Haworth & Lexon IP Cases Report (3)

Haworth & Lexon IP Law Newsletter
No.3, 2002 (Total:No.3)September 5th, 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

★★ Alibaba(China) holds Chinese domain name "Alibaba" though it is not legal to reserve it
★ Yuanyang Hotel infringed the copyright of Longxiang Company for plagiarizing moon cake box
★ The plaintiff was compensated RMB 1 million in its "Blue Diamond Trademark" infringement case
★ The Patentee won the infringement case related to the patent for utility model of "circumrotated straw lid of the bottle"
★ Jingwen Recording Co. won a case related to "Zero Point Music"
★ YAMAHA v. Tianjing Gangtian, the former won a trademark infringement case

Alibaba(China) holds Chinese domain name "Alibaba"
though it is not legal to reserve it

Plaintiff: Beijing Zhengpu Technology Development Co. Limited
Defendants: CNNIC and Alibaba （China） Network Technology Co. Limited
Cause of the case: Chinese Internet Domain Name Dispute
Ruling: Beijing Higher People's Court confirm the judgment of rejecting the claim of the plaintiff

The plaintiff claims that CNNIC's decision to reserve Chinese domain name "Alibaba" to Alibaba (China) Network Technology Co. Limited is wrong and against the principle of "First Come, First Register", so it violates the right of the plaintiff.

Beijing Higher People's Court concluded in its final judgment that: such a domain name is related to personal civil rights. It should not be reserve for someone. But in the current case, Alibaba (China) used the domain name(Alibaba) earlier than Zhengpu Company(2688.net, 2688.com). Considering that the A&P of Alibaba (China) is far bigger and wider than Zhengpu, so it is not against the principle of "Fair, Impartial and In Good Faith" for Alibaba (China) to register Chinese Domain name "Alibaba". The court confirmed the decision of CNNIC though it has the view that it is not legal to reserve a domain name for someone.

Yuanyang Hotel infringed the copyright of Longxiang Company for plagiarizing moon cake box

Plaintiff: Shanghai Rongxiang Food Development Co. Limited
Defendants: Shanghai Yuanyang Hotel Co. limited, Shanghai Jingjie Printing Co. Limited
Cause of the case: copyright infringement
Ruling: Shanghai No.2 Intermediate People's Court holds that the defendant should stop the infringement, destroy the remained boxes, make an apology publicly in "Xinming Evening" and compensate RMB 40,000 jointly.

In April 2001, Rongxiang Co. was entrusted by Yuanyang Hotel to design five styles of moon cake box. It completed the assignment and the manager of its Design Department handwritten "Yuanyang Moon Cake" on the box. However, Yuanyang Hotel didn't make contract for the moon cake box with Rongxiang Co. after it got the sample of the box. In August 2001, Yuanyang Hotel signed a contract with Jingjie Printing for printing the five style of the moon cake box and using the box for sale. Rongxiang Co. states that the five styles of the moon cake box plagiarizes the design of Rongxiang Co., so it sued the defendants.

The court holds that Rongxiang Co. is the copyright holder of the artistic design and the handwriting of "Yuanyang Moon Cake" of the five styles of the moon cake box. Yuanyang Hotel infringed the copyright of Rongxiang Co. for asking Jingjie to print the five styles of the moon cake box and using it for sale without the license of Rongxiang Co. Meanwhile, Jingjie also infringed Rongxiang Co.'s copyright for not exercising its necessary care to print the artistic design of the moon cake box.

The plaintiff was compensated RMB 1 million in its "Blue Diamond Trademark" infringement case

Plaintiff: Shanghai Gas Equipment Company Limited by Shares
Defendants: Linghai Instrument and Meter Industry Company, Shanghai Huangxin Industry and Trade Center
Cause of the case: Trademark Infringement and Unfair Competition
Ruling: The initial judgment of Shanghai No.2 Intermediate People's Court states that Linghai should stop the infringement of the "Blue Diamond Trademark" and compensate RMB 1 million to the plaintiff. Huangxin should stop the infringement and the sale of the infringed products.

The plaintiff holds the registered trademark of "Blue Diamond" which was granted in December 2000. The trademark is ratified to be used in products such as gas instruments. In March 2001, Linghai Company, without license, used the "Blue Diamond Trademark" in its manufactured gas instruments and the product package and provided the products to Huangxin for the latter to sell them in Shanghai.

After hearing the case, the court concludes: The plaintiff is the trademark holder of "Blue Diamond" which is protected by the law. The defendant(Linghai) used the same trademark of the registered trademark of the plaintiff without permission in its gas instruments, so the defendant infringed the plaintiff's exclusive rights of the trademark. Meanwhile, it also violated the anti-unfair competition law to use the trademark of the plaintiff in its gas instrument package and the certificate of quality and to mark that the plaintiff company has passed the ISO9002 Quality System on its outside package.

The Patentee won the infringement case related to the patent for utility model of "circumrotated straw lid of the bottle"

The plaintiff, Mr. Pan Du Hua, designed a "circumrotated straw lid of the bottle" in order to improve the unclean, inconvenient situation of traditional straw of fruit milk. He filed his patent application on March 3rd 1998 and State Intellectual Property Office grant its patent for utility model on March 31st 1999. The product of fruit milk manufactured by Guangdong Lebaishi Group Co. Ltd and Zhongshan Lebaishi Health Protection Company is using "circumrotated straw lid of the bottle". In May 1999, the plaintiff brought the case before Wenzhou Intermediate People's Court suing the Lebaishi general sales agency of ZhuiAn District, states that the defendant should stop the sales, make a public apology and compensate the loss, RMB 50,000.

During the period, through the procedure of patent cancellation and reexamination, on May 23, 2000, SIPO confirmed the validity of patent for utility model. Then on July 3rd, 2002, Wenzhou Intermediate People's Court have a public hearing to this case.

The court states, "Lebaishi" and the patent product are the same product considering the framework, working method, and the result. It infringed the right of the patentee to sell the product using the patent without its permission. So the court rules the defendant to stop the infringement and make a public apology. However, the court doesn't support the compensation claim.

Jingwen Recording Co. won a case related to "Zero Point Music"

The plaintiff: Beijing Jingwen Recording Co. Ltd
The defendant: Guangzhou New Era Movie and Music Co. and Guangzhou Hezhong Disc Producing Co. Ltd
Cause of the Cause: copyright infringement
Ruling: Beijing No.2 Intermediate People's Court holds (in the first instance) the two defendants immediately stop copying CD disc of "China's Original Creation Music-Zero　Point" and compensate the loss of the plaintiff: RMB 110,000.

The plaintiff signed several agreements with Zero Point Band during the period of 1995 to 1998 and got the exclusive publishing rights of 9 songs such as "Stand up" and 2 special edition of "Every night every day" and "The very start point of Zero forever". The defendant(New Era) entrusted the other defendant(Hezhong) to manufacture 2000 CD disc of "China's Original Creation Music-Zero Point" in June 2001.

The court holds that the Zero Point Band licensed the publishing right to Beijing Jingwen Co. so Beijing Jingwen has the exclusive right to copy the band's music product like "Every night every day" and get the economic benefits. Whereas Guangzhou New Era Co published the unauthorized CD disc which includes 12 copyrighted music products, so it infringed the rights of the plaintiff. Guangzhou Hezhong Co. did not exercise its necessary obligation for copying, so it should bear legal obligation for infringements jointly.

YAMAHA v. Tianjing Gangtian, the former won a trademark infringement case

The plaintiff: YAMAHA Co.
The defendant: Tianjing Gangtian Group Co.
Cause of the case: trademark infringement
Ruling: Tianjing Higher People's Court rules(the first instance) that the defendant should stop manufacturing and selling autocycles attaching the YAMAHA label, make a public apology statement in Autocycle magazine, however, it only support RMB 900,000 for compensation not the claimed RMB 30,000,000.

The initial court rules that: from 1999, without license, Tianjing Gangtian attached the "LINHAI-YAMAHA" label to the engine, attached similar "FORTUNE" and "VISION" label which have already registered in China in its bodywork and gasoline tank, whereas the whole autocycle (belongs to the series of "GT 125") is manufactured and sold by itself. Apart from that, the defendant also attached " engine licensed by YAMAHA" in its "GT 50T-1"series autocycle, meanwhile put the word "YAMAHA", which Chinese consumers are familiar, three times bigger than the other English words. Such action intentioned to mislead the consumer that the product has some connection with genuine YAMAHA for the reason that domestic consumer is not familiar with English or neglecting. Thus the court rules that it is unreasonable use of other party's trademark and infringes the right of the trademark holder.