Haworth & Lexon IP Cases Report (1)

No.1, 2002 (Total:No.1) July 10th, 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★ Use the prominent trademark as trade name; the court confirm that it is unfair competition ★ "WULIANGYE.COM" case has been decided by Asian Domain Name Dispute Resolution Center as the first case finished ★ Hubing & Hu Xuanhua Vs. Ericsson & Alcatel for patent infringement, and the initial court overruled the plaintiff's claims on May 16th★ The Case "Hu Xuanhua Vs. Motorola for patent infringement" is making headway★ The court in Tianjin firstly issued a preliminary injunction pursuant to Patent Law after amendment★ In the dispute of computer software's copyright the plaintiff got compensation for RMB 70,000 ★ In the dispute of EPR service fields, the plaintiff was returned RMB 7 million after conciliation Use the prominent trademark as trade name; the court confirm that it is unfair competition

The plaintiff of this case, HCG (China) LTD CO., wholly invested by Taiwan Hocheng Corporation, established in August 13th, 1993, is the sole permission trademark holder of the Chinese "HECHENG" and the English "HCG" in China. The defendant, Shanghai Hecheng Sanitary products LTD CO., is established in 2001.The cause of this case is unfair competition.

After reviewing the court ensured that the plaintiff had the right to enjoin others from utilizing trademark "HECHENG". Established after HCG (China) LTD CO., the defendant should acknowledge the plaintiff's preemptive right. Furthermore, within the same manufacturing fields and the same words as the name of its enterprise, the defendant has the attempt to thumb, which will lead the consumers to have such misunderstanding that the plaintiff and the defendant have certain connections and the products are from the same source. Such situation, adequate to confuse the consumer with the market subjects as well as the sources of goods, is a kind of unfair competition. Consequently, the court ordered the defendant to stop using the word "HECHENG" as the trade name any more.

"WULIANGYE.COM" case has been decided by Asian Domain Name Dispute Resolution Center as the first case finished

Sichuan Yibin Wuliangye Group brought the suit to ADNDRC Beijing office on April 25th, 2002. Canada Yibin golden net Technology LTD CO., the Respondent of this case, is involved in the dispute of genetic top-level domain name "wuliangye.com". The case was accepted on April 26th, and the process was started from April 27th.

With a partner of a certain law firm in Hong Kong as the sole panelist of this case, a decision was made that Sichuan Yibin Wuliangye won the case. The main reasons are as followings: the domain name "WULIANGYE.COM", held by Canada Yibin golden net Technology LTD CO., is identical with the registered trademark "WULIANGYE" owned by Sichuan Yibin Wuliangye Group; the latter corporation haven't legal rights and benefit on the domain name; furthermore, it has the malice of registering and utilizing the domain name. Thus the domain name "WULIANGYE.COM" is ordered to transfer to the complainant.

Appointed by ICANN on December 3rd, 2001, Asian Domain Name Dispute Resolution Center began to file cases from February 28th, 2002. ADNDRC is set up by CIETAC and HKIAC ranked as the fourth domain dispute provider in the world while as the first and only one in Asia.Hubing & Hu Xuanhua Vs. Ericsson & Alcatel for patent infringement, and the initial court overruled the plaintiff's claims on May 16th

The Second Intermediate People's Court finished the case, Hubing & Hu Xuanhua Vs. Ericsson & Alcatel for infringing patent right, on May 16th. The court rejected the claims by plaintiffs, Hubing and Hu Xuanhua.

The focus of this case is as following: whether the stokes of Chinese characters used in the above 2 companies' mobile phone message service infringe the patent held by Hubing and Hu Xuahua or not. (Above patent is called "keyboard locations and the screening information of entering stokes")

According to the equivalence principles in confirming patent infringement, the judge should compare the technology project used in the Alcatel and Erisson's subjects that are accused of infringing patent with the relative patent project. The objective is to find that if the methods, functions, result as well as the technological characteristic are identical or the same. If the answer is yes, then the utilized technology is developed on the basis of involving patent.

Although both parties in this case are in the same technology field, the resolutions, functions along with the results are different from each other. The technology project used in the accused subjects is not identical with the necessary technological characteristics of involving patent. On the other hand, the requirement of basically the same method, function and result has not been met. As a result, the court didn't support the plaintiff's claims.

The case "Hu Xuanhua Vs. Motorola for patent infringement" is making headway

Beijing People's High Court made a decision for the case, Hu Xuanhua & Dalian HanPu Technology LTD CO. Vs Motorola (China) Electronics LTD. for infringing patent, after hearing the case for nearly 2 years and collecting the advices from regarding legal experts on Mat 29th. It was ordered that 13 kinds of mobile phone's account books of Motorola (China) Electronics LTD. be sealed up in the judgment. Until now it is the first case that made a decision to close down the defendant's account books in Chinese citizens and Chinese enterprises Vs Multinational Companies. The above decision was delivered to the defendant on May 29th, and became valid immediately.

The court in Tianjin firstly issued a preliminary injunction pursuant to Patent Law after amendment

The plaintiff of this case is Dahu (Tianjin) Fresh Fruit Juice LTD CO., and the defendant is Tianjin Daheng Group LTD CO. The cause of this case is patent infringement dispute.

It is stated by the plaintiff that the bottle covers of Brazil orange juice (1 liter) and fresh orange juice (2 liters) along with the knob of juice bottle sold in Tianjin Tian Huanjia international trade LTD supermarket, which are the products of the defendant's, are identical with the plaintiff's products in the same field. However the above things' designs patents belongs to the plaintiff, who applied with patent in 2001 and then was approved by the Intellectual property Bureau. Therefore the defendant behavior is a kind of infringement act.

When the plaintiff brought the suit to the court, meanwhile he also asked the court to stop the defendant's infringement act immediately. Pursuant to the " Several Provisions of Supreme People's Court for the Application of Law to stopping Infringement of Patent Right Before Instituting Legal Proceedings", the court made a decision that the defendant immediately stop selling and manufacturing the regarding products. Furthermore, the court published notice that all the relative parties cease selling the relevant products listed in the decision via the news medias.

In the dispute of computer software's copyright the plaintiff got compensation for RMB 70,000

The plaintiff in this case is Empire Technology LTD CO., while the defendant is Shanghai San Rui LTD CO. One of the plaintiff's employees quit his job and leapt to the defendant's company. Before long defendant became to sell software "SR2000", which is quite familiar with "CHRW4", who's copyright belongs to the plaintiff. Therefore, the plaintiff brought the suit to the court against the defendant for infringing software copyright

After reviewing and examination, the court believed that there are identities in the 2 software's objective program, and there are many same mistakes occurred in both of them. However, the defendant refused to offer the source code for the court to make a judgment. Consequently Shanghai the Second Intermediate People's Court decided to support the plaintiff's claims according to the principles of burdening prove set forth in Civil Procedural Law. In another word, the "SR2000" of San Rui LTD CO is infringement software based on copying or partially copying and revising "DHRW4" which belongs to the plaintiff. The defendant is ordered to compensate the plaintiff for RMB 70,000.

In this case, Shanghai the Second Intermediate People's Court used the method of conjecture to confirm that the defendant should take the responsibility of tort. While judging a case, the court ensures the existence of a certain fact derived from a certain fact that has been known, relying on the law or experience rules. That is called the method of conjecture. "Some provisions on evidences in civil litigation" issued by the Supreme People's Court has included such method, and the above rules has entered into enforcement since April 1st, 2002. It is provided that if there is evidence indicating that the regarding party who have the evidence reject to offer it, and the above evidence will be unfavorable to him, the court can decide that the claims are supportable.

In the dispute of EPR service fields, the plaintiff was returned RMB 7 million after conciliation

The plaintiff of this case is Beijing Sanlu factory who produces "Dabao", and the defendant is former Legend Advance System Company. The above parties entered into EPR contract in March 1998. As the chief server, LDC Advance System Company is in charge of the system enforcement including the software, hardware as well as consultancy. The plaintiff was unsatisfied with the defendant's products along with the service during the contract period, and plaintiff has paid more than 1.4 million yuan to the defendant. Hence Beijing Sanlu factory brought the suit to the court after many times' negotiations. In the early 2002 both parties reached an agreement that the defendant paid RMB 2 million to the plaintiff, and the plaintiff returned the hardware as well as the software of the computer information system.