Wednesday, December 16, 2020
On December 15, 2020, the China National Intellectual Property Administration (CNIPA) released the First Batch of Guiding Cases for Administrative Enforcement of Intellectual Property Rights (第一批知识产权行政执法指导案例). Administrative enforcement enables rights holders in China to petition administrative agencies to enforce their rights including issuing injunctions, seizing and destroying infringing goods and manufacturing equipment, and imposing fines on infringers. The First Batch includes 5 guiding cases for administrative enforcement of patents, trademarks, and integrated circuit layout designs.
Shanghai Zhangyuan Information Technology Co., Ltd. is a former franchise service provider of Dun & Bradstreet International Co., Ltd. of the United States. Zhangyuan knowing that “Deng Baishi” is a registered trademark of D&B, still signed a Baidu search engine advertising contract using that trademark as a search term. Starting from December 13, 2018, the Baidu search results will be marked with “【官】Deng Baishi code_Internationally recognized_ Global General Enterprise Coding System” to promote its Dun & Bradstreet coding application service. Through Baidu search, 8 companies mistakenly believed that the Zhangyuan was authorized by Dun & Bradstreet International Co., Ltd., and entrusted Zhangyuan to apply for Dun & Bradstreet’s coding. At the time of the case, the parties had collected a total of 179,100 yuan for the agency service fees of the eight companies mentioned above.
In the process of engaging in business information consultation and other services, the Zhangyuan used the same or similar words as the registered trademark of Dun & Bradstreet International Co., Ltd. to mislead the relevant public, which violates the provisions of Article 57 (2) of the Trademark Law. In accordance with the provisions of Article 60 of the Trademark Law, the law enforcement agency made an administrative penalty decision against Zhangyuan in accordance with the law, ordered Zhangyuan to stop the infringement immediately and imposed a fine of 537,700 yuan.
Hongyuan Lide Trading Co., Ltd. sold shoes with infringing marks for a total of 6,144,646. 64 RMB. In additional, there were 16,277 pairs of shoes in stock. Calculating based on the actual average sales price of the shoes sold by the parties at 307.80 RMB, the inventory was worth 5,010,060.60 RMB Illegal business revenue was determined to therefore total 11,154,707.24 RMB. Accordingly, the Fengtai branch ordered Hongyuan to stop the infringement immediately in accordance with the provisions of Article 60, Paragraph 2 of the Trademark Law, confiscated 6,687 pairs of infringing shoes and imposed a fine of 55,773,536.20 RMB.
In this case, there was subjective intent to infringe. The supplier involved had applied to the Trademark Office for a trademark similar to the right holder’s trademark and was rejected. It nonetheless used a mark similar to the right holder’s trademark on the same goods.
60 rolls of infringing waterproofing membranes were purchased for use in a construction project but not actually used. The act of a party purchasing infringing construction materials and preparing to use them in the contracted project is deemed to be a sales act, and constitutes an act of infringement stipulated in Article 57 (3) of the Trademark Law. The illegal subjective intention is obvious, and the illegal nature of the transfer or exchange of the goods involved in the case is bad, and he should be punished severely. In accordance with Article 60 of the Trademark Law, the law enforcement agency made an administrative penalty decision on the parties in accordance with the law and ordered them to immediately stop the infringement, confiscate and destroy the infringing goods, and impose a fine of 200,000 RMB based on illegal business revenue of 22,800 RMB.
Under both U.S. and Chinese patent law, damages may be available from the time of publication of the patent application. These provisional damages in a Chinese divisional application will start from the time of publication of the parent application and not the later publication of the divisional application.
In August 2015, the patentee Wang requested a financial institution to pay license fees for an invention patent owned by him, and requested the Handan Intellectual Property Office of Hebei Province to mediate a dispute over the provisional damages. Upon verification, the involved invention patent is a divisional application, and both the application and the parent application have been granted and are in a legal and valid state. During the mediation process, the two parties have different views on whether the publication date of the parent case application or the publication date of the divisional application should be used to determine the provisional damages. In this case, the Handan Municipal Intellectual Property Office determined the starting time for provisional damages for the divisional application is the parent’s publication date.
The scope of protection in a specific case is the entire layout design or the original part of it. For the layout design that has been put into commercial use at the time of registration, the integrated circuit sample submitted at the time of registration is a reference for determining the exclusive rights of layout design.
The claimant Wuxi New Silicon Microelectronics Co., Ltd. owns the exclusive right of BS.155508385 integrated circuit layout design (hereinafter referred to as the layout design involved), and its corresponding chip model is WS3080. The claimant believed that the ECH485 chip sold by the respondent Nanjing Rixin Technology Co., Ltd. on the market infringed its exclusive right of integrated circuit layout design. On September 12, 2017, the petitioner submitted a handling request to the Administrative Enforcement Committee for Integrated Circuit Layout Design of the State Intellectual Property Office (hereinafter referred to as the Committee), requesting that the Committee find that the respondent’s sales of ECH485 chips constitutes infringement and order it to stop the infringement. as well as destroy all infringing products and the mask used for the chip.
During the trial of the case, the committee entrusted a judicial appraisal agency in accordance with the law to conduct a technical evaluation on whether the layout design of the ECH485 chip is the same as the layout design involved in the case, and whether the layout design of the WS3080 chip is the same as the layout design involved in the case.
In this case, the claimant submitted 18 drawings of the layout design involved in the case at the time of registration, including 1 general drawing and 17 drawings of each layer.
The requestor also submitted 4 samples of integrated circuits of model WS3080 during registration. The appraisal result showed that the layout design pattern in this case was consistent with the layout design extracted from the WS3080 chip. Therefore, the layout design contained in the WS3080 chip can be used as a supplement to the layout design involved in the case to determine the protection scope of the exclusive right of the layout design involved.
On August 16, 2018, the committee determined that the ECH485 chip produced and sold by the respondent infringed the exclusive right of the layout design involved, and ordered the respondent to immediately stop infringing on the exclusive right of the layout design involved in the case as well as confiscating and destroying the respondent’s drawings, masks and integrated circuits containing the layout design involved in the case.
The original full text is available here: 一批知识产权行政执法指导案例 (Chinese only).
© 2020 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.National Law Review, Volume X, Number 351
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