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Owners of Chinese well-known trademarks are entitled to broader protection than ordinary trademarks registered in China. Above said, whether a trademark constitutes a well-known one in China becomes a significant issue to its owner.
The Supreme People’s Court of China promulgated draft Interpretations Concerning Certain Issues on Application of Laws in Recognizing and Protecting Well-Known Trademarks in Trails of Civil Disputes Related to Trademark Infringement (“Draft Interpretations”) on November 11, 2008.
The Draft Interpretations aim at addressing those common issues that have been revealed in judicial practice of recognizing Chinese well-known trademarks, and further strengthening protection over such trademarks in China.
Under the Draft Interpretations, only if the issue whether a disputed trademark constitutes Chinese well-known trademark is legally or factually significant in determining trademark infringement or unfair competition, such issue will be analyzed and determined by relevant people’s court.
It is noted that in order to be recognized as Chinese well-known trademark, the relevant trademark must be widely known within the territory of China. In other words, mere evidence of being well-known outside China (such as an international brand) is not sufficient to establish existence of a Chinese well-known trademark, even though overseas reputation or recognition may be taken into account in certain circumstances.
With respect to jurisdiction over cases involving judicial recognition of Chinese well-known trademarks, the views are split, and the Draft Interpretations provide for two possible options. One holds that intermediate people’s courts or above shall have such jurisdiction, while the other deem it necessary to further narrow it down to intermediate people’s court or above in major cities or others at the same level as approved by the Supreme People’s Court.
Showing posts with label Intellectual Property. Show all posts
Showing posts with label Intellectual Property. Show all posts
Tuesday, November 18, 2008
Thursday, November 13, 2008
Beijing: Supreme People’s Court to Try A Copyright Case Live
On November 14, 2008, the Supreme People’s of China will try a copyright infringement case, which is to be live broadcasted online via China Court Net (www.chinacourt.org).
The trial was brought up by a famous singer in China, Sun Nan. In 2006, agent of Sun Nan purchased a CD of songs performed by Sun Nan. Based on this, Sun Nan filed a lawsuit against the CD publishers on the cause of unauthorized copying and publishing of such songs, which infringed his right to perform. He claimed the damage of RMB300,000 and requested the court to order the defendants to cease sales of, and destroy such infringing products.
The trial court supported all of Sun Nan’s claims, which was appealed by the defendants. The appellant court reversed the trial court’s judgment, and held in favor of the defendants.
Unsatisfied with the judgment of appellant court, Sun Nan applied for re-trial of this case by the Supreme People’s Court of China. It will be the first time for the Supreme People’s Court to try a case with live broadcasting online.
The trial was brought up by a famous singer in China, Sun Nan. In 2006, agent of Sun Nan purchased a CD of songs performed by Sun Nan. Based on this, Sun Nan filed a lawsuit against the CD publishers on the cause of unauthorized copying and publishing of such songs, which infringed his right to perform. He claimed the damage of RMB300,000 and requested the court to order the defendants to cease sales of, and destroy such infringing products.
The trial court supported all of Sun Nan’s claims, which was appealed by the defendants. The appellant court reversed the trial court’s judgment, and held in favor of the defendants.
Unsatisfied with the judgment of appellant court, Sun Nan applied for re-trial of this case by the Supreme People’s Court of China. It will be the first time for the Supreme People’s Court to try a case with live broadcasting online.
Wednesday, November 5, 2008
Beijing: First Lawsuit on Supermarket’s Use of Background Music
Music Copyright Society of China (“MCSC”) sued a supermarket in Beijing based on alleged infringing use of background music, and claimed damage of RMB16,500.
On November 4, 2008, Beijing Haidian People’s Court began to try this first copyright infringement lawsuit arising from supermarket’s use of background music since the promulgation of PRC Copyright Law.
MCSC is a collective management organization of music copyright in China, which aims at protecting music copyright holders, and representing them in infringement cases.
According to MCSC, the defendant, absent the right holder’s authorization, used a song as background music of the supermarket, which constituted copyright infringement.
MCSC indicated that around 8,000 companies in China have voluntarily paid royalties to MCSC for their use of background music in their respective stores; however, this only represents a minority of supermarkets or stores in China. Therefore, MCSC, via this lawsuit, intends to alert those companies to the potential infringing use of background music and its resulting violation of Chinese law, and in the meantime, encourage right holders to claim their rights in such cases through MCSC.
The defendant argued that use of background music in the supermarket is not for profit-making purpose, which is different from use of music in KTVs or other similar places. Thus, different rates of royalties should be applied to different types of use of music.
Though this case is still under trial, it is clear that all sorts of brand new intellectual property disputes are getting more common in China.
On November 4, 2008, Beijing Haidian People’s Court began to try this first copyright infringement lawsuit arising from supermarket’s use of background music since the promulgation of PRC Copyright Law.
MCSC is a collective management organization of music copyright in China, which aims at protecting music copyright holders, and representing them in infringement cases.
According to MCSC, the defendant, absent the right holder’s authorization, used a song as background music of the supermarket, which constituted copyright infringement.
MCSC indicated that around 8,000 companies in China have voluntarily paid royalties to MCSC for their use of background music in their respective stores; however, this only represents a minority of supermarkets or stores in China. Therefore, MCSC, via this lawsuit, intends to alert those companies to the potential infringing use of background music and its resulting violation of Chinese law, and in the meantime, encourage right holders to claim their rights in such cases through MCSC.
The defendant argued that use of background music in the supermarket is not for profit-making purpose, which is different from use of music in KTVs or other similar places. Thus, different rates of royalties should be applied to different types of use of music.
Though this case is still under trial, it is clear that all sorts of brand new intellectual property disputes are getting more common in China.
Tuesday, November 4, 2008
OEMs and CMs: Risks and Precautions
OEMs (original equipment manufacturers) are prevalent in today’s cost competitive environment. Despite the popularity, intellectual property risks lie on both sides --OEMs and CMs (contract manufacturers).
For OEMs, one major risk is that CMs may over-manufacture the designated products without OEMs’ authorization, and re-sell such products to third parties or directly to end users, which may dilute OEMs’ market. Another risk is that CMs may use, disclose or disseminate OEMs’ confidential information, without due authorization. Such act may be intentionally taken by CMs for profit-making, or due to negligence in restricting their employees in complying with their confidentiality obligations. Whatever the reason, such undue disclosure of confidential information exposes OEMs to business risks and harm.
For CMs, the primary risk is their inadvertent infringement of third party intellectual property rights due to OEMs’ lack of relevant rights. In this scenario, third party right holders may directly sue CMs for infringement, and if CMs are not properly protected under OEM contracts, CMs’ losses can hardly be indemnified by OEMs.
Awareness of risks leads to design of precautions. Suggested steps for OEMs and CMs include:
1. CMs should conduct intellectual property due diligence of OEMs, making sure that OEMs are legitimate holders of relevant intellectual property rights;
2. OEMs and CMs should specify detailed rights, obligations and remedies under their contracts, especially with respect to potential intellectual property disputes;
3. OEMs may require CMs to keep detailed records of how the designated products are manufactured, and entitle themselves to review and inspect; and
4. CMs should take precautions to protect confidential information of OEMs (including, without limitation, entering into confidentiality and non-compete agreements with employees).
For OEMs, one major risk is that CMs may over-manufacture the designated products without OEMs’ authorization, and re-sell such products to third parties or directly to end users, which may dilute OEMs’ market. Another risk is that CMs may use, disclose or disseminate OEMs’ confidential information, without due authorization. Such act may be intentionally taken by CMs for profit-making, or due to negligence in restricting their employees in complying with their confidentiality obligations. Whatever the reason, such undue disclosure of confidential information exposes OEMs to business risks and harm.
For CMs, the primary risk is their inadvertent infringement of third party intellectual property rights due to OEMs’ lack of relevant rights. In this scenario, third party right holders may directly sue CMs for infringement, and if CMs are not properly protected under OEM contracts, CMs’ losses can hardly be indemnified by OEMs.
Awareness of risks leads to design of precautions. Suggested steps for OEMs and CMs include:
1. CMs should conduct intellectual property due diligence of OEMs, making sure that OEMs are legitimate holders of relevant intellectual property rights;
2. OEMs and CMs should specify detailed rights, obligations and remedies under their contracts, especially with respect to potential intellectual property disputes;
3. OEMs may require CMs to keep detailed records of how the designated products are manufactured, and entitle themselves to review and inspect; and
4. CMs should take precautions to protect confidential information of OEMs (including, without limitation, entering into confidentiality and non-compete agreements with employees).
Monday, November 3, 2008
Beijing: Digital Copyright of Thesis Infringed?
482 master and Ph.D. degree holders (collectively, the “Plaintiffs”) sued Beijing Wanfang Data Co., Ltd. (“Wanfang Data” or the “Defendant”) with respect to the Defendant’s infringing use of the Plaintiffs’ thesis. The trial judgment held the Defendant lost to 364 of the Plaintiffs, and should cease collecting thesis, make public apologies on its website, and compensate those winning Plaintiffs for the damages and reasonable litigation expenses.
According to the Plaintiffs’ claim, Wanfang Data, without due authorization, collected the Plaintiffs’ thesis, scanned them into digital files, and included the same into a “China Thesis Database”, which was available for search by various libraries across the nation after their paying certain subscription fees to use Wanfang Data’s system.
The Plaintiffs claimed that Wanfang Data’s conduct was illegally publishing, copying, disseminating, and selling the Plaintiffs’ thesis for profit, which constituted copyright infringement.
During the trial, Wanfang Data counter-argued that China Science and Technologies Information Research Institute (“CSTIRI”) is the designated institute to collect thesis under Chinese law, and the Defendant was authorized by CSTIRI to develop a database of such thesis. The Defendant further argued, given that the database was only available to users of college and other nation-wide libraries (as opposed to the general public), the purpose of this database was to promote exchange of research results, instead of for-profit-sale. In addition, the Defendant also pointed out that 324 of the Plaintiffs have signed certain agreements with their respective graduating universities, authorizing those universities to dispose their thesis, and those universities have all entered into agreements with CSTIRI, authorizing CSTIRI to include those thesis into the database.
According to the trial court, Wanfang Data infringed copyright to thesis of 158 of the Plaintiffs who have not entered into any agreements with their graduating universities with respect to the disposal of their thesis. Among the remaining 324 Plaintiffs, the agreements 206 of them have entered with their graduating universities were insufficient to justify Wanfang Data’s use of the disputed thesis, thereby rendering the Defendant’s conduct as copyright infringement too.
Thus, 364 of the Plaintiffs were entitled to damages in the range from RMB2,300 to RMB5,100 individually, which added up to over-RMB1 million-damage in total to be paid by Wanfang Data. With respect to the remaining 118 of the Plaintiffs, due to their agreements with graduating universities, plus the latter’s agreements with CSTIRI, the trial court determined that Wanfang Data’s conduct did not infringe their respective copyright.
Upon announcement of the trial judgment on October 16, 2008, the attorney representing the Plaintiffs indicated that the Plaintiffs would further continue this case with an appeal.
According to the Plaintiffs’ claim, Wanfang Data, without due authorization, collected the Plaintiffs’ thesis, scanned them into digital files, and included the same into a “China Thesis Database”, which was available for search by various libraries across the nation after their paying certain subscription fees to use Wanfang Data’s system.
The Plaintiffs claimed that Wanfang Data’s conduct was illegally publishing, copying, disseminating, and selling the Plaintiffs’ thesis for profit, which constituted copyright infringement.
During the trial, Wanfang Data counter-argued that China Science and Technologies Information Research Institute (“CSTIRI”) is the designated institute to collect thesis under Chinese law, and the Defendant was authorized by CSTIRI to develop a database of such thesis. The Defendant further argued, given that the database was only available to users of college and other nation-wide libraries (as opposed to the general public), the purpose of this database was to promote exchange of research results, instead of for-profit-sale. In addition, the Defendant also pointed out that 324 of the Plaintiffs have signed certain agreements with their respective graduating universities, authorizing those universities to dispose their thesis, and those universities have all entered into agreements with CSTIRI, authorizing CSTIRI to include those thesis into the database.
According to the trial court, Wanfang Data infringed copyright to thesis of 158 of the Plaintiffs who have not entered into any agreements with their graduating universities with respect to the disposal of their thesis. Among the remaining 324 Plaintiffs, the agreements 206 of them have entered with their graduating universities were insufficient to justify Wanfang Data’s use of the disputed thesis, thereby rendering the Defendant’s conduct as copyright infringement too.
Thus, 364 of the Plaintiffs were entitled to damages in the range from RMB2,300 to RMB5,100 individually, which added up to over-RMB1 million-damage in total to be paid by Wanfang Data. With respect to the remaining 118 of the Plaintiffs, due to their agreements with graduating universities, plus the latter’s agreements with CSTIRI, the trial court determined that Wanfang Data’s conduct did not infringe their respective copyright.
Upon announcement of the trial judgment on October 16, 2008, the attorney representing the Plaintiffs indicated that the Plaintiffs would further continue this case with an appeal.
Shanghai: Intellectual Property Arbitration Tribunal Founded
On October 29, 2008, Shanghai Intellectual Property Arbitration Tribunal was officially founded, with the first batch of 61 arbitrators appointed.
This tribunal offers a new avenue to solve intellectual property disputes in China, apart from the traditional administrative or judicial channels. It aims at taking advantage of the features of arbitration, such as confidentiality, efficiency, and expertise of arbitrators, and thereby providing a more cost-effective way to resolve intellectual property disputes.
This tribunal is formed to meet the dispute resolution demand arising from the increasing number of cross-border intellectual property transactions (including transfer or licensing) involving China.
This tribunal offers a new avenue to solve intellectual property disputes in China, apart from the traditional administrative or judicial channels. It aims at taking advantage of the features of arbitration, such as confidentiality, efficiency, and expertise of arbitrators, and thereby providing a more cost-effective way to resolve intellectual property disputes.
This tribunal is formed to meet the dispute resolution demand arising from the increasing number of cross-border intellectual property transactions (including transfer or licensing) involving China.
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