Newsletter: Chinese IP Information
- China's PCT International Patent Applications Rank First in the World
- Rabbit Chair Looks Similar, Giovanni Came to China to Defend
- The Supreme Court Revoked the trademark "乔丹" and Its Picture
- Handling of The Case Where Patentee Abandons the Terminated Patent Right in the Invalidation
China's PCT International Patent Applications Rank First in the World
On April 7, the World Intellectual Property Organization (WIPO) held a press conference in Geneva, Switzerland, announcing 2019 international registration data for patents, trademarks and industrial designs. It is shown in the data that in 2019, 58.99 million patent applications were submitted from China through the World Intellectual Property Organization's Patent Cooperation Treaty (PCT), which surpassed the United States (57.84 million) and jumped to the first place, becoming the largest number of international patent applications country.
It is showed in the data that in 2019, various global intellectual property data reached a new high. In 2019, the number of international patent applications filed through the PCT route was 26.58 million, with a growth rate of 5.2%. The number of international trademark applications filed through the Madrid system was 64.44 million, with a growth rate of 5.7%. The number of design applications for industrial products filed through the Hague system. was 21,807, with a growth rate of 10.4%. Among them, the top five countries for PCT international patent applications are: China (58.99 million), United States (57.84 million), Japan (52.66 million), Germany (19.353 million) and South Korea (19.085 million); The top five countries for filing international trademark applications through the Madrid system are: the United States (10.08 million), Germany (7700), China (6339), France (4437) and Switzerland (3729); The top five countries for the number of submitted designs through the Hague system are: Germany (4487), South Korea (2736), Switzerland (2178), Italy (1994) and the Netherlands (1376).
In addition, it is shown that in 2019, China's Huawei Technologies Co., Ltd. ranked first with 4,411 PCT international patent applications. Behind are Japan ’s Mitsubishi Electric Corporation (2661 cases), South Korea ’s Samsung Electronics (2334 cases), American Qualcomm (2127 cases) and China Guangdong Oppo Mobile Communications Co., Ltd. (1927 cases). The applicants include 4 Chinese companies. In terms of universities, the University of California ranked first with 470 international patent applications, Tsinghua University (265) ranked second, followed by Shenzhen University (247), Massachusetts Institute of Technology (230) and South China University of Technology (164). Among the top ten universities, 5 are from the United States, 4 are from China, and 1 is from South Korea.
Rabbit Chair Looks Similar, Giovanni Came to China to Defend
Recently, the Guangzhou Intellectual Property Court made a decision about Dongguan Boyuan Roto molding Technology Co., Ltd. (hereinafter referred to as Boyuan Company) for infringement of design patent rights of Giovannoni Design SRL (hereinafter referred to as Giovannoni Design SRL). The first-instance judgment was made in the dispute case, which determined that the design of the rabbit-shaped product produced and sold by Boyuan Company and the design patent right entitled "CHAIRS" by Giovanni (the patent number: ZL201530388869.3, hereinafter referred to as involved (Patent) constitutes similarity, infringing Giovannoni’s patent rights, ordering Boyuan to stop infringement and compensating Giovannoni’s economic losses, etc., totaling 80,000 CNY. After the judgment of the first instance, Boyuan Company has filed an appeal.
The Guangzhou Intellectual Property Court conducted a public trial on whether the design of the alleged infringing product fell within the protection scope of the patent rights involved in the case and whether the behavior of Boyuan Company constituted patent infringement.
Regarding Boyuan’s claim that the alleged infringing product is a lighting product, which is different from the patented product involved in the case, the Guangzhou Intellectual Property Court held that the alleged infringing product was named Luminous Rabbit Stool on Boyuan’s online store, and was on the official website as "LED luminous bar chair and bar stool". The webpage has a product display of the infringing product used as a chair. The size of the infringing product indicted can meet the conditions for use as a chair. Therefore, the alleged infringing product is the same as the patented product involved in the case and can be compared for infringement.
On the issue of whether the design of the infringed product falls within the scope of protection of the patent rights involved in the case, the Guangzhou Intellectual Property Court held that comparing the design of the infringed product with the patent involved in the case, the two are generally long-eared rabbits in shape. Shape, proportion of limbs and other specific design features are the same. The difference between the two is that from the bottom view, the bottom of the alleged infringing product is concave in the middle and has a circular power seat design; while the bottom of the patent design involved is an oval ring design with no power supply design. After comparison, the above differences are relatively small, and are not easily observed by ordinary consumers. There is no substantial difference in the overall visual effects of the two, and they are similar. Therefore, the design of the infringing product infringed falls into the protection scope of the patent rights involved in the case.
After comprehensively considering such factors as the type of patent involved, the popularity of the patented product, the nature and circumstances of the infringement by Boyuan, and the sales price of the product, the court determined that Boyuan should compensate Giovannoni for economic losses and reasonable expenses of 80,000 CNY.
From PEOPLE.CN 2020.4.28
The Supreme Court Revoked the trademark "乔丹" and Its Picture
Recently, the Supreme People’s Court (hereinafter referred to as the Supreme Court) made a retrial decision on the administrative dispute over trademark disputes of “Jordan” and its picture, and found that Jordan Sports Co., Ltd. (hereinafter referred to as Jordan Sports Company) knew that Michael Jeffrey Jordan (hereinafter referred to as Michael Jordan) has a long-term and widespread reputation in China, and still uses "Jordan" to apply for the registration of disputed trademarks, which may easily lead the relevant public to mistakenly believe that the products marked with the disputed trademark have specific links with Michael Jordan, such as endorsements and licenses, which damages Michael Jordan’s prior name right, the judgment revoked the first-instance, second-instance judgment and the defendant ’s decision. So far, this high-profile case ended with the trapeze Jordan victory.
The Supreme Court believes that before the filing date of the disputed trademark in this case, until 2015, Michael Jordan had a high reputation in China, and its reputation has not only been limited to the field of basketball, but has become a high-profile public figures. Jordan Sports Company knows that Michael Jordan has a long-term and widespread reputation in China, and still uses "Jordan" to apply for the registration of disputed trademarks, which may easily lead the relevant public to mistakenly believe that the products marked with the disputed trademark have specific links with Michael Jordan, such as endorsements and licensing, which damaged Michael Jordan's prior name rights. However, on the other hand, the human figure in the graphic part of the disputed trademark logo is only a black human-shaped silhouette. Apart from the body outline, it does not contain any personal characteristics related to Michael Jordan. In addition, Michael Jordan does not have other legal rights regarding the actions corresponding to the logo itself, and other natural persons can also make the same or similar actions. Therefore, Michael Jordan cannot enjoy the right of portrait with respect to the logo, and his claim that the registration of the disputed trademark damages his portrait right cannot be established.
Handling of the Case Where Patentee Abandons the Terminated Patent Right in the Invalidation
The requester filed a request for invalidation of the patent right that has expired due to arrears of payment. In the invalidation, the patentee submitted a reponse requesting that “the patent right be abandoned from the filing date”. According to the provisions of the current Patent Law and its implementation rules and the "Patent Examination Guide", the patentee who voluntarily abandons his patent right can only be accepted and announced before the patent right is terminated. The Department of Preliminary Examination of the Bureau issued a declaration of abandonment of patent rights to the patentee as deemed not to have been filed, on the grounds that the patent right involved in the case was terminated due to arrears. Although the patentee has filed a declaration of abandonment of patent right from the filing date, the statement has not been announced through effective legal procedures and the patentee’s claims cannot be realized. In fact, there may still be disputes over a patent right that is valid between the application date and the termination date. If the patentee "declaration of abandonment of patent right from the application date" cannot publicize the public through effective legal channels, it is still existed. It is still possible that any party can file a request for invalidation of the patent right.
In the invalidation procedure, if the patentee proposes to abandon the patent right from the filing date, a decision shall be made to declare all the patent rights invalid according to the party’s disposal principle, which shall be legally justified. If the patentee abandons part of the patent right by reducing its protection scope or giving up part of the claims, the part of the patent right deemed to be abandoned by the patentee does not comply with the provisions of the Patent Law and its implementing rules from the beginning, and the requester is relieved of the burden of proof for the claim to invalidate this part of the patent right. The Reexamination and Invalidation Department can directly declare the part of the patent right invalid based on the party’s disposal principle, so as to in fact realize the law that the patentee "abandon part of the patent right from the filing date" as a result of.
Therefore, in response to the patentee's declaration of “abandoning the patent right from the filing date”, the decision of the Reexamination and Invalidation Department to declare all patent rights invalid is reasonable both in terms of jurisprudence and social effects.