According to State Administration of Industry and Commerce (SAIC), China’s registered trademark hit 11.22 million as of the end of this June, amounting to one third of the global registered trademarks. China trademark application in the first half of the year has reached over 1.74 million; it’s estimated to be over 3.5 million by the end of the year. Since 2002, China trademark application has topped the global volume for 14 consecutive years. The conflict between the dramatic volume surge and the underpowered examination body is becoming increasingly acute, which calls for the inevitable reform to improve trademark registration channel and service channel. The official opinions released recently mentioned some measures of reform, including setting up regional offices to accept trademark applications, speeding up the issuance of trademark application filing receipt from 6 months to 3 months, as well as gradually shifting from paper filing to e-filing. (Source: Economic Daily)

China's State Intellectual Property Office (SIPO) and European Patent Office (EPO) have recently renewed their Memorandum of Understanding (MOU) on Cooperative Patent Classification (CPC) for another 6 years. The MOU covers extensive ranges of areas such as classification practices, classification training, data exchanges and protection mechanisms. The signing of the renewed MOU shall facilitate strengthened classification cooperation between the two offices and provide a solid ground for SIPO to expand and deepen the implementation of CPC frameworks.

According to the MOU, starting from January 2016, SIPO shall adopt CPC framework for the classification on all new patent applications of all technical fields, and share the classification data with EPO; EPO shall continue providing CPC classification training in certain specialized fields to SIPO; SIPO and EPO shall also conduct periodic implantation meetings to confer on the classification cooperation matters such as quality assurance, IT, training and communications. (Source: State Intellectual Property Strategy Website)

Patent Prosecution Highway (PPH) test between China’s State Intellectual Property Office (SIPO) and Israeli Patent Office (IPO) launched on August 1, 2014 for an initial duration of 2 years will be extended indefinitely with all requirements and procedures remain untouched.

As the owner of the registered trademark “Tian Tian Xuan Wu” (meaning “everyday dance”) in Class 9 Computer Games & Software and Class 41 Service Provision of Online Games on Computer Networks, Tencent enjoys the exclusive right of trademark use, keeps operating on the online game “Quan Min Xuan Wu (meaning “everybody dance”), alias “Tian Tian Xuan Wu (meaning “everyday dance”)”.

Shanghai Xiangyou company also developed a game named “Tian Tian Xuan Wu”, which is published and operated by Tianjin Zhuoyue-Chenxing company, and Beijing Zhuoyue-Chenxing is the operator and publisher of the game’s official website; Tianjin Zhuoyue-Chenxing operated on the network platform provided by Beijing Qihoo. Tencent company believed that the above-mentioned companies had infringed on Tencent’s exclusive right to the registered trademark “Tian Tian Xuan Wu” and launched the lawsuit against the aforementioned parties at Beijing Chaoyang District People’s Court.

In this case, Shanghai Xiangyou company, the developer of the game involved, could not provide sufficient evidences to prove “Tian Tian Xuan Wu” is a common name for this kind of games. Instead, “Tian Tian Xuan Wu” is not a fixed phrase but a word combination out of creation and possesses distinctiveness. Shanghai Xiangyou company and the other parties, who are responsible for distributing the game involved, had specifically adopted and put emphasis on the wording of “Tian Tian Xuan Wu” in the game’s propagandas and promotions on their websites and platforms, which, therefore, had worked as the identifier of the source of the game involved and constituted trademark use. Meanwhile, as Shanghai Xiangyou company launched the game involved later than the filing date of the registered trademark, the company cannot defend themselves with prior use claim. Therefore, the act of Shanghai Xiangyou using a mark identical and similar to Tecent’s registered mark without authorization has constituted trademark infringement. Tianjin Zhuoyue-Chenxing and Beijing Zhuoyue-Chenxing as the publisher and operator of the game involved have also infringed on Tencent’s exclusive right of trademark use by promoting “Tian Tian Xuan Wu” mark for the game involved.

As the platform provider for the game involved, Beijing Qihoo company provides technical service solely, does not necessarily possess the capability of deciding whether the game involved has constituted infringement, therefore they shall not be held as joint infringement, and shall not be responsible for eliminating impacts caused by not removing the game involved from their shelves and liable for the compensation for the economic losses; however, they shall be responsible for ceasing provision of the game involved on their platform.

Beijing Chaoyang District People’s Court made a judgment on June 27, 2016 that Shanghai Xiangyou, Tianjin Zhuoyue-Chenxing, Beijing Zhuoyue-Chenxing and Beijing Qihoo shall stop using “Tian Tian Xuan Wu” trademark in the game involved immediately from the date of ruling; Shanghai Xiangyou, Tianjin Zhuoyue-Chenxing and Beijing Zhuoyue-Chenxing shall publish statements on their official social accounts (Weibo, WeChat etc.) and official websites of the game involved within 30 days from the date of the ruling to eliminate the ill effects, as well as pay an indemnity of 357,600 yuan to Tencent within 10 days from the date of ruling to compensate their economic losses and the reasonable fees.

The plaintiff, Henan Hua Hua Niu Group, is the right holder of series marks “Hua Hua Niu in Chinese and logo” registered under Nos. 1185340, 1199434, 3234059 and 3234689 in Class 29 (cited marks). The group is the largest dairy products manufacturers in Henan province, and their product series banded with “Hua Hua Niu (in Chinese)” take up 80% of the market in the province with sales topping the market since 1999.

On April 11, 2003, Henan Zhengniu Foods filed application for “HUAHUANIU” trademark (the disputed trademark) in respect of “Beers, Juices, Water (Beverage), Mineral Water (Beverage), Vegetable Juices (Beverage), Non-alcoholic Beverages, Sodas, Colas, Plant-based Beverages, Beverage Preparations” in Class 32.

After losing trademark opposition, opposition review, and the administrative litigation concerning the opposition review decision, Henan Hua Hua Niu group initiated an invalidation proceeding against the disputed trademark at the Trademark Review and Adjudication Board in September 2014 on the grounds that 1) the disputed trademark and the cited trademarks constitute similar trademarks in respect of similar goods, which would confuse and mislead the consumers; 2) the registration of the disputed trademark has infringed on the trade name right of the plaintiff; 3) Henan Zhengniu company’s registration of the disputed trademark is in violation of the principle of good faith and bears ill intent of taking advantages of a well-known trademark; and 4) the registration of the disputed trademark is deceptive, leading consumers to misperception and causing ill influences among the society. The Review and Adjudication Board made a decision to maintain the disputed trademark in September 2015. In dissatisfaction, Henan Hua Hua Niu brought the administrative litigation case in Beijing IP Court within the statutory time limit.

As the challenge of the case is at determination of the similarity of goods, Unitalen team devised an effective strategy after studying the case: Firstly, the reason why the Trademark Review & Adjudication Board did not support the plaintiff’s claim at the examination stage, is largely due to the reference they made to a court judgment 2010 in which the goods under the disputed mark are considered dissimilar to those under some of the cited marks. However, according to the 2014 version of the Guidebook for Similar Goods and Services, the designated goods of the disputed mark are considered similar to those under some of the cited marks. Therefore the 2010 judgment shall not be binding upon this case as it was made based on the facts and legal conditions of 5 years ago. Secondly, the designated goods of the disputed trademark are very similar to those of the cited marks in terms of function, usage, production and target consumer. Lastly, the plaintiff supplemented substantial evidences during the litigation to prove the cited marks had enjoyed higher publicity through propaganda prior to the filing date of the disputed trademark and the Henan Zhengniu Foods was with obvious ill intent.

After hearing, Beijing IP Court made a judgment to revoke the TRAB’s decision and ordered TRAB to make a new one. Since the first filing of opposition in 2004, Henan Hua Hua Niu had experienced opposition, opposition review, administrative litigation concerning the opposition review decision, invalidation, and at last the administrative litigation concerning the invalidation decision for a duration of 12 years in total. By the persistent pursuit of right protection, Henan Hua Hua Niu finally won a satisfactory victory and cleared up the obstacles around their core products.

Hailan Clothing Ltd. (the plaintiff) is the right owner of trademarks No. 3196649in respect of “textile materials, cotton fabrics, linen beddings, and furniture coverings of textile” of Class 24 and No. 4077661(Hai lan) in respect of “clothing, shirts and underwear etc.” in Class 25. The mark has been widely known to the public through extensive use and advertisement by the plaintiff.

Hailan Fabrics of Jilin Dong City Business & Economic District (the defendant) was found using(Hai lan) on “curtain fabrics”. Moreover, according to investigation, the defendant company was registered in 2011 with business scope covering textile retailing, whereas the plaintiff’s mark had enjoyed considerable reputation nationwide by 2011.

Represented by Unitalen attorneys, the plaintiff brought a lawsuit against the defendant for trademark infringement and unfair competition. During trial, Jilin Municipal Intermediate People’s court found the plaintiff enjoys exclusive right to “海澜”trademarks and the defendant has constituted infringement on the registered trademarks. Moreover, the defendant’s use of plaintiff’s registered trademark as their business name has constituted unfair competition.

On June 7, 2016, Jilin Municipal Intermediate People’s Court made the first-instance rulings that 1) the defendant shall cease infringement on the plaintiff’s exclusive right of trademark, 2) the defendant is ordered to remove the Chinese海澜 (Hai lan) from its business name within 10 days after the ruling takes effect, and 3) pay an indemnity of 200,000 RMB yuan to the plaintiff for their economic losses and reasonable costs incurred.

Shanghai IP Research Institute has recently completed their survey on the status of China IP professional publications of 2015. In the overall publications ranking, which includes scientific research institutes, judicial systems, governments and social organizations, Unitalen is among the Top 3 leagues with 25 articles published in parallel with Beijing Municipal Higher People’s Court (25 articles), following State Intellectual Property Office (273 articles) and East China University of Political Science and Law (40 articles).

On July 26, the teachers and students of Dalian University of Technology (DUT) summer practicing class visited Unitalen headquarter in Beijing; they were warmly received by Dr. Deshan Li, Unitalen Vice President. The teachers and students had a pleasant conversation with Unitalen representatives and the DUT alumni working at Unitalen, surrounding the topics of Unitalen’s patent services and the connections between the students’s majors with IP industry etc.

Starting from April 2015, Unitalen established scholarship with DUT, providing cash reward and capital for overseas exchange activities for distinguished students. Unitalen Scholarship is aimed at attracting more excellent students and professionals to pay attention and participate in IP. Similar collaboration has also been started with Tsinghua University, Tongji University and Zhengjiang University of Industry to explore new methods of talent development, e.g. setting up “Unitalen Class” with the universities and colleges by contract to train up IP talents.