Haworth & Lexon IP Cases Report (14)

Haworth & Lexon IP Law Newsletter
No.8, 2003 (Total:No.14) Sep5th, 2003
Edited by Haworth & Lexon

"Haworth & Lexon Intellectual Property Law Newsletter" aims at introducing new cases and legal tendency in IP fields. All the comments do not mean the legal opinion of our firm and the firm does not have any legal liability for such comment. If you require any legal advice, we are willing to offer you considerate service. You can write E-mail to hl@hllawyers.com. If you have any interests and suggestions, or have any interests on some topics listed in this law newsletter, please contact with us.

Guidelines

★ Patent for a design that included other people's trademark shall establish infringement
★Beijing First Intermediate People's Court accepted and heard the first case in China regarding confirming not infringing upon the trademark
★Wanguo Software Development Co. Ltd. paid RMB 200,000 for infringement of software copyright owned by foreigner
★The infringement was established for T.V. advertising that exploit the film as its background
★The legal representative of Yongcui Co. Ltd. was condemned to imprisonment and civil compensation RMB 500,000 for imitating the CARTELO trademark was upon the company

Patent for a design that included other people's trademark shall establish infringement

On Aug. 4th , 2003, Beijing First Intermediate People's Court made final decision in the case SHANGRI-LA International Hotel Management Co. Ltd vs. Huang Huijuan regarding infringement of trademark and unfair competition. The Court held that, the defendant had no rights to use the plaintiff's patent product.

In 1994, the plaintiff acquired the registration of the two trademarks of both Chinese and English characters of SHANGRI-LA. The service item included hotel and restaurant. In 1999, the defendant modified the two trademarks a bit and used them on her restaurant's shop sign. At the same time, she filed a patent application for the design of the two trademarks. Although the plaintiff had once filed an application for invalid announcement to the Patent Reexamination Board concerning defendant's patent infringement, it wasn't accepted because of failing to provide a court's decision to confirm rights conflict.

Therefore, the plaintiff sued to Beijing First Intermediate People's Court for plaintiff's infringement of patent and breaching the principles of honesty and credibility.

The Court held that, a patent for design was invalid if it conflicted with the former legitimate rights. According to the Article 65 Section 3 of the Detailed Rules for Enforcement of the amended Patent Law, the Patent Reexamination Board will not accept and hear the application to confirm the patent invalid unless they could provide the effective court's decision. So the court's decision has become the premise for these kinds of cases. The Court also held that, according to the Patent Law, the patent would be invalid if it conflicted with existing legitimate rights. The Court did not care whether the patent had been put into practical use or not. Therefore, the Court must judge if such conflict existed.

The Court found that, the defendant used the same character of plaintiff's trademark in her shop sign. The action was obvious enough to realize the function of service trademark to distinguish the source of the service. If the defendant put the two patents for design into use, it will lead to confusion and misunderstanding among general consumers. So the Court ordered the defendant to cease the infringement and pay compensation for damages.

Beijing First Intermediate People's Court accepted and heard the first case in China regarding confirming not infringing upon the trademark

Beijing First Intermediate People's Court took up the case China Social Science Press vs. Fiderike & Worn Co. Ltd (British) relating to confirming not infringing upon the trademark.

Beatrix Potter, the famous American children literature writer, created 19 Peter Rabbit children's stories from 1902 to 1913, and died in 1943. Zhang Runfang translated them into Chinese and concluded a publishing contract with China Social Science Press in March, 2003. After the publication, Fiderike & Worn Co. Ltd (British) wrote to distributors and complained to the administrative departments for industry and commerce to claim that they were the owner of the registered trademark of Peter Rabbit and all Peter Rabbit illustrations in the books. They considered that China Social Science Press had prejudiced their exclusive right of the trademark among the books mentioned above.

China Social Science Press believed that the works of Beatrix Potter had already entered into public domain and they also owned the legitimate copyright acquired from translator. Meanwhile, the act didn't produce confusion and misunderstanding for the source of the commodities among common consumers. So they sued to Beijing First Intermediate People's Court for confirming not infringing upon the exclusive right to the use of defendant's registered trademarks.

The judge in Beijing First Intermediate People's Court held that, it was the first case in China for confirming not infringing upon the exclusive right to the use of a registered trademark and it was different with common trademark infringement cases.

Wanguo Software Development Co. Ltd. paid RMB 200,000 for infringement of software copyright owned by foreigner

On July 10th, 2003, Beijing First Intermediate People's Court made the decision in the case American Sebesi Co. Ltd vs. Wanguo Software Development (Shenzhen) Co., Ltd. regarding infringement of copyright. The court ordered that the defendant must cease the infringement, apologize publicly and pay RMB 200,000 for damages together with other reasonable fees in the lawsuit.

The plaintiff was the copyright owner of Sybase SQL Anywhere 5.5 version software. In the end of Aug. 2000, they found Sixun software produced by defendant bound the SQL Anywhere database for sale. In the beginning of Sept. 2000, they also found that defendant admitted that they had "adopted the advanced development implement Powebuilder and the large scale data base such as Sybase SQL Anywhere" in the introduction of Sixun 2001 software on their website. So the plaintiff requested that the defendant should cease the infringement, destroy the copies produced through infringement, make an apology and pay RMB 3,000,000 for damages.

The Court held that, American Sebesi Co. Ltd, the copyright owner of the Sybase SQL Anywhere 5.5 version software, should be protected by law. The defendant infringed upon the plaintiff's copyright for exploiting the dbeng50.exe, the engine files of the Sybase SQL Anywhere 5.5, in Sixun 2001 software 2.0 version and 2.4 (individual computer version) and using dbsrv50.exe and dbclient.exe in Sixun 2001 software 2.4 (net version) without plaintiff's authorization.

To calculate the compensation should consider the following factors such as the price of plaintiff's software, the price and volume of sale of the infringing products, the quantity of files in defendant's software, the proportion of byte in both plaintiff's and defendant's software respectively, and the function of the files that be duplicated in infringing copies. Besides, defendant should pay plaintiff the reasonable fees of notarization, translation, obtaining evidences in the lawsuit.

The infringement was established for T.V. advertising that exploit the film as its background

On April 2003, Beijing First Intermediate People's Court decided the case Beijing Science Education Film Production Factory, Shanghai Lugu (Group) Co. Ltd and Beijing Maisilong Biology Technology Co. Ltd vs. Hualun (Hong Kong) Development Co. Ltd, Beijing Liyang Advertising Co. Ltd and Xiamen Yifengda Biology Technology Co. Ltd regarding the infringement of copyright. The Court ordered that Liyang Advertising Co., Ltd and Yifengda Co., Ltd must make an apology to plaintiff in Chinese TV News and pay plaintiffs RMB 60,000 for damages. The Hualun Co. Ltd wouldn't bear the legal liability.

The three plaintiffs were the copyright owners of the popular science film "Chinese Glossy Ganoderma: Stepping out Its Mystery". In Oct. 2000, Liyang Advertising Co., Ltd and Yifengda reached a contract. They agreed that the latter was responsible for making the TV advertising of "Shennong King of Glossy Ganoderma" active amylose refined capsule for the former and arranging to broadcast it in TV Shopping program in Beijing Education Channel. From Dec. 2nd, 2000 to Dec. 8th, 2000, Beijing Education Channel broadcast the advertising mentioned above. When the advertising introduced "Shennong King of Glossy Ganoderma" refined capsule, it exploited some sections of the popular science film as its background.

The Court found that, the three plaintiffs enjoyed the copyright of the film involved in the case. The TV Shopping Program introduced and promoted sale of the commodities to public through the media of TV. It should be considered as the advertising, not the broadcast and TV program enacted by Copyright Law. The defendants Exploited plaintiffs' works without the written licensing contract and paying remuneration, therefore the infringement was established. Yifengda Co. Ltd, the owner of the advertising, and Liyang Co. Ltd, the manager of the advertising, should bear the infringement liabilities.

The Court didn't stand by the two defendants' pleas. The defendant held that, the sections they exploited were only used as the advertising's background, not the main content. They used the plaintiffs' works in a justifiable extent and didn't result in any damage to plaintiffs. So they made a conclusion that their act didn't prejudice the copyright of plaintiffs.

Besides, the evidences provided by plaintiffs weren't enough to testify that Hualun Co. Ltd was the producer or owner of the advertising. So the infringement was not established.

The legal representative of Yongcui Co. Ltd. was condemned to imprisonment and civil compensation RMB 500,000 for imitating the CARTELO trademark was upon the company

On Aug. 28th, 2003, Shanghai First Intermediate People's Court made the decision in the case CARTELO International Institution Private Co. Ltd and Shanghai Oriental CARTELO Clothing Co. Ltd vs. Shanghai Yongcui Co. Ltd relating to infringement of trademark. The Court ordered the defendant to pay plaintiffs RMB 500,000 for damages.

CARTELO International Institution Private Co. Ltd was the owner of the registered trademark "CARTELO". On Oct. 1st, 1997, the Company authorized Shanghai Oriental CARTELO Clothing Co. Ltd to use its registered trademark in Mainland. From Nov. 1998 to Sept. 1999, Que Huacun, the legal representative of Shanghai Yongcui Co. Ltd, labeled fake CARTELO logo on the same kinds of clothing and sold them in Shenyang. Que Huacun had been sentenced by Shanghai Minhang District People's Court for faking registered trademark on March 15, 2002.
Shanghai First Intermediate People's Court found that, Que's act infringed upon the plaintiff's exclusive right to use of the CARTELO logo.

As the legal representative of Yongcui Co. Ltd, Que admitted her company had attended the transportation and sale of the infringing commodities. Therefore, the court finally decided that Yongcui Co. Ltd must bear civil liabilities and pay RMB 500,000 for damages.