s provision of such products is an act of contributory infringement as prescribed by Article 9 of the Tort Liability Law Article 1169 Civil Code.

Where a party, knowing that a product or process has been granted patent, without consent of the patentee and for business purposes, induces positively another party to commit patent infringement, the people’s court shall side with the right holder claiming that the inducement of the party is an act of inducing another party to commit infringement as prescribed by Article 9 of the Tort Liability Law Article 1169 Civil Code.

[Mark Cohen of China IPR posted an unofficial translation of the general provisions part of the Civil Code, see here. Article 1169 Civil Code: A person who aids or abets an actor in the commission of a tortious act shall assume joint and several liability with the actor.
A person who aids or abets an actor with no or limited capacity for performing performing civil juristic acts in the commission of a tortious act shall assume tort liability. The guardian of the actor with no or limited capacity for performing civil juristic acts shall assume corresponding liability where he fails to fulfill the duties of a guardian.]

Article 22

Where an accused infringer defends on the basis of prior arts or prior designs, the people’s court shall define the prior arts or prior designs pursuant to the Patent Law effective on the filing date of the patent.

Article 23

Where the accused technical solution or design falls within the protection scope of the asserted prior patent, the people’s court shall not side with the accused infringer defending that its technical solution or design has been granted patent and thus does not infringe the asserted patent.

Article 24

Where a recommended national, industrial or local standard clearly indicates the essential patent-related information, the people’s court shall in general not side with the accused infringer defending that the exploitation of such standard does not need consent of the patentee and thus does not infringe the patent.

Where a recommended national, industrial or local standard clearly indicates the essential patent-related information and the patentee intentionally violates the obligation for licensing on fair, reasonable and non-discriminatory terms as committed in formulating the standard in consultation with the accused infringer on the conditions for the exploitation and licensing of such patent, resulting in failure to conclude a patent licensing contract, the people’s court shall, in general, not side with the right holder claiming stopping the exploitation of the standard by the accused infringer, if the accused infringer has no obvious fault in the consultation.

The conditions for the exploitation and licensing of a patent as mentioned in Paragraph 2 of this Article shall be determined upon consultation by the patentee and the accused infringer. Where no agreement is reached upon careful consultation, the parties may request the people’s court to determine such conditions, in which case the people’s court shall, on fair, reasonable and non-discriminatory terms, take into comprehensive consideration the degree of innovation of the patent, the role of the patent in the standard, the technical field to which the standard belongs, the nature and scope of application of the standard, the relevant licensing conditions and other factors to determine such exploitation and licensing conditions.

The provisions on the exploitation of a patent involved in a standard as otherwise prescribed by laws and administrative regulations shall prevail.

Article 25

Where a party, using, offering to sell, or selling patent-infringing products for business purposes without the knowledge that such products are manufactured and sold without consent of the patentee, proffers evidence showing the legitimate sources of such products, the people’s court shall side with the right holder claiming that the aforesaid using, offering to sell, or selling shall be stopped, except that the user of the accused products proffers evidence to prove that it has paid reasonable quid pro quo for such products.

For the purpose of Paragraph 1 of this Article, “without the knowledge” shall mean the circumstance where a party has no actual knowledge and ought not to have knowledge.

For the purpose of Paragraph 1 of this Article, “legitimate sources” shall mean acquire products through regular business methods such as lawful sales channels or usual sale and purchase contracts. The party who engages in use, offering to sell or selling shall proffer relevant evidence consistent with trading habits to prove said legitimate sources.

Article 26

Where the defendant is found to commit patent infringement, the people’s court shall side with the right holder claiming that the defendant shall be ordered to stop infringement; however, the people’s court may, instead of ordering the defendant to stop the accused act, order the defendant to pay reasonable fees in consideration of the interests of the state or the public interest.

Article 27

Where it is difficult to determine the actual loss suffered by a right holder, the people’s court shall require the right holder to proffer evidence to prove the gains obtained by the infringer from the infringement in accordance with Paragraph 1 of Article 65 Patent Law. Where the right holder has proffered the prima facie evidence in relation to the gains obtained by the infringer but the account books and materials related to the acts of patent infringement are mainly under the control of the infringer, the people’s court may order the infringer to submit such account books and materials; where the infringer refuses to provide such account books and materials without justification or submits false account books and materials, the people’s court may determine the gains obtained by the infringer from the infringement based on the claims of the right holder and the evidence proffered thereby.

Article 28

Where a right holder and the infringer have legally agreed on the amount of damages for patent infringement or the methods for calculating the amount of damages, and one of them claims during a patent infringement lawsuit that the amount of damages shall be determined in accordance with such an agreement, the people’s court shall uphold such a claim.

Article 29

Where a party legally applies for retrial based on a decision declaring the patent invalid to request for vocation of the judgment or mediation statement on patent infringement that is rendered by the people’s court before the patent is declared invalid but is not enforced, the people’s court may render a ruling to suspend the examination in retrial and suspend the enforcement of the original judgment or mediation statement.

If the patentee provides sufficient and effective guarantee to the people’s court to request that the enforcement of the judgment or mediation statement mentioned in the preceding paragraph be continued, the people’s court shall continue the enforcement; if the infringer provides sufficient and effective counter-guarantee to the people’s court to request that the enforcement be suspended, the people’s court shall approve such request. Where the decision declaring the patent invalid is not revoked by a binding ruling/judgment of the people’s court, the patentee shall make compensation for the loss suffered by the other party concerned due to the continuation of the enforcement; where the decision declaring the patent invalid is revoked by a binding ruling/judgment of the people’s court, the people’s court may directly enforce the property under the above counter-guarantee based on the judgment or mediation statement mentioned in the preceding paragraph provided that the patent is still valid.

Article 30

If a lawsuit is not filed against a decision declaring the patent invalid with the people’s court within the statutory time limit or the decision is not revoked by a binding ruling/judgment made after filing of a lawsuit, the people’s court shall conduct retrial if one party legally applies for retrial based on such decision requesting that the judgment or mediation statement on patent infringement that has been rendered before the announcement of the invalidity of the patent and is not yet enforced be revoked. If the party, based on such decision, legally applies for termination of the enforcement of the judgment or mediation statement on patent infringement that has been rendered before the declaration of the invalidity of patent and is not yet enforced, the people’s court shall rule to terminate the enforcement.

Article 31

This Interpretation is implemented as of 1 April 2016. In case the relevant judicial interpretations previously published by the SPC are not consistent with this interpretation, this interpretation shall prevail.

Recently, one of the most remarkable hot news, occurred in the IP field in China:  the latest amendment of the Copyright Law. This Third Amendment to the Copyright Law was adopted on 11 November 2020 and will become effective on 1 June 2021. The legislature makes many changes in the new version of the Copyright Law, which may lead to vigorous debates among the legal profession. The purpose of this blog is to give a brief introduction to some of the most significant modifications in this new reform of China’s Copyright Law.

I. The range of protectable works is largely expanded

Previously, eight protectable forms of works were rigidly enumerated in the old Article 3, with the catch-all provision providing that “other works as provided in laws and administrative regulations” could also be protected. However, the catch-all provision has not been triggered so far, therefore when courts confront an emerging form of work sought to be protected under Copyright Law, the judges must interpret the emerging work into one of the eight categories, otherwise such work is not copyrightable unless the laws or administrative regulations have had been developed to cover it.

The situation is different now: the new Article 3(9) gives an open-ended definition that “works … shall refer to ingenious intellectual achievements in the fields of literature, art and science that can be presented in a certain form,” reflecting two fundamental elements globally recognized for copyright law protection, namely originality and expression. Accordingly, the revised catch-all provision is now reading “other intellectual achievements that meet the characteristics of works,” which gives judges much more discretion to determine whether or not an emerging type of work is copyrightable.

II. Audiovisual work is introduced into the Copyright Law

Another eye-catching change is that “cinematographic works and works created by a process analogous to cinematography,” an explicitly enumerated category, is replaced by “audiovisual works”. This replacement is able to expand the scope of protection to include works created in a way different from cinematography, including online game graphics, short videos, etc. The remaining questions are that the new version of the Copyright Law does not clearly define what constitutes audiovisual works, and the relationship between audiovisual work and video recording is confusing since video recording is protected by neighboring rights in Chapter 4 of the Copyright Law. A further interpretation is necessary.

III. Right of broadcast is broadened

The right of broadcast is redefined to incorporate cable broadcasts, no longer emphasizing that the initial dissemination of works must be in a wireless form. Before this amendment, only wireless broadcasts were protected. Hence, many behaviors during live webcast may infringe the right of broadcast, such as covering songs without permission.

IV. Regulation of collective work is added

The Second Amendment of the Copyright Law only states that a co-author enjoys copyright in his own contribution if the collective work is separable, but does not mention what to do if the collective work is not separable. The new added clause provides that a co-author of an inseparable work could enforce copyright regarding the whole work, except for transferring, exclusively licensing and pledging, but the profits shall be shared with the other co-authors. Such regulation promotes the dissemination of works to the public, otherwise many great works would not even be created because the co-authors could not agree on the exploitation conditions and works that are finished would be kept from the public because the co-authors have different opinions concerning exploitation.

V. Punitive damages are incorporated

As both Trademark Law and Patent Law have incorporated punitive damages clauses, it is not surprising that punitive damages will also be included in the Copyright Law, and it marks that the system of punitive damages is established in the IP field in China. The plaintiff has to prove that the defendant’s conduct was in bad faith and the infringement serious.

OUYANG Yini

The Decision of the SPC on Amending 18 IP Judicial Interpretations including the Interpretation of the SPC on Several Issues Concerning the Application of Laws in the Trial of Patent Infringement Disputes (II) was approved by the SPC on 23 December 2020. It was adopted at the 1823th meeting of the Judicial Committee of the SPC and came into force on 1 January 2021.

The following judicial interpretations went into force: 2 on patent law; 7 on trademark law; 1 on copyright law; 1 on internet intermediary; 2 on new plant variety law; 1 on unfair competition and 1 on monopoly acts; 1 on domain names; 1 on technology contracts; and one on IP courts.  

1. Interpretation of the SPC on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes.

2. Several Provisions of the SPC on the Application of Law in the Trial of Patent Dispute Cases.

3. Interpretation of the SPC on Issues Concerning Jurisdiction and the Scope of Application of Law in Trial of Trademark Cases.

4. Interpretation of the SPC on Several Issues Concerning the Application of Law of Civil Dispute Cases of Trademarks.

5. Provisions of the SPC on Several Issues Concerning the Trial of Civil Disputes Involving Conflicts between Registered Trademarks, Enterprise Names and Prior Rights.

6. Interpretation of the SPC on Several Issues concerning the Application  of Law in the Trial of Civil Dispute Cases Involving the Protection of Well-Known Trademarks.

7. Interpretation of the SPC on the Jurisdiction of Trademark Cases and the Application of Law.

8. Provisions of the SPC on Several Issues Concerning the Trial of Administrative Cases Concerning Trademark Authorization and Confirmation.

9. Interpretation of the SPC on the People’s Court Property Preservation of Registered Trademark Rights.

10. Interpretation of the SPC on Several Issues Concerning the Application of Law in the Trial of Copyright Civil Dispute Cases.

11. Provisions of the SPC on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Concerning the Infringement of Information Network Dissemination Rights.

12. Interpretation of the SPC on Several Issues Concerning the Trial of New Plant Variety Disputes.

13. Several Provisions of the SPC on the Specific Application of Legal Issues in the Trial of Disputes over Infringement of the Rights of New Plant Varieties.

14. Interpretation of the SPC on Several Issues Concerning the Application of Law in the Trial of Civil Cases of Unfair Competition.

15. Provisions of the SPC on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Caused by Monopoly Acts.

16. Interpretation of the SPC on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving Computer Network Domain Names.

17. Interpretation of the SPC on Several Issues Concerning the Application of Law in the Trial of Technical Contract Disputes.

18. Provisions of the SPC on the Jurisdiction of Beijing, Shanghai and Guangzhou Intellectual Property Courts.

These 18 judicial interpretations will be dealt with in subsequent posts. See here.