Haworth & Lexon IP Law Newsletter
No.5, 2003 (Total:No.11) June 5th, 2003
Edited 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 firstname.lastname@example.org. If you have any interests and suggestions, or have any interests on some topics listed in this law newsletter, please contact with us.
★ Only Famous Commodities Can Be the Object of Imitation of Packing
★Prior Use vs. Patent – How to make sure the scale of Prior Use?
★The First Case in China Regarding Database Infringement Reached its Final Decision – the Infringement was Established
★Domain Name was “Robbed of “, the Obligation was Born by the Agency
★The case Long Da vs. Lu Hua relating to “Long Kou” Vermicelli Reached its Final Decision, and the Infringement was not Established
★The Enterprise, Which was Involved in a Copyright Infringement Caused by Soliciting its Logo, Won the Final Trial
Only Famous Commodities Can Be the Object of Imitation of Packing
Beijing Second Intermediate People’s court made the decision in Beijing Pan Rui Ke Food Processing Center (hereafter referred to Pan Rui Ke Center) vs. Beijing Jin Tian Tan Food Co, Ltd. (hereafter referred to Jin Tian Tan Co, Ltd.) regarding unfair competition by imitating the packing of famous commodity.
The focus in the case is whether or not the plaintiff ‘s commodity involved in this case is a famous commodity. The court held that, a famous commodity should has a certain reputation and should be known by the relevant public, and the confirmation of a famous commodity should be based on a comprehensive judgment in the aspects such as reputation in relevant markets, quality, period and domain of sale, possession of markets, advertising and the credit standing.
Since Pan Rui Ke Center claimed that its Pan Rui Ke Chocolate Pie was a famous commodity, it should take the responsibility to offer sufficient evidences. The court found that, though Pan Rui Ke Center had made advertisements for itself and its other products, it cannot prove the reputation of the products involved in the case. Neither the volume of business, nor the medal for “Top 10 Ratepayers” offered by the plaintiff can prove its possession of markets or show its reputation directly, and the recommendation certificate issued by the China Consumers Protection Foundation was not a useful evidence, either.
Therefore, the court rejected the claim of Pan Rui Ke Center on May 26th,2003.
Prior Use vs. Patent – How to make sure the scale of Prior Use?
Guangxi High People’s court made the final decision in Wang Xiaozhong & Nanning Zhi Xin Pulley Axletree Co, Ltd.(hereafter referred to Zhi Xin Co, Ltd.) vs. Guangxi Nanning Zhong Gao Sugar Refining Mechanism Co, Ltd.(hereafter referred to Zhong Gao Co, Ltd.), regarding patent infringement.
The court held that, before the date of application for the patent of Wang Xiaozhong, the defendant had not only made the preparation for production, but also produced and sold two directly-cold sugarcane presser axletree shoes. Thus, the court held on April, 2003 that Zhong Gao Co, Ltd. had the right of Prior Use on the patent of “directly-cold sugarcane presser axletree shoe”.
The Article 63 of the Patent Law regulated that “None of the following shall be deemed an infringement of the patent right: ?shy; (2) Where, before the date of filing of the application for patent, any person who has already made the identical product, used the identical process, or made necessary preparations for its making or using, continues to make or use it within the original scope only; ?shy;”.
The scale of “Prior Use” is the focus in this case. The court held that, in accordance with the aim of legislation, Prior Use should be understood as a right to keep the original output of its owner. If the actual output is less than the designed ability, the whole output which can be made with the original equipment should be deemed as the original output.
The First Case in China Regarding Database Infringement Reached its Final Decision – the Infringement was Established
Hainan High People’s Court decided in the case Hainan Jing Tian Information Co, Ltd. vs. Haikou Wang Wei Technology Co, Ltd. regarding database infringement.
In 1998, Hainan Jing Tian Information Co, Ltd. invested more than RMB 1,8 million in researching and publishing the Database of Law and Regulations of China. Haikou Wang Wei Technology Co, Ltd. decoded this database and copied it to its website ” Judiciary Online” in 2000. Haikou Intermediate People’s Court held that, though the plaintiff owned the copyright of this database, the infringement was not established because the defendant’s website also collected our country’s laws and regulations, and its diction and the way of classification was a little different.
The appellate court found that, Wang Wei’s database was basically identical with Jing Tian’s database whose copyright had been registered in 1998. The court made the decision in March 2003 that the infringement was established and reversed the original decision.
Domain Name was “Robbed of “, the Obligation was Born by the Agency
In May 2003,Haerbin Intermediate People’s Court made the decision in the case Ao Zhong Technology Developing Group vs. Heilongjiang Public Information Industry Co, Ltd. relating to domain name registration infringement. The court ordered that Public Information Co, Ltd. must pay Ao Zhong Group RMB 15,000 in damages and return Ao Zhong Group service fee RMB 5950 together with interest according to the contemporary interest rate of bank. Other claims of the plaintiff were rejected.
In August 1999, Ao Zhong Group entered into a contract with Public Information Co, Ltd. and entrusted Public Information to apply for an international domain name.
In September, Public Information registered for Ao Zhong Group the top international domain name “www.china1949.com”. The registration was approved by NSI — an organization for international domain name registration. In accordance with international conventions, who wants to register an international domain name in China should pay US dollars to the overseas registration organizations. Because it cannot directly pay US dollars overseas, without the permit of Ao Zhong Group, Public Information entrusted Zhejiang Jinhua Tian Wang Computer Co, Ltd. to pay the registration fee.
By January 2000, the fee had not reached, so NSI deleted Ao Zhong’s domain name from its database, and this domain name was soon registered by other one. Therefore, Ao Zhong Group brought a lawsuit against Public Information.
The court held that, Public Information had breached the contract and the domain name infringement was also established. The court also held that, it was only 3 months from the registration of the domain name to its deletion, so there was neither a long period for management and advertising nor a long period for competition and test. Though the domain was certain typical, it had only limited reputation and its value as intellectual property was low. Thus, the court did not support the plaintiff’s claim for huge sum of compensation.
Ao Zhong Group was not satisfied with the damages, and appealed to Heilongjiang High People’s Court.
The case Long Da vs. Lu Hua relating to “Long Kou” Vermicelli Reached its Final Decision, and the infringement was not Established
Shandong High People’s Court decided the case Shandong Long Da Group (hereafter referred to Long Da Group) vs. Laiyang Lu Hua Peanut Oil Co, Ltd. (hereafter referred to Lu Hua Co, Ltd.) regarding unfair competition with similar packing of Long Kou Vermicelli.
In the first trial, the court held that, as a traditional famous commodity, Long Kou Vermicelli was a common name used by vermicelli factories in Yantai. When choosing vermicelli products, consumers usually distinguish these products in trademarks, factory names and whole packing, instead of just concentrating on the words “Long Kou Vermicelli”, thus, there was few chances for the consumers to be confused. No infringement was established, since the only similarity between Long Da and Lu Hua was both of them had used the common name “Long Kou Vermicelli”.
The appellate court held that, other than “Long Kou Vermicelli”, these two products were quite different in words, logos, and combination of colors. The court also held that, as a common name, Long Kou Vermicelli could not just represent a certain factory’s products. For Lu Hua Co, Ltd. had carried out the obligation to made its products different from other’s, and it has no objective faults at all, the infringement was not established.
The Enterprise, Which was Involved in a Copyright Infringement Caused by Soliciting its Logo, Won the Final Trial
Anhui High People’s Court made the final decision in the case Zhang Zongren vs. Anhui Huishang Group for copyright infringement.
In October 2000, Anhui Huishang Group published an annunciation for soliciting its logo. It was regulated in the annunciation that the copyright of the logos, which won the prizes, should belong to Anhui Huishang Group. In December, Anhui Huishang Group annunciated that, Zhang Zongren’s design had won the second prize. In March 2002, Zhang Zongren found that, Anhui Huishang Group had used his design in public and had applied for trademark registration, but he was not paid until August 2002. Then, Zhang Zongren brought a lawsuit against Huishang Group for copyright infringement.
Unsatisfied with the first decision, Zhang Zongren appealed to Anhui High People’s Court. The court held that, in accordance with the Article 14 of Contract Law, Zhang Zongren’s action that he had sent his design to Huishang Group, was not only his promise to the offer, but also the performance of the contract, and it is at the same time, a new offer to the Huishang Group. Huishang Group had made a promise to the new offer, when it awarded Zhang the second prize and used his design as its logo. Then, Anhui Huishang Group paid Zhang RMB 10,000, it was both the performance of the contract and the cost for the copyright.
Hereby, the court rejected Zhang Zongren’s claim.