News & Cases from China: January 2018
SIPO issues Catalogue of Industries to be given IP Support
The Catalogue, issued on 23 January, identifies 10 key sectors (modern agriculture, new-generation information technology, smart manufacturing, new materials, clean energy & eco-environment protection, modern transport & equipment, advanced marine & space technologies, advanced biotechnology, healthcare and culture) that are being prioritized by the government in terms of IP development and support. Assistance is to be given to departments and local governments in relation to the identification of key factors for IP development and the efficient allocation of IP resources for the purpose of promoting industrial restructuring, upgrading and innovation.
First Infringement Case on GUI Design Patents
On 25 December 2017, the Beijing Intellectual Property Court handed down the country’s first decision on a GUI (Graphical User Interface) Design patent.
The design patent concerned was granted for "a computer with a graphical user interface". Because of the lack of specific rules relating to the infringement of new types of design, the Court applied the current design patent infringement rules and held that what was protected here was the computer with the particular GUI, not the GUI itself.
The Defendant had provided computer optimizing software enabling a graphical interface identical to the Plaintiff’s. The Court, however, considered that software alone does not fall into the scope of protection: the design was for a computer with a particular GUI, not the software alone. Infringement had not, therefore, been established.
Samsung Ordered to Pay Huawei RMB 80 Million (approx. US$ 12.7 million)
In May 2016, Huawei brought a patent infringement action against Samsung in the Shenzhen Intermediate People's Court, after the two parties had failed to enter into a cross-licensing agreement.
On 11 January 2018, the IP Tribunal of the Shenzhen Intermediate People's Court (the Tribunal) found that Huawei’s two invention patents in dispute were SEP patents i.e. patents a manufacturer needs to produce a standard compliant product. Cross-licensing negotiations had gone on for more than six years between the parties, and the Court found that Samsung had maliciously delayed negotiations, thereby violating the FRAND principle. It, therefore, held that the alleged infringement had been established and ordered Samsung to pay RMB 80 million (approx. US$ 12.7 million) compensation and to stop infringing immediately. Continued manufacture and sales or the promise of sales, was also prohibited.
Samsung has said it will scrutinize the judgment to determine an appropriate response. It has also said that the judgement will not affect its mobile phone sales in China.
Huawei and Samsung have a long history of IP disputes. In 2016, Huawei sued Samsung for invention patent infringement in both US and China (Quanzhou and Shenzhen). Samsung also filed a case against Huawei before the Beijing IP court. In the course of the various actions, Samsung has lost five of its eight disputed patents; only two have been maintained as granted. So far, Huawei has won both cases in Quanzhou and Shenzhen.
DISCOVERY EXPEDITION - Trademark Infringement Case
The Plaintiff, Discovery Communications, Inc. (DCI), a famous American documentary media company, launched an outdoor wear and equipment brand: DISCOVERY EXPEDITION. The Defendant, Zhongshan Tansuo (which means ‘exploration’ in Chinese) Company, used the words DISCOVERY ACTIVE on and in relation to similar products. The Plaintiff sued Tansuo for trade mark infringement and an internet service provider, JD Com, for contributory infringement.
The Court found that Tansuo had infringed the trade mark and that because JD.Com had failed to take reasonable steps to prevent the IP infringements occurring, it was liable for contributory infringement.
Tansuo was held liable for compensation of RMB 3 million (approx. US$480 000) and JD.Com jointly and severally liable for compensation of RMB 110, 000 (approx. US$17 500)
“探索” DISCOVERY EXPEDITION商标案
原告探索传播公司是全球著名的纪实媒体公司，依托于探索频道与户外运动之间的联系，推出了其户外品牌“DISCOVERY EXPEDITION”。被告中山探索公司在其生产的背包、服装等商品上使用了 “DISCOVERY ACTIVE”等标识，构成对原告探索传播公司在第18类和第25类商品上的“DISCOVERY EXPEDITION”商标专用权的侵害，被判赔偿原告300万元。