Haworth & Lexon IP Cases Report (7)

Haworth & Lexon IP Law Newsletter
No.1, 2003 (Total:No.7) January 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
★ The Final Judgment of the case relating to Lego Toys Lego Bricks Got the Protection of Copyright Law

★ Lids of Winebottle Involved in Patent Infringement The Trial Court Held the Infringement of the Wine Plant Was Established

★ Claim for More Than RMB 20 Million Damages of the Author of the Learning Revolution Was Rejected by Beijing Higher People's Court

★The Final Decision in the Case Regarding the Right to Use the Brand "Wu Liang Cai" Was Handed Down

★Advertisement of Melatonin Involved in a Copyright Dispute Giant Biology Won the First Trial

★An other Administrative Case Regarding Dismissed Application for a Trademark

The Final Judgement of the case relating to Lego Toys Lego Bricks Got the Protection of Copyright Law

In December, 2002, Beijing Higher People's Court made the final decision in INTERLEGO AG vs. Tianjin COKO Toy Co, Ltd. relating to copyright infringement of the Lego bricks.

The Swiss company, INTERLEGO, the plaintiff in this case maintained that Tianjin COKO Toy Co, Ltd. has infringed the copyright of its Lego bricks as works of applied arts, for Tianjin COKO Toy's bricks were very similar to its products.

The defendant, Tianjin COKO Toy held that, the Lego bricks of the plaintiff were not works of applied arts, and INTERLEGO had applied patent application for the Lego bricks, therefore, they can not be protected by the copyright law.

Beijing First Intermediate People's Court held the infringement of the defendant was established, and ruled that Tianjin COKO Toy must stop manufacturing and selling the infringing products, must pay RMB 50,000 damages to INTERLEGO and publish an apology. Tianjin COKO and INTERLEGO did not satisfy with the decision and appealed to the appellate court.

Beijing High People's Court cognized 50 pieces among the 53 pieces of the Lego bricks submitted to the court by the plaintiff were qualified as works of applied arts. The court held that INTERLEGO's application for registered designs could not exclude the protection of copyright law. However, for the artistic creation of the Lego bricks involved in this case had a certain distance from typical works of applied arts, the trial court did not support the claim of the plaintiff completely with the consideration of balance.

Lids of Winebottle Involved in Patent Infringement The Trial Court Held the Infringement of the Wine Plant Was Established

In Nov. 21, 2002, the trial court, Shanghai First Intermediate People's Court made the decision in Shanghai Jia Xiang Industrial Development Co, Ltd. vs. Anhui Kou Zi Group Corporation & Shanghai Carhua Supermarket Ltd. The court ruled that the two defendants must stop infringing the 97306642.3 registered design possessed by the plaintiff, and Anhui Kou Zi Group Co. must publish an apology in Hua Xia Jiu Bao and pay RMB 100,000 damages to the plaintiff in 10 days since the decision came into effect, and Shanghai Jia Xiang Industrial Development Co, Ltd. must pay RMB 20.000 damages to the plaintiff in 10 days since the decision came into effect.
The first focus of this dispute case was whether the wine plant was the user or the manufacturer of the packing of the wine products.

The plaintiff held that, though the lids involved were manufactured by someone out of the case, the contract which the defendant entered into specified that, the production must conform to the sample approved by the both parties and the lids must be suitable for the special winebottles of the defendant, and the defendant's name and trademark were stampled on the lids. Based on all the facts above, the plaintiff maintained that, the relationship between the two parties was entrusted processing, rather than the relation between the seller and the buyer. Therefore, the defendant, Kou Zi Group Co. should be the manufacturer of the lids and should bear the obigation for its subjective fault to neglect the responsibility as the manufacturer, to search out whether the trademark would infringe other's patent before manufacturing new products. The court supported the plaintiff's opinion.
The second focus lay in the questions that, whether or not the seller, assured by the plant that the products supplied were conformable to related regulations of intellectual property law, should bear the obligation when the products were involved in patent infringement, and whether or not the second defendant, Shanghai Carhua Supermarket Ltd. can release its responsibility, according to the contract entered into with the supplier, which specified that the whole responsibility of intellectual property infringement should be born by the supplier. Generally speaking, the seller, innocent of the infringement, can release the obligation of compensation with the evidence of the lawful source of the products, but the defendant in this case must bear the obligation for its subjective fault to continue the sale of the products involved, after taking part in the lawsuit, informed of the infringement.

Claim for More Than RMB 20 Million Damages of the Author of the Learning Revolution Was Rejected by Beijing High People's Court

On Dec. 10, 2002, the trial court, Beijing High People's Court made the decision in Gordon Dryden (New Zealand) & Jeannette Vos (U.S.) vs. Shanghai Joint Publishing, the publisher of the Learning Revolution (amended edition) & Beijing Clever Educational Software Technology Co, the distributior. The court rejected the plaintiff's claim for more than RMB 20 Million Damages.

The court held that, in November, 1996, Shanghai Joint Publishing was entrusted by Hongkong Xin Ya Culture Co, Ltd to publish and distribute the Learning Revolution. On his own initiative, Gordon Dryden suggested partly amending the content of the book and offered his amendment before the publication and after it.

In June, 1998, Shanghai Joint Publishing entrusted Beijing Clever Educational Software Technology Co. to be the exclusive distributor of the Learning Revolution (amended edition). In August, Shanghai Joint Publishing and Hongkong Xin Ya Culture Co, Ltd. entered into an agreement that Shanghai Joint Publishing bought off the copyright of the Learning Revolution (simplified Chinese edition) by paying RMB 400,000 taxation on the book. Since it, Gordon Dryden had been present in the press meetings and signing sale of Beijing Clever Educational Software Technology Co. for three times.

The court held that, having learnt of Shanghai Joint Publishing's publication of the Learning Revolution (Chinese edition), Gordon Dryden suggested the amendment for several times. After the publication, Gordon Dryden had taken part in relevant activities and expressed his gratefulness for the work of the defendant. All of the facts ensured the court that Gordon Dryden and Jeannette Vos had entrusted Xin Ya Culture Co, Ltd. to allow Shanghai Joint Publishing to use their amendment. Therefore, both Shanghai Joint Publishing' publication and Beijing Clever's distribution conformed to the law. Short of evidence, the plaintiff's complaints was not supported and the claim was rejected.

The Final Decision in the Case Regarding the Right to Use the Brand" Wu Liang Cai" Was Handed Down

In December, 2002, Shanghai High People's Court made the final decision in the case regarding the right to use the brand " Wu Liang Cai ". The claim for this right of the 5th and 6th generation of Wu Liangcai's offspring was not supported by the court.

The trial court, Shanghai Second Intermediate People's Court held that, the offspring of Wu Liangcai had obtained certain benefits, as the defendant Shanghai San Lian Group Co, Ltd. was transformed from the corporation operated by Wu Liangcai's 5th generation of offspring, at the moment of " co-management of private persons and the state " in 1956. The court also held that the brand " Wu Liang Cai " had been apart from Wu Liangcai himself, and had become the name of the corporation and even a part of the whole corporation. The name of a corporation is usually transfered following the transfer of the whole corporation.

The plaintiff could not prove the reservation of the corporation's name including the brand " Wu Liang Cai " in 1956's co-management, and neither used this brand nor put forward any objection to the defendant on the right to use the brand before March, 2001. Therefore, the court did not support the plaintiff's claim which was short of legal evidence. The plaintiff did not satisfy with the decision and appealed to the appellate court. Shanghai High People's Court did not supported the plaintiff's reason for appeal and made the decision above.

Advertisement of Melatonin Involved in a Copyright Dispute Giant Biology Won the First Trial

Recently, the trial court, Beijing Second Intermediate People's Court made the decision in Han Jianhua vs. Shanghai Giant Biology Co, Ltd. & Beijing Daily Group relating to copyright infringement of a photo used in the advertisement of Melatonin. The court rejected the claim of the plaintiff.

In April, 2002, Han Jianhua, asked by a certain art and advertising center, took some photos for Melatonin and was paid RMB 1,000. Since 2001, Beijing Daily had published, for totally twelve times, the advertisement of " Melatonin, the Best Gift " consisting of words and a photo chosen from those that Han Jianhua took.
The court held that, in accordance with related regulations, Han Jianhua should enjoy the copyright of the photo, for no evident agreement ragarding the copyright was reached, when Han was entrusted to take the photo involved in this dispute. The payment for him should be considered as the realization of his creation's value and also considered as the payment for his creation entrusted by Shanghai Giant Biology. Based on this fact, Shanghai Giant Biology had possessed the right to use the photo in the range of the advertisement of Melatonin and no other promise of Han or other payment for Han was needed. There was no infringement for Shanghai Giant Biology to use the photo in the range specified by entrusted creation, and there was no infringement for Beijing Daily to publish the advertisement,either. For lack of evidence, Han Jianhua's claim was not supported by the court.

An other Administrative Case Regarding Dismissed Application For a Trademark

On Dec. 5th, 2002, the final decision was made by Beijing High People's Court in Chengdu YASHEN Chemical Co. vs. the Trademark Review and Adjudication Board (TRAB) under the State Administrative for Industry and Commerce (SAIC). The court dismissed the complaints of the plaintiff. This is an other administrative case regarding dismissed application for a trademark.

In 1998, YASHEN, the plaintiff filed an application for registration for trademark of the Chinese characters WEIBAI, which was dismissed by the SAIC for it was very simliar to the trademark WEIBAI WIPP EXPRESS registered by the German Henkel Co.

Then, YASHEN applied for review and adjudication to the TRAB. In September, 2001, the TRAB made the review decision and dismissed the application again. The final determination was sent to YASHEN by registered mail. In April, 2002, Chengdu's local post office returned the mail as no one had come to claim it. In May, YASHEN received this determination after the TRAB sent it again.

According to the amended trademark law carried out in Dec.1, 2001, the final adjudication authority of the TRAB for tradement cases was abolished and the interested parties were allowed to apply for judicial review. Therefore, YASHEN brought a lawsuit against the TRAB.

The appellate court held that, in accordance with Judicial Interpretations of the Supreme People's Court on Jurisdiction over Trademark Dispute Cases and Application of the Amended Trademark Law, the interested parties had no right to bring an administrative lawsuit, if the TRAB's decision was made prior to the proclamation of the amended trademark law. Though YASHEN received the determination after the new law had become effective, the determination was actually made and sent by registered mail before the proclamation. The trial court should not have accepted this lawsuit. Therefore, the appellate court reversed the original decision and rejected YASHEN's appeal.