Haworth & Lexon IP Cases Report (4)

No.4, 2002 (Total:No.4) October 8th, 2002

"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★ The court ordered the TRAB to make a decision again in the first administrative case of trademark review and adjudication★ The Netease was ordered to pay RMB 10,000 as the compensation by the initial court★ Transform of the ownership having no effect on copyright, Vice-chairman of the Chinese Calligraphers Association won the infringement case in first instance★ Haojie claimed Jinshan unfair competition, the court of first instance holds the infringement is tenable★ Japanese Honda Association lost the administrative lawsuit of invalidation of patent right in first instance★ Using the business secrets of the former unit infringed on the right of the former unit

The court ordered the TRAB to make a decision again in the first administrative case of trademark review and adjudication

The plaintiff: Han Lao Da Braised Chicken Shop of Shandong ProvinceThe defendant: Trademark Review and Adjudication Board of SAIC (hereafter referred as TRAB)Ruling: Beijing No. 1 Intermediate People's Court made the initial ruling on September 19th to repeal the decision by TRAB and ordered the TRAB to make decision again in 60 days after the ruling become valid.

In March 1999, the third party of this case Han Lan Shan Braised Chicken Company Ltd in Wei Fang City of Shan Dong Province applied to register a service trademark of "Han Lan Da" in the class of 40. The Trademark Office approved the trademark in June of 2000. In October 2000, the plaintiff filed an opposition application to TRAB. On December 7th of 2001, the defendant mailed the decision to the plaintiff. The TRAB had a view that the decision was made on November 30, 2001. However, the new Trademark Law was come into force on December 1st, 2001, so the former trademark law should be applied, then the court should not accept the case pursuant to the relevant laws.

The court holds that the administrative decision become valid after the party receive the decision. The decision in the current case was mailed on December 7th 2001, so the decision became valid to the party after that date. According the new Trademark Law, the related party may institute legal proceedings in the People's Court if it is not satisfied with the trademark related decision issued by TRAB after December 1st, 2001. So the court should accept the administrative suit lodged by the plaintiff. For the reason that the fact recognized by the defendant-the time the plaintiff made "Han Lan Da" as its trade name was later than the date of the third party, Han Lan Shan Braised Chicken Company Ltd in Wei Fang City of Shan Dong Province, applied the trademark-was unclear and lacked evidence, the court ordered TRAB to make a decision again 60 days after the ruling become valid.

The Netease was ordered to pay RMB 10,000 as the compensation by the initial court

The plaintiff: Music Copyright Society of China(referred as MCSC)The defendant: Guang Zhou Netease Computer System Co. Ltd(Netease) and Beijing Mobile Communication Co. Ltd(Beijing Mobile)Cause of the case: Copyright disputeThe initial ruling:In September 2002, Beijing No 2 Intermediate People's Court made a decision that Netease should not communicate the song of "Xue Ran de Feng Chai" to the public without permission, and compensate RMB 10000 as the loss MCSC incurred and RMB 1300 for the notary fee. Beijing Mobile has no legal responsibility.

After hearing the court holds that the current evidence states that SU Yue is the copyright owner of the song of "Xue Ran de Feng Chai". According to the agreement between SU Yue and MCSC and relevant laws, the latter could institute the lawsuit as the plaintiff. Its qualification of lawsuit party should be recognized.

Pursuant to the regulation of the Copyright Law, the copyright owner has the right of communication of information on networks, that is, the right to communicate his works to the public, by wire or wireless means. Without permission, communicating other party's works on the internet infringed upon the for-said right to. Netease, without the authorization of SU Yue, put the song of "Xue Ran de Feng Chai" into the website column opened by itself and make it possible for any mobile phone user to download. Such commercial action infringed upon the copyright owner's right of communication of information on networks, so it should bear the legal responsibility to stop the infringement and pay compensation. Since the plaintiff has no evidence to show the action of Netease infringed upon SU Yue's personality right, the court did not support the claim by the plaintiff to make an apology.

According to the criterion of civil liability, the party who infringes upon the copyright must have a fault. In the current case, if the plaintiff ask Beijing Mobile to bear legal responsibility, it should certify that Beijing Mobile is the promulgator of the case related infringed work, or Beijing Mobile has the responsibility to check the information it received but neglect, or after Beijing Mobile was told that it communicated infringing information and it had the ability to delete the information, however it was willing to do so . In the case, Beijing Mobile has no circumstance of the above. Furthermore, it couldn't be the basis for Beijing Mobile to bear legal responsibility only because it collects fees through providing basic infrastructures service to the public and network company. So Beijing Mobile's action doesn't constitute infringement.

Transform of the ownership having no effect on copyright,Vice-chairman of the Chinese Calligraphers Associationwon the infringement case in first instance

Plaintiff: LinyouDefendants: Jiangsu Yihailou Golden Industry Co. Limited, Beijing Gongmei Group Co. Limited, Wangfujing Gongmei BuildingCause of the case: Copyright infringementRuling: Beijing No.2 Intermediate People's Court holds that Yihailou Co. should stop producing and selling the goldleaf drawing products of The Century of Dragon, stop making and handing out the relevant publicity material, make an apology publicly in a newspaper, compensate RMB 100,000 and bear the court costs of RMB 726. Gongmei Building should stop the sale of the infringed products.

From Dec.27th 1998 to Jan.10th 1999, Linyou created six "Dragon" handwriting work and sold them to others. However, there was no conclusion on the using way of the work. In Jan. 2001, Yihailou Co. made the goldleaf drawing named "The Century of Dragon", which used the grass writing "Dragon" handwritten by Linyou as the background, and let Gongmei Building sale the infringed products.

The court holds that Linyou is the copyright holder of the six handwritings of "Dragon" and his copyright should be protected by the Copyright law. Though the ownership of the six original patterns has been transferred, the author, Linyou, still has the right of publication, authorship, alteration, integrity, use and receiving remuneration. Therefore, the judgment is given.

Haojie claimed Jinshan unfair competition, the court of the first instance holds the infringement is tenable

Plaintiff: Beijing Haojie Computer Technology Co. LimitedDefendant: Beijing Jinshan Software Co. Limited.Cause of the case: Unfair competitionRuling: Haidian Distrct of Beijing People's Court holds that the defendant infringed upon the plaintiff's right and should make an apology publicly in a national level IT media. The amount of compensation will be decided by further judgment.

The plaintiff accused that the defendant held a news conference to propagate its new software product "Jinshan yingba 2003"in the IT circle on July 23rd. In the publicity material, the defendant used a lot of words to slander the plaintiff's business prestige, the fame of the plaintiff's products, the president, Liangzhaoxin's reputation. Furthermore the defendant compared its product with the plaintiff's DVD product and claimed the latter was lack of some functions and would be eliminated.

The court holds that what the plaintiff claimed is basically true, the act of the defendant violated the relating terms of the Anti-unfair Competition Law and infringed upon the plaintiff's rights.

Japanese Honda Association lost the administrative lawsuit of invalidation of patent right in first instance

In Sep.2002, Beijing No.1 Intermediate People's Court made the judgment on the administrative lawsuit of invalidation of patent right. In this case, Honda Association brought an action against the Patent Reexamination Board of the Sate Intellectual Property Office. The court was not in favor of the plaintiff's claims.

In June 1994, Honda Association was granted the patent right for the design of "Minor Motor" by the State Patent Bureau. Shanghai Feiling Motor Manufacture Co, and Zhejiang Huari Co. successively request the Patent Reexamination Board to declare the patent right invalid.

After examination, the Patent Reexamination Board adopted the contrast document of motor design owned by Taiwan Guangyang Industry Stock Co., which was offered by Feiling Co., and declared the patent right invalid because of similarity.

Honda Association stated the decision of invalidation of his patent right made by the Patent Reexamination Board was unlawful and, therefore, brought an administrative action.

Beijing No.1 Intermediate People's Court holds that for common consumer, the Honda Association's design has the same visual effect as the existed design, especially in another occasion it was more adapted to make the consumer confused. The Honda Association's application was latter application, so its claim was no basis of fact and law.

Using the business secrets of the former unit infringed the right of the former unit

Plaintiff: Xnhua Travel AgencyDefendants: Shanghai Hongqiao Travel Agency, the five individuals including Mr. Jiang Cause of Case: Business Secret infringementFinal Ruling: In Sep.2002, Shanghai Higher People's Court held that the defendants infringed the business secrets of the plaintiff, compensate RMB 200,000 and make an apology publicly in media.

In Mar.2001, Jiang, the former manger of Huadong District Department of Xinhua Travel Agency, and the four other persons handed in their resignation at the same time. Before Xinhua Travel Agency consented their resignation, the five persons had already deleted the management information, which they had used, took the faxes, which the outer travel agencies asked to organize travel groups, and other business materials. Then they joined Hongqiao Travel Agency, which was founded before long. The plaintiff gave Hongqiao Travel Agency a written notice through its lawyer, but Hongqiao Travel Agency disregarded it, directly used the management information and transacted with 35 outer travel agencies in a short time. The volume of trades amounted to more than RMB 2,500,000.

The court held that the acts aforesaid of the defendants had encroached on business secrets. Therefore, the final judgment decided the infringement was tenable.