Haworth & Lexon IP Cases Report (6)

No.6, 2002 (Total:No.6) Dcemeber 5th, 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

★ Bubugao's patent right of design has been confirmed by initial court★ Initial court made decision of the Sina Vs. Sohu infringing case ★ Foreign software owner was compensated RMB 500,000 in the first instance★ The Lao Ma of Imperial City won its case of trademark & copyright infringement★ Hengsheng case on trademark has been settled in the final judgment★ Bone Power of the TianLion was not found infringement, defendant won the case in the second instance★ The newly established corporation selling the same product of the original company was found infringement in final court

　　　　　　　　Bubugao's patent right of design has been confirmed by initial court

Recently, Beijing No.1 Intermediate People's Court made an initial judgment in the case of Bubugao Vs. the Patent Reexamination Board of State Intellectual Property Office on invalid patent dispute, and ordered the Patent Reexamination Board to revoke its decision, which found the Bubugao's patent of design on its VCD Player was invalid.

Bubugao has been granted a design patent for its NO.99335291.X VCD Player on Apr. 12,2000.On Dec.24, 2000,Sony Entertainment brought up a request for invalid declaration, and believed that Bubugao's design patent has an resemblance with the prior existed design patent owned by Sony for its PC game machine. The Patent Reexamination Board adopted Sony's opinion, and made an announcement of invalid for Bubugao's VCD Player on Sep.5, 2001. Bubugao brought up for an administrative litigation.

After hearing the case, the court ensured that there is a lack of evidence in concluding that VCD Player and PC game machine both can play VCD disks, and there is no comparability between these two things. Furthermore, the patent document of PC game machine doesn't reveal the technique used for playing VCD disks, though the machine contains this kind of technique. Bubugao's reverse on this fact doesn't mean they accepted this contrast. Thus, there is a lack of evidence for defendant's invalid announcement, and the court ordered it be revoked.

　　　　　　The infringing case of Sina Vs. Sohu has been decided by initial court

Beijing No.2 Intermediate People's Court has made Civil Initial No.1754 court verdict on the case Sina Vs. Sohu.

The court states that Sohu's plagiarism of Sina's form of MP pictures and financial channels has already constituted an infringement of Sina's Copyright. The court ordered an immediately removing of the 388 MP pictures as well as the form of Top 100 entrepreneurs' success, all of which related with this case and whose copyrights belong to Sina. The court also ordered Sohu for a public apologize to Sina for 24 hours in Sohu's homepage and a compensation of RMB150, 000 with the litigation fee of RMB61, 813. The court rejected Sina's other litigation requests.

　　　　　Foreign software owner was compensated RMB 500,000 in the first instance

In this case, Discreet logic Inc, a Canadian corporation, the plaintiff, is the copyright owner of the FLAME software. The plaintiff found that the defendant, a culture transmission corporation installed a set of FLAME utilizing for products making and development design, so the plaintiff brought up a complaint asking for a stop of infringe, an apology and compensation for their loss of RMB 1 million approximately.

During the trial, defendant apologized for their installation of FLAME without authorization, but they also defended that because the software related in this case hadn't registered in State Intellectual Property Office，the defendant couldn't sell it according the law.

After hearing the case, Beijing No 1 Intermediate People's Court believes that considering the facts that plaintiff, a Canadian corporation and our country are both the member of the Berne Convention，thus the copyright of the plaintiff is also under the protection of Chinese law. Even if the software hasn't been sold in China, it doesn't mean that the plaintiff's copyright can be utilized for free. As the defendant had already infringed the copyright of the plaintiff, the court ordered the defendant to stop infringement and make a public apology as well as a compensation of RMB 500,000.

　　　　　The Lao Ma of Imperial City won its case of trademark & copyright infringement

On Dec 13,2002, Beijing No.1 Intermediate People's Court made decision of the Lao Ma of Imperial City Vs. the Lao Ma of Huangrong, and ruled that Huangrong failed the case and should stop their infringement immediately, and make public apology together with a compensation for RMB110, 000.

The plaintiff was founded in 1997. After registering several trademarks as "the Lao Ma of Huangcheng" and "Lao Ma Red", they used these trademarks with a slogan of "special flavor of Shichuan"in their own propaganda materials. Defendant, the Lao Ma of Huangrong, which was founded in 2001, also used the slogan of "special flavor of Shichuan"in their propaganda materials together with the trademark of "the Lao Ma of Huangrong" in their advertising light, which looks like the trademark of the Lao Ma of Huangcheng.

The court believes that the defendant's use of the other party's slogan without authorization infringed the right of the Lao Ma of Imperial City, and the prominent use of like trademark in the same field of service will lead to a misunderstanding of the consumer, thus the defendant constitute a infringement of the trademark.

　　　　　Hengsheng case on trademark has been settled in the final judgment

Recently, Beijing Higher People's Court rejected the claim of Beijing Far east Hengshen electronic computer Group.

In this case, Beijing Hensheng science and technology develop corporation registered the trademark of "Hensheng", and after initial examination the Bureau of Trademark publicized the trademark on Apr 21,1999, objection time ending in July 20,1999. In the same year, the trademark of Henshen was registered by the Weichuang electronic co., and transferred to Beijing Far east Hengshen electronic computer Group. (Hereafter referred as "The Hengshen")

The Hengshen put forward a piece of objection letter to the Bureau of Trademark, and was rejected because the objection period was overdue.

Beijing Higher People's Court concluded that according to the law of Chinese trademark administration, a trademark after initial examination can be objected in the first three month after it making public, and because the Hengshen Group was overdue, the decision of Trademark Bureau was reasonable.

Bone Power of the TianLion was not found infringement; defendant won the case in the second instance

Beijing Higher People's Court rejected the pleading of plaintiff Chengyong suing the Tianjin TianLion biology engineering Corporation and the TianLion financial development co. Now the case has been submitted to the Supreme Court of PRC.

The plaintiff of this case has been granted the patent of invention of the technological process of high-Calcium bone power, the patent number ZL92113520.3. The plaintiff believes that TianLion Biology-engineering Corporation infringed his patent through the utilizing of the plaintiff's patent technology and the sale of the high-Calcium product. Thus, the plaintiff sued for an injunction and a compensation of his financial loss of RMB 10 million.

Beijing Higher People's Court entrusted Beijing Zitu Patent Consultation Center to take an expert evaluation on the problem whether the defendant's technology has a similarity with the plaintiff's. The result of the evaluation shows that the whole technology is not same or alike.

According to the evaluation, Beijing Higher People's Court concluded as follows: the plaintiff didn't have any evidence to testify that the defendant have infringed his patent, and the result of expert evaluation also doesn't support plaintiff's pleading.

The newly established corporation selling the same product of the original company was found infringement in final court

Beijing Genyun Electron Develop Center won its case suing for infringement of copyright and anti-malfeasance competition. Beijing No.1 Intermediate People's Court ruled that defendant stop the infringement, make public apology and compensate for the plaintiff's loss of RMB 1 million. The defendants submitted the case to Beijing Higher People's Court, and the Beijing Higher People's Court rejected appeal.

Through the investigation, the court made clear that at the time Beijing Genyun Electron Develop Center was founded, defendant Yangxiaobin was a member of the Center working on the spark title generator related to the software concerned. The defendant was then appointed the deputy manager as well as an engineer who is also working on sales. According to the law of software, the software copyright of Yang's work belongs to the Center, here, the plaintiff.

During the employment period under Beijing Genyun Electron Develop Center, Yang established Beijing spark electron science and technology development corporation on Aug 10,1999. After 15 days of its foundation, Yang advertised that spark title generator was invented after 10 years research, and then began to sell spark title generators. Yang as the designer and sales of Beijing Genyun Electron Develop Center brought the software belonging to the Center to his own corporation copying for sales. Yang and Beijing Spark Electron Technology Development Corporation is against the principle of "In good faith" and infringed the plaintiff's software copyright. Meanwhile, it also forms unfair competition to Beijing Genyun Electron Develop Center.