Haworth & Lexon IP Cases Report (5)

Haworth & Lexon IP Law Newsletter
No.5, 2002 (Total:No.5) November 5th, 2002
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 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.

★ The Court ruled its well-known trademark; hitchhiking formed infringement
★ Plaintiff won 5 million RMB in a dispute of computer software' copyright and trademark transference
★ NeiMeng YiLi Company won domain name www.yili.com by arbitration
★ Using other's trademark as signboard, was found as trademark infringement
★ Failing to fulfill the obligation of examination, the publishing house bear legal liability
★ The case related to software ultimate user's legal liability, the plaintiff withdrew the lawsuit

The Court ruled it's well-known trademark; hitchhiking formed infringement

Wuhan Intermediate People's Court made initial ruling in the case of Hong Kong Nipsea Holdings International Limited Vs Wuhan Nippon Paint Co. Ltd for the cause of trademark infringement and unfair competition in September 2002. The defendant was ordered to stop the infringement, change the trade name, made destruction of all propagandistic material of the related products and the outer-casing of infringing goods and compensated for plaintiff's financial loss RMB 80,000.The lawyer assigned by ShangHai Haworth & Lexon Law Office as the attorney agent of the plaintiff provided 28 evidences and the Court 's judgment support the plaintiff's claims completely, at the same time, the Court confirmed that the series trademark of Nippon Paint are well-known trademark, which supported the claims of agent.

The plaintiff states that he has the exclusive right of "Nippon Paint" trademark since it was registered legally in 1993,and now, the series trademark of Nippon Paint has been a well-known trademark with high reputation in various fields. The defendant's using the plaintiff's trademark as trade name without permission has confused relevant mass about the marketing entity and the resource of goods and injury the plaintiff's interest.

After hearing the case, the Court was approved of the evidences brought by the plaintiff's attorney, and the series trademark of Nippon Paint were confirmed as well-known trademark. As to the focus of this case: the conflict between trademark right and trade name, the Court holds that the trademark right of the well-known trademark- "Nippon Paint" is exclusive and using it without permission will mislead consumers. Simultaneous, the Court holds the defendant's behavior cause the dilution of "Nippon Paint" trademark by making reference to the practice of the anti-dilution in the field of protection of trademark right in US.

According to the materials of the defendants in local AIC records provided by the attorney of Haworth & Lexon, the court holds that, the defendant uses famous brand such as "Henkel", "Haier" and "Xuanwei"as its standby trade name apart from "Nippon" when applying trade name, so the purpose for infringing is very clear, then the court makes such judgment.

If you want to know the more details of the case, please visit the relevant report in "People Website" (People Daily's website) http://www.people.com.cn/GB/shehui/44/20020929/834019.html
Or in China Intellectual Property Net: http://www.cnipr.com/xwxx/zxxx/200210310045.htm

Plaintiff won 5 million RMB in a dispute of computer software' copyright and trademark transference

The plaintiff: BeiJing AoRun office equipment technological company
The defendant: BeiJing Spaceflight AoRun Electronics co, Ltd.
Cause of the case: dispute of computer software' copyright and trademark transference.
Initial Ruling of Beijing Higher People's Court: the defendant is ordered to give the plaintiff transfer fee 5 million RMB, and pay the overdue penalties.

The plaintiff states: According to the transfer of software copyright and trademark right agreement signed by both sides in 1997, it transferred professional printing software copyright to the defendant, and hadn't received relevant fee until now, so ask to pay the bill. But the defendant has the view that the transfer fee is conditional, and the plaintiff has already given up creditor's rights by promising letter.

After hearing the case, the Court holds the both side's agreement and the subsequent dealing is effective. The three shareholders of the defendant agreed on the plan of using funds of 5 million to buy intangible assets (the software copyright of the plaintiff's), which is clearly in the joint-venture agreement, So the defendant is untenable about explanation of having not pay the fee. So the court makes the above judgment

It is reported that the defendant expressed its dissatisfactory with this judgment and had already appealed in the Supreme People's Court.

NeiMeng YiLi Company won domain name www.yili.com by arbitration

The complainant: NeiMengGu YiLi Industry Group Limited Company by Shares
The respondent: ChangShu YiLi Fashion Co., Ltd.
Cause of the case: domain name dispute. The disputed domain name is www.yili.com.
The decision: the complainant submitted the complain according to the relevant regulations of ICANN and the Asian Domain Name Dispute Resolution Centre (ADNDRC) on July 26 2002.The Beijing Office of ADNDRC assigned the sole-expert Xue Hong to hear the case and made the decision in September 20th 2002: the disputed domain name was ordered to transfer to the complainant.

Firstly, since the registered trademark" YiLi+figure" and "YiLi" of the complainant were extensively propagandized and very well-known in Chinese market, the panel states the domain name held by the defendant was approximate with the trademark of the complainant, and it is enough to cause confusing.

Secondly, though the respondent has used "Changshu YiLi Fashion Co., Ltd" in domain name registration, it did not provide any evidence of registration and material to show it used the trade name. So the panel states the respondent failed to prove that " Yili" was one part of his trade name which has already registered in China, and failed to prove it has rights or legitimate interests on" Yili" too.

Thirdly, the respondent registered domain name" yili.com" and allowed http://www.yili.com to be used as Shanghai SanKun Fabrics Co., Ltd's business website, which was enough to prove the respondent 's hostile, namely the defendant utilized popularity of the complainant's trademark, attracting and misleading network users to visit Shanghai SanKun Fabrics Co., Ltd' s website.

To sum up, the panel holds the complaint has already meet three terms in the Uniform Domain Name Dispute Resolution Policy (UDRP ) , so decides to transfer the disputed domain name www.yili.com to the complainant..

If you want to know the more details of the case, please visit the relevant report in ADNDRC' s website: http://www.adndrc.org/adndrc/bj_home.html

Using other's trademark as signboard, was found as trademark infringement

Zhengzhou Intermediate People's Court tried Japan East Pottery Machine Corporation (hereafter referred to as east pottery Company) Vs Henan LongTou building materials Co., Ltd(hereafter referred to as LongTou Company) on October 2002 and made decision that LongTou Company stop infringement immediately , make an apology publicly , and compensate the plaintiff for 80,000 RMB.

The plaintiff is east pottery Company, holder of "TOTO" trademark, held LongTou Company set up their" TOTO" trademark and enterprise name of" east pottery" on signboard of the shop without authorization in his business store, claimed it to be" Japan east pottery monopolized shop", and sold goods which has same or similar trademark to "TOTO" trademark. In addition, the legal representative, Mr. Song of the LongTou Company has registered a self-employed entreprise, Infringed exclusive right to use the trademark and enterprise's name of" TOTO" together with LongTou Company. On August 28 2002, Zhengzhou Intermediate People's Court implemented the "injunction" before lawsuit in Zhengzhou firstly, to remove the signboard of the store according to the relevant regulations.

The Court held LongTou Company and Song used " TOTO" sign at the outer wall of the place of business without permission, formed infringement of exclusive right of registered trademark of east pottery Company, so made the above judgment

Failing to fulfill the obligation of examination, the publishing house bear legal liability

In October 2002, Beijing No 2 Intermediate People's Court made decision on the case of Gao Zhanxiang, former vice- minister of Ministry of Culture Vs TanMingShan and TaiHai publishing house. The court decides the defendant is not allowed to reprint, overprint, republish the books involved in the case, make an apology and compensate for 26500 RMB and 9000 RMB respectively.

The court states, Gao Zhanxiang has created" the treasured in life", enjoys the copyright in accordance with the law. The defendant TanMingShan, without permission of the plaintiff, plagiarize about 125,000 over word of plaintiff's works in" youth must know manual", which formed infringement. As the publisher, TaiHai publishing house has the responsibility to examine the right of this works before publishing the works, but it failed to do and breached the obligation, so it should also bear corresponding legal liability.

*The Interpretation of the Supreme People's Court Concerning Several Issues on Application of Law in Hearing Correctly the Civil Copyright Cases (Come in force on October 15, 2002)
"In case the publications infringe upon the copyrights of others, the publishers shall undertake the civil compensatory liabilities in consideration of their faults, degree of infringement, and the consequential damages.
In case the publishers have not take the duties of reasonable cares for the authorization of their publishing acts, the sources and signature of the manuscripts and the content of publications under edition, they shall undertake the compensatory liabilities according to the provisions of Article 48 of the Copyright Law.
In case the publishers have taken the duties of reasonable care and the copyright owners have not evidence to show that the publishers should have known the infringement involved in their publications, the publishers shall undertake the civil responsibilities for stopping the infringement and returning the profits obtained through infringement according to the provision of Article 117 of the General Principles of Civil Law.
The publishers shall take the burden of proof for indicating that they have taken the duties of reasonable cares."

The case related to software ultimate user's legal liability, the plaintiff withdrew the lawsuit

The 6 cases related to the legal liability of software ultimate users brought by US companies such as Microsoft, Adobe etc respectively and accepted by Shanghai No 2 Intermediate People Court were withdrew by the plaintiffs.

The plaintiff claimed: the defendant, ShangHai Eric Electric Co., Ltd. etc, without permission, installed the plaintiff's software such as Windows, Office, Adobe Photoshop 5.0, AutoCAD and 3Dstudio MAX; Norton etc in their computers and used them in commercial technical design. So the plaintiff claimed two defendants stop infringement, compensate for the losses RMB 300,000 and bear the plaintiff's expenses of investigation.

It was the first time that Shanghai court accepted the case related to the legal liability of software ultimate users. The plaintiffs asked the Court to take evidence preservative measure while prosecuting .the Court thought after examination that the basis of the plaintiff's prosecuting was a survey report provided by Hong Kong Jess consultant Co., Ltd, but this survey report lacks the legitimacy of the evidence. So the Court required the plaintiff to provide preliminary evidence or the clue of preliminary evidence on which the plaintiff applied for preservation of evidence within fixed time limit. But the plaintiff can't provide in due time, and put forward the application of withdrawing the lawsuit on the grounds that it is difficult to put such evidence. So the Court decided to permit the plaintiff to withdraw the lawsuit.