Haworth & Lexon IP Cases Report (9)

Haworth & Lexon IP Law NewsletterNo.3, 2003 (Total:No.9) April 5th, 2003Edited 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 case of infringing characterized name, package, and decoration of well-known commodity. The court upheld infringement compensation in final judgment.★The confirming of earlier stage technical data in the creation process of computer software, case reference of Shanghai court.★HONGHE Trademark Case. Initial court supported the adjudication of Trademark Review and Adjudication Board.★Initisl court upheld the invalidation decision relating to 'Jinlong Fish' patent right for a design.★Infringement of DONGFENG Trademark. Dongfeng Lubricating Oil Corp. acquired compensation of RMB 150,000 Yuan.

The case of infringing characterized name, package, and decoration of well-known commodity. The court upheld infringement compensation in final judgment.

The plaintiff the Nanning Zhengda Animal Co., Ltd. accused the defendant the Nanning Shenwang Forage Co., Ltd. infringed characterized name, package, decoration of well-known commodity. Guangxi Zhuang Autonomous Region Higher People's Court made the final judgment on 16th March 2003 as to the following: the defendant must stop producing and using the commodity with characterized name, package and decoration similar to the plaintiff's commodity. And the defendant must stop selling the forage production with the particular decoration as well as pay RMB 60000 Yuan as its economic loss.

One of the case's focuses was whether the action of the appellant Shenwang Co. was unfair competition. The court held that taking unfair way to do business such as using characterized name, package, and decoration of well-known commodity without authorization to interfere the interests of competitive opponents and consumers was unfair competition action.

When establishing well-known commodities, the commodity should have high reputation in relating market. On the other hand, according to the documents of State Administration for Industry and Commerce, if the commodity's name, package and decoration have already been used without authorization and will mislead the buyers, the commodity can be established of well-known commodity. And the relating proof indicated that the plaintiff's commodities had high reputation in Guangxi district, and the meaning of their decoration was clear. So Zhengda Corp. had exclusive patent right for the inventive intellectual achievement.

Meanwhile, the court held that the 'usage' in the Unfair Competition Law not only indicated the usage of the characterized package and decoration of the well-known commodity in distribution, but also meant the usage in the process of production. But it didn't include production only for individual purpose and not for business purpose.

The defendant was fully aware that the plaintiff's commodity's name, package and decoration were the characters of well-known commodity, but the defendant produced large amount of imitating packages and used them as well as made preparation for further distribution and usage. The defendants had encroached on the plaintiff's exclusive rights of well-known commodity's name, package and decoration, and infringed the plaintiff's commercial and commodity reputation as well as the normal usage. So the defendant's action was action of unfair competition.

According to the Unfair Competition Law, if the operator infringes other operators' right and makes damages because of unfair competition action, the operator must pay damages. The damages here include economic and spiritual loss. The defendant's appeal reason that only economic damage would result in compensation was mistaken understanding of the Unfair Competition Law. The court didn't support it.

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The confirming of earlier stage technical data in the creation process of computer software, case reference of Shanghai court.

The plaintiff was Taian City Structure Design Institution. The defendant was Shanghai Guangyun Technical Development Ltd. Corp and Liu Shoukui.The cause of the case was disputes of computer software copyright. The Shanghai Municipal No.2 Intermediate People's Court decided that the defendant must stop using the two books of computer technical data that the plaintiff had copyright and should make an apology as well as eliminate effects of the act. The court rejected other litigation claims.In the case, the defendant Liu Shoukui was the plaintiff's employee, and he had finished market research and software design since May 1999.Then Liu Shoukui signed cooperative developing agreement with the defendant Guangyun Corp. on 10th June 1999.He exploited 'Guangyun project calculating software' and succeeded. Guangyun Corp. applied copyright registration for the 'Guangyun project calculating software' and acquired registration certification of the computer software. So the plaintiff initiated proceedings against the two defendants.

The trial court held that Liu Shoukui had done some development work before employed by Guangyun.As for the four books that Liu Shoukui provided to the plaintiff, including <Project Amount Calculation-Calculating Content>,<The First Part: Work Process, Control Attributes and Definition>,<The Second Part: Establishment and Modifying of Models>,<The Third Part: Pictures and Project Data>,the author Liu Shoukui and the plaintiff all considered them works created in the course of employment. So the court held that the plaintiff enjoyed copyright of the four software technical data that the plaintiff provided.

Analyzing the content of the four software technical data that the plaintiff provided, although the software data were within the brief design process, the software data had the characters of creative work, and should be protected as 'written works' in copyright law. After comparing, the <Project Amount Calculating Software Designing Directions- Calculation.doc> and <Attributes and Definition Program Designing Directions-Attributes and Definition.doc>that Liu Shoukui provided for Guangyun corp. were similar to the large part of the two books of software design that the plaintiff enjoyed patent right. So the court considered that without the plaintiff's authorization, that Guangyun Corp. allowed Liu Shoukui to copy the plaintiff's works that never published was action of copying. Although Guangyun corp. stated they excluded the works that Liu Shoukui provided from the documents, the two defendants must take the legal responsibility, because the plaintiff didn't develop the software independently, and in the process of development, Guangyun Corp. not only employed Liu Shoukui, but also employed program designer and other workers, and put into relating expense.

At the same time, as program language was different from the design language used in the four books of software technical data that the plaintiff enjoyed patent right. According to the basic factors of copyright infringement judgment, the plaintiff denied Guangyun corp.'s copyright in all the software only on the basis of the four books of brief software data lacked of factual and legal base, so the court would not support them.

The case involved how to confirm the nature of software data in earlier stage and how to view the confines of copyright protection in computer case and the problem of stage dividing from creating new meanings to expressing. If you need detailed information, please look up the website of the court or call us.

HONGHE Trademark Case. Initial court supported the adjudication of Trademark Review and Adjudication Board.

The plaintiff was Yunnan Honghe Guangming Co., Ltd. The defendant was Trademark Review and Adjudication Board of the State Administration for Industry and Commerce. The third party is Jinan Honghe Beverage Preparation Business. Dissatisfied with the adjudication of upholding 'HONGHE' trademark registration that Trademark Review and Adjudication Board made in 12th September 2002,the plaintiff instituted proceedings in the Beijing Municipal No.1 Intermediate People's Court. After hearing the case, the court made decision on 12th February 2003,and maintained the adjudication made by the trademark Review and Adjudication Board.

After hearing the case, the court made judgment as flowing:1. According to the authorized publications, Honghe had a meaning other than geographic name and can be used as trademark. At the same time, under the Trademark Law, a geographic name can be registered as long as it has any other meaning, without requiring that the other meaning be an official name of something. Therefore, even if 'HONGHE' is not the official name of a river in the territory of Vietnam, it should be determined it has a meaning other than the geographic name for an administrative division above the country level as long as a part of the public have the idea of naming the river 'HONGHE'.2. 'HONGHE' trademark registration does not prevent anyone else from exercising the right to use it to indicate a factory, the site of a factory or a place of origin lawfully on any identical or similar goods. His doing so does not constitute an infringement as long as he does not use 'HONGHE' saliently.3. As administrative litigation is the procedure to review the legality of the concrete administrative action made by administrative department and the adjudication made by Trademark Review and Adjudication Board aims at the reverse claims. In the reverse application, the plaintiff didn't provide the reason that 'HONGHE' trademark infringe other's right and the Trademark Review and Adjudication Board didn't review the reason, so it was out of confines of the case.

All in all, the court held that the plaintiff Honghe Co. Ltd. 's litigation claims lacked of factual and legal bases, so the court would not support them.

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Initial court upheld the invalidation decision relating to 'Jinlong Fish' patent right for a design.

The plaintiff was Guangzhou Nianfeng food Corp., Ltd. The defendant was the Patent Reexamination Board of the State Intellectual Property Office. The third person was Brother Guo Food and Oil Ltd. The cause of the case was patent invalidation administrative disputes. The trial court upheld the invalidation claims that the Patent Reexamination Board made.

The plaintiff applied for the design patent with the name of 'BIAOTIE' on 1st July 1997 and was ratified. In 1999,the third person brother Guo Food and Oil Ltd. made patent invalidation request to the defendant the Patent Reexamination Board. The Patent Reexamination Board made the No.4081 invalidation claim on 17th December 2001.So the plaintiff instituted proceedings in the Beijing Municipal No.1 Intermediate People's Court.

After hearing the case, the court held that the symbol used by Well-known 'Jinlong Fish' food oil was similar to the plaintiff's patent. Only the minor place such as word count and the shape of the fish picture were different. Observed and judged wholly, the two designs were the same basically and would mislead the consumers, so the two were the similar designs. Under the Patent Law, the plaintiff's patent should be claimed invalidation.

Infringement of DONGFENG Trademark. Dongfeng Lubricating Oil Corp. acquired compensation of RMB 150,000 Yuan.

The plaintiff was Beijing Dongfeng lubricating oil Corp. The defendant was Beijing Siqing Environmental and Hygienic Project Corp. Ltd. and Esso (Zhejiang) Corp. Ltd. The nature of the case is trademark right disputes. Recently, the trial court the Beijing Municipal No.2 Intermediate People's Court decided as fllowing: the defendant Esso (Zhejiang) Corp. Ltd. must cease the infringement and make an apology publicly as well as compensated for RMB 150000 Yuan.

The plaintiff owned 'DONGFENG' word trademark. In June 2002,the plaintiff found the machine oil tub sold by Siqing Corp. were indicated that 'Sold by Shiyan Dongfeng auto oil Corp. Ltd., and produced with Esso-Dongfeng. Produced by Esso (Zhejiang) Corp. Ltd. (Affiliation of EXXON Group)',and was indicated 'two swallows' picture trademark and character 'DONGFEN'. For the reason, Dongfeng lubricating oil Corp. saccused the two defendants used 'Dongfeng' written trademark without authorization and sold the oil with the trademark, so the defendants had infringed the plaintiff's registered trademark exclusive right.

After hearing the case, the Beijing Municipal No.2 Intermediate People's Court held that although the shape of character used on the defendant's involving commodities were different from that of the registered trademark the plaintiff claimed for right, the character and reading pronunciation are the same with that of the plaintiff's registered trademark. So the two were similar registered trademarks. The plaintiff's registered trademark's ratified commodity was the forth oil production, which was the similar product to the special auto engine lubricating oil that produced by the defendant. So Esso's actions of producing involving commodity infringed the plaintiff's registered trademark exclusive rights and should take legal responsibility. Although the defendant Siqing Environmental and Hygienic Corp. sold the involving commodity, they weren't aware that the commodity had infringed trademark exclusive rights and they acquired the commodity lawfully, so they shouldn't take the compensation responsibility.