Author Archives: yytbest

Why Did the Court Verify the Validity of a Company’s Trademark Transfer 5 Years after Its Cancellation?

Posted on by

(By You Yunting) The Luzhou Qian Nian Liquor Co., Ltd. (“Company L”) found that its competitor, the Shandong-based Zhu Ge Jia Liquor Co., Ltd. (“Company S”) acquired three trademarks from a company that had its registration for the marks cancelled five years prior to the trademark transfer. Following this, Company L filed a request to have the trademark revoked, because it had not been used for a continuous three-year period. However, the Trademark Office denied the application, and Company L requested a review of the decision, which was also rejected, leading Company L to ultimately file an administrative lawsuit. In the lawsuit, Company L was equally unsuccessful, and the court refused its demands in both the first and second instance. Following a series of rejections, Company L then appealed the case to the Supreme People’s Court (“Supreme Court”) for a rehearing. 

READ MORE

How to Judge the Validity of Trademark Transfer without Inner Approval of the Company in China

Posted on by

Abstract:

(By Albert Chen) When a company’s trademark agent transfers a trademark without approval, a judgment of the validity of said transfer requires not only a consideration of the presence (or lack of) company approval, but also a determination of whether there was good faith when considering the third party in the transfer. When it can be shown that no inner-company approval was made, and that the transaction was not undertaken in good faith, such a transfer will invariably be considered invalid.

READ MORE

Introduction to A Case on Whether OEM Would Constitute Infringement in China

Posted on by

Abstract:

(By Luo Yanjie) For the infringement caused by OEM in China, different courts hold different opinions in China, and in this essay you could see a case describe the infringement determination. The determination of trademark infringement should be subjected to whether or not potential consumers would be confused when making their decision to purchase the product. If the potential consumer is not confused by the product, then it should not be considered as an infringement.

READ MORE

Despite the Record-Making CNY 1, 000, 000 Compensation for Yao Ming, Infringer Did Not Lose the Lawsuit

Posted on by

Among the Ten IPR Cases issued by the Supreme People’s Court in 2012, one of the more interesting ones involves a case of portrait infringement involving international basketball star Yao Ming’s likeness. Despite the court’s understanding that infringement had been found for the unlicensed use of Yao’s portrait and name, granting compensation as high as RMB 1 million Yuan, such an amount is far less than Yao’s typical payment for participating in ads and other marketing materials. For this reason, the court’s decision to grant such an amount is simply inadequate to prevent further acts of infringement involving a well-known person’s name and likeness.

READ MORE

Why China Supreme Court Agree with Resigned Employees Establishing Competing Businesses?

Posted on by

(By Luo Yanjie) Abstract: The experience an employee gains throughout the course of his employment is regarded as a personal right under the law, and even though an employer may spend a great deal of time and money cultivating the employee and improving their skill set, if there was no noncompete agreement entered into prior to this, the employer will usually not be able to impede or stop a resigned employee from starting another business to compete with his or her previous employer.

For most companies, talent is considered its most valuable asset. With the development of the economy, market competition grows ever more fierce, and many employers find themselves troubled at the prospect of a number of employees “job hopping” to competitors, bringing the benefit of the employers’ training, experience and expertise with them. The case introduced herein is a typical case in which the employee was not bound by a noncompete, nondisclosure, or similar agreement. Facing stiff competition, many employers file suit on the basis of unfair competition, and yet, due to lacking substantial evidence, many employers end up failing in bringing a successful case.

READ MORE

China Supreme Court’s Opinions on the Standard to Judge Noted Product Decoration？

Posted on by
360截图-27670942_副本

Abstract

(By Albert Chen) Despite trademark is the important mark to indicate the origin of the product in its circulation, to decide whether the package of a noted product could constitute the special decoration, the trademark is not the absolute cause for the consideration. The reputation of the product shall be judged from the sales time, area, amount and object, and on the other hand, the fundamental condition for to decide the special decoration is whether it is distinctive.

Case Introduction

READ MORE

Using Counterfeit Software to Manufacture Hardware May Constitute Copyright Infringement by the User

Posted on by

Abstract:

(By Luo Yanjie) Using another party’s copyrighted software,  and combining that technology with specific hardware product to produce a similar product may constitute copyright infringement. When determining whether such action constitute as a crime, the penalty may be calculated by the total value  of the hardware and software products,

When employees of high-tech companies leaves their employment, they may cause their former employer huge financial losses if they illegally uses the technology or software they obtained from their former employer. Therefore, companies generally take preventive measures with its employees by methods such as a duty not to compete or a non-disclosure agreement. For serious offenses, companies could consider filing criminal charges. In this post, you would see one such typical case.

READ MORE

Why Hainan Netcom Is Judged Infringement Liability for IP Addresses It Manages?

Posted on by

Abstract

(By Albert Chen) Hainan Netcom is an Internet Service Provider (“ISP”), but it also provides the content on the Internet. For the URL available on its web pages, the company should be obligated to take an even higher care with regards to its content. Even after the company fails to demonstrate that the IP address is used by a third party, and it has fulfilled its obligation to check the content of the webpage, the company should still be liable for any corresponding infringement.

Case Summary:

READ MORE

Can Employees’ Nondisclosure Warranty Letter Be A Confidential Measure in China?

Posted on by

Abstract

(By Albert Chen) According to the Anti Unfair Competition Law, one of the conditions required for something to constitute a trade secret is whether sufficient measures have been taken for such information to remain confidential. In practice, apart from an NDA (Non Disclosure Agreement), other confidential articles that explicitly indicate the inclusion of remuneration for confidentiality in an employee’s pay, as well as written warranties issued by an employee can both be considered confidential measures in law sufficient to properly maintain a trade secret.

READ MORE

How to Infer the Trade Secret Disclosure by Original Staffs in China?

Posted on by

Abstract

(By Albert Chen) How to demonstrate one’s original employee has presented the trade secret gained during his/her service to the new employer, who thereafter makes benefit of it? As no direct evidences are available, in the current judicial practices, the principle of “similarity, contactable and excluding lawful origin” has been adopted for the case judging.

Case Summary:

Zhao once had her employment with Jiashan Shengguang Electronics Co., Ltd. (the “Company S”) from February 20th 2002 to March 19th 2006, and was in charge of the sales of the company. During her service there, Zhao, as the representative of Company S, concluded several transactions on vehicles lighting with Mexican DDB Company.

READ MORE

Why China Companies Licensed by Overseas Right Holder Would Still Be Found Infringement?

Posted on by
d009b3de9c82d15800e3b0f7800a19d8bc3e4217

(By Luo Yanjie) Abstract: Whether the confusion has been made among the consumers is the basis on which to judge the unfair competition liability. In recent two years, some China companies have engaged themselves in the fake licensing as first to establish a company outside mainland China in Hong Kong, with the same name like those reputed brands and then gain the benefits from the free riding on it. But once it has been judged confusion among the consumer, even it is licensed through the legal procedure, it shall also take the infringement liability.

READ MORE

China’s Courts Found Non-Infringement for Unauthorized Remake of Song

Posted on by

(By Luo Yanjie) Abstract: The scope of the statutory license includes the manufacturing of the audio recording, and also includes the distribution of the work afterwards. Judging from the latest case, the written statement of the right holder must explicitly exclude the application of statutory license, and cannot simply exclude it by claiming “chasing any infringement.”

The statutory license provided in the Copyright Law is to prevent a monopoly in the music market, but the law also regulates that the right holder has the right to exclude that license. ” However as to what kind statement shall be made within such exclusion statement, we have found no such regulation in law. According to the case described in this essay, the recording industry tends to use the term “copyright reserved, and infringement chased”, which in fact is not within the scope of the license due to the followings:

READ MORE

Trademark “Zhuomuniao”: Cancelled for Squatting Though It Has Been Put into Use

Posted on by

(By Luo Yanjie) Abstract: when applying for a trademark, the trademark office will judge the similarity of the submitted trademark based on the International Classification of the Trademark Registration for Product and Service (the “Classification”), but the court does not use that as the only standard. Even if the court finds that the later trademark application to be similar with the earlier applications, if the trademark office approves the later applied trademark’s application, the earlier trademark holder shall have no right to demand the later user for any damages.

READ MORE

Should Chinese Enterprise Employees Who Have Not Signed An NDA Still Have A Duty to Not Disclose?

Posted on by

Abstract

(By Albert Chen) In practice, we have seen numerous companies not signing any NDA or confidential clauses in employment contracts with their staff. But even so, taking into consideration confidentiality measures taken by a company, like making requirements for the handling of client information, and taking into consideration the confidential content of said information, one could easily conclude most companies intend to maintain nondisclosure of confidential information, and as a corollary staff and employees also maintain these efforts at nondisclosure.

READ MORE

Is the Territorial Scope of a Famous Brand Limited to Chinese Territories?

Posted on by

(By Luo Yanjie) Abstract: to determine whether two trademarks are similar to each other, the main consideration is determining the distinguishing features of the mark. However, to determine a famous or well-known product, such a determination is typically limited to Chinese territories, while on the other hand the reputation of a mark may involve consideration of overseas reputation.

Freeriding among Chinese manufacturers is unfortunately a very common and severe issue, and for most well known foreign companies, there may be situations in which they have not paid adequate attention to the Chinese market, and ergo have provided insufficient attention to policing its marks within the realm of IPR protection. As a result, the vast majority of foreign brands are helpless in facing rampant infringement.

READ MORE