News and Cases from China: June 2017
Chinese author Jiangnan succeeds in App Store Copyright Infringement action
Issuance Date: 08 June, 2017
Dongcheng District People’s Court has ordered Apple to compensate Jiangnan, the Plaintiff, in the sum of RMB 238,000 (approx. US$ 35,000).
The Court held that Apple was responsible for content uploaded to its app platform. Although its control went way beyond that of a mere storage service provider, it had failed to take reasonable steps to ensure that material was not infringing.
Tencent Recovers 139 Domain Names
Issuance Date: 06 June, 2017
In April 2017, the Hong Kong Secretariat Expert Panel of the Asian Domain Name Dispute Resolution Centre decided that Zhou, the Respondent in various domain name disputes with Tencent, should transfer all 139 disputed domain names to Tencent. The case involved three key issues: whether the disputed domain names were the same as or similar to Tencent's trademarks; whether the Respondent had any right or legitimate interest in the disputed domain names; and whether the Respondent had maliciously registered and used the disputed domain names.
In 2015 and 2016 the Respondent registered domain names (including tencentapp.com、wechatiot.cn、qqfamily.com.cn) that were similar to various Tencent registered trade marks, including TENCENT WECHAT and QQ. The Respondent was not using the domain names, but offering to sell them to the public online. Further, it had registered more than 2,300 domain names, many of them containing registered trademarks.
‘Lao Gan Ma’: product description or trademark?
Issuance Date: 14 June, 2017
The Plaintiff, Guiyang Laoganma Co., Ltd, registered the trade mark ‘Lao Gan Ma’ in relation to chili sauces and other related products in Class 30. Since 2011, the mark has been recognized as a well-known trade mark. When Guizhou Yonghong Co., Ltd began using Chinese characters representing “Flavour of Lao Gan Ma”, on its beef jerky products, Laoganma commenced trade mark infringement proceedings in the Beijing Intellectual Property Court (BIPC).
The Defendant argued that it had merely used the Chinese characters ‘Lao Gan Ma’ on its packaging to indicate the flavour of the product. The Court held, however, that the mark served to indicate the origin of the goods. The Defendant had, without the authority of the Plaintiff, used the mark as a trade mark and thus infringed the Plaintiff’s registered mark. The use in question did not constitute fair use: customers would be likely to associate the Defendant’s goods with the Plaintiff. The Court ordered the Defendant to pay RMB 274,500 (approx. US$ 40,500) to the Plaintiff and issued an injunction to prohibit further infringement.
Both parties appealed to the Beijing High People’s Court, which upheld the BIPC decision, apart from the level of compensation, which it reduced to RMB 175,000 (approx. US$ 26,000).
Baidu wins Patent Battle against Tencent
Baidu Online Network Technology (Beijing) Co., Ltd. sought to invalidate an invention patent for a “picture input method and device”, owned by Tencent Technology (Shenzhen) Co., Ltd. On 16 June 2017, in accordance with Article 22(3) and 46(1) of the Patent Law, the Patent Reexamination Board of the State Intellectual Property Office declared the disputed patent invalid.
The main points relied on by the Board, one procedural and one substantive, were as follows.
The procedural issue related to the admissibility of certain evidence. The notarizations had been effected in Hong Kong by an attesting officer who was also a legal adviser at the law firm representing the Applicant. Chinese notarisation laws and regulations provide that an attesting officer cannot act in matters related to his own issues, or issues that involve the law firm of which he is a partner, but clients’ affairs are an exception. The Board found that in this case the disputed evidence fell into the category of the client’s affairs and the evidence was, therefore, admissible
The substantive issue concerned novelty. If the patent in question has features that are distinctive when compared with the most similar existing technology, but nevertheless fall into the area of common knowledge, the subject matter cannot be considered innovative.