Translator：Jiang Wenyu

 

April 26, 2022, marked the 22nd World Intellectual Property Day. To celebrate this occasion and showcase the professional expertise and excellent client service capabilities of Landing IP Lawyers, the Landing National Intellectual Property Professional Committee organized a selection process based on recommendations from 24 offices across the country. The selection resulted in the " Landing Top 10 IP Cases in 2021" handled by Landing, covering areas such as copyright, trademarks, patents, unfair competition, and involving civil litigation, administrative litigation, and arbitration. These cases have three main characteristics: first, they achieved significant success in representation, with all cases resulting in favorable outcomes; second, the cases are of a certain level of complexity and represent important references for similar cases; third, they cover a wide range of areas, including copyright, trademarks, patents, unfair competition, and involve civil litigation, administrative litigation, arbitration, and non-litigation matters.

(Case Collection, Organization and Drafting: Ning Sijia, Shanghai Landing Law Offices)

 

01

Shenzhen Certain Technology Co., Ltd. and Guangzhou Certain Software Technology Co., Ltd. (now Shenzhen Certain Technology Co., Ltd.) v. Shaoxing Shangyu Certain Network Technology Co., Ltd. and Hangzhou Certain Technology Co., Ltd. (now Hangzhou Certain Interconnection Technology Co., Ltd.) Dispute over Copyright Infringement and Unfair Competition

 

Case No.: First Instance (2019) Yue 0305 Min Chu No.15846, Second Instance (2020) Yue Min Zhong No.16887, Execution (2021) Yue 0305 Zhi No.16224

 

Attorneys: Landing (Guangzhou), Ye Zhusheng, Li Xiaoyi

 

Brief introduction of the case: The two parties collaborated on the development of a new audiobook product and provided online audiobook services for a fee. The two parties established a promotional partnership with a "Hangzhou Company", which promoted the audiobook product developed by the two parties. Later, the two parties discovered that a subsidiary of “Hangzhou Company” called "Shaoxing Shangyu Company" was selling similar audiobook products, and the purchase page, all text content of the audiobook product, and the WeChat articles used for promotion were identical to those of the two parties. Therefore, the two parties sued "Shaoxing Shangyu Company" and “Hangzhou Company” for copyright infringement and unfair competition. The case went through two trials, and in the first trial, the court fully supported our claim for compensation of over 2.6 million yuan and legal costs. In the second trial, “Hangzhou Company” and “Shangyu Company” submitted a large amount of sales data to the Shenzhen Intermediate People's Court. After active defense by our legal representatives, the court ultimately did not accept the above-mentioned evidence and further confirmed that “Hangzhou Company” was a joint infringer, upholding the original judgment.

 

Typical significance: The attorneys in this case comprehensively utilized the operating habits in the internet field and focused on analyzing the defendant's sales data, successfully prompting the court to recognize the defendant's lack of good faith and selective provision of sales data, which reflects the strict rules of evidence determination in the field of intellectual property. At the same time, this case also reflects the challenges faced by attorneys in internet-related intellectual property and unfair competition cases, which require a deep understanding of the operating logic and sources of sales data in the relevant industry. It also highlights the importance of evidence collection work and the effective use of witness testimony.

 

 02

Copyright Infringement Dispute over Product Designs of a Hot-selling Phone Bracket

 

Case No.: (2020) Yue 0306 Minchu No.34989

 

Attorney：Landing (Shanghai), Gao Qiang

 

Brief introduction of the case: The defendant is a mobile peripheral product design and manufacturing company in Shenzhen. Since 2018, two portable mobile phone bracket products designed and produced by the defendant have been highly favored by young consumers, especially sports enthusiasts, and have gained a good reputation in the relevant market. Subsequently, the defendant authorized a Shenzhen outdoor supplies company to distribute these two mobile phone bracket products. The plaintiff and the defendant are both mobile peripheral product design and manufacturing companies, and they are also competitors in the Shenzhen area. The plaintiff discovered that the appearance of the two popular mobile phone bracket products sold by the defendant and its distributors is basically the same as their company's similar products. Therefore, the plaintiff believes that the defendant and its distributors have infringed on their copyright of the design drawings of the mobile phone products and filed a lawsuit with the Nanshan District Court in Shenzhen, requesting the two defendants to stop the infringement and compensate for economic losses. After the litigation procedure was initiated, in order to avoid expanding the potential consequences of infringement, the two defendants were forced to stop production and remove all the involved mobile phone bracket products from the market.

 

Typical significance: This case is a copyright infringement dispute arising from the production and manufacturing of industrial products. Copyright infringement cases involving product design drawings are not common in judicial practice. The determination of the originality of product design drawings and the identification of infringement are the difficult points in the trial of such cases. The judgment in this case clarified the distinction between industrial production and copyright reproduction, providing reference for the future trial of similar cases. With profound theoretical knowledge of copyright law and extensive practical experience, Lawyer Gao Qing successfully helped the two defendants overcome a series of difficulties, such as inventory backlog, removal of popular products from the market, and suspension of factory orders, and achieved the commercial goal of resuming production and sales in the shortest possible time.

 

 

 03

DORCO Co., Ltd. v. Jiangxi Certain Blade Manufacturing Co., Ltd. Trademark Infringement Disputes

 

Case No.: (2020) Zhe 02 Min Chu No.150

 

Attorneys: Landing (Wenzhou), Huang Runsheng, Zeng Guoyan

  

Brief introduction of the case: Dorco Co., Ltd. (hereinafter referred to as "Dorco") is a well-known razor manufacturer in South Korea. Dorco products have entered the Chinese market early on and are sold through major shopping malls and e-commerce platforms in China. Dorco holds the registered trademark No. 565630 for "DORCO" and the registered trademark No. 6643382 for " ". In 2019, a blade manufacturing company in Jiangxi, China, was investigated and filed by the public security authorities for producing a large number of counterfeit Dorco trademark goods. In order to obtain the understanding of the trademark rights holder Dorco, the company voluntarily signed a "Settlement Agreement" with Dorco. The agreement clearly stipulates that if Dorco discovers that the company (including but not limited to its shareholders, shareholders' immediate relatives, and affiliated companies, etc.) infringes on Dorco's trademark exclusive rights again, the company shall unconditionally compensate Dorco for the loss at ten times the value of the infringing goods, and Dorco has the right to further pursue its corresponding criminal, administrative, and civil legal liabilities. In 2020, Dorco discovered that the blade manufacturing company in Jiangxi was producing and selling shaving blades using the "DOCEO" mark, which is highly similar to the trademark registered and used by Dorco. The sales channels for such goods are extensive, and the sales volume is huge. This case was heard by the Ningbo Intermediate People's Court, which determined that the defendant constituted infringement and ruled in full support of the plaintiff's claim for compensation of 8 million yuan for economic losses.

 

Typical significance: This case is a typical case of combination of agreed compensation and punitive damages. The court considered the agreement between the plaintiff and the defendant, the defendant's infringement of malice and infringing goods sales and other factors, the full support of the plaintiff's claim. The verdict of the case demonstrates the determination of the judicial authorities to increase the punishment of malicious infringement, which is of typical significance for the protection of intellectual property rights, curbing infringement and creating a fair and orderly market competition environment. At the same time, the case also fully embodies China's principle of equal protection of intellectual property rights for foreign subjects.

 

 04

HDMI Licensing Administrator, Inc. v. Shenzhen Zhimetuo Industry Co., Ltd. and Shenzhen Xiaoyuge Industry Co., Ltd.

 

Case No.: (2021) Yue 0307 Min Chu No.21443

 

AttorneysLanding(Wenzhou), Huang Runsheng, Yu Ling

 

Brief introduction of the case: HDMI Licensing Administrator, Inc. (hereinafter referred to as "HDMI Company") was established in 2002 and is an agency responsible for global HDMI specification authorization and marketing promotion. HDMI Company holds registered trademarks such as "HDMI" and " ".

In 2020, Longgang Supervision Bureau of Shenzhen Market Supervision Administration discovered that Shenzhen Xiaoyuge Industry Co., Ltd. was producing and selling counterfeit and imitation products with HDMI Company's trademark, and imposed administrative penalties accordingly. In 2021, the appointed lawyer found that the company continued to sell infringing products on the 1688 platform. In addition, it was also discovered that Shenzhen Zhimeituo Industrial Co., Ltd. and Wuhua County Zhige Electronic Technology Co., Ltd. had online stores on the 1688 platform selling the same infringing products. After purchasing and confirming, it was found that the products of the three companies were sent from the same address and the same sender. Therefore, after communicating with HDMI Company, the appointed representative filed a lawsuit against the three companies as joint defendants. After the trial by Longgang District People's Court of Shenzhen City, it was confirmed that the three companies constituted joint infringement, involving trademark infringement and unfair competition through false advertising. The court ordered them to jointly compensate for economic losses and reasonable expenses totaling 1 million yuan.

 

Typical significance: This case is a typical example of repeated and large-scale trademark infringement, with the compensation amount being the main focus of the case. In this case, the appointed representative proposed calculating the losses based on the licensor's royalty, which was generally recognized by the court. In addition, the in-depth investigation and evidence collection by the appointed representative were also highlights, fully demonstrating the proactive role of the appointed lawyer and advocating for the best interests of the rights holder.

 

 05

Shandong Fuhang Rubber Technology Development Co., Ltd. and Weifang Fengming Industry and Trade Co., Ltd. Patent Infringement Dispute on Utility Model Patent

 

Case No.: (2020) Supreme Court Zhi Min Zhong No. 127

 

Attorneys: Landing (Qingdao), IP Team

 

Brief introduction of the case: Shandong Fuhang Rubber Technology Development Co., Ltd. is a company engaged in the production and sales of rubber processing equipment and accessories, electrical control equipment, and general machinery and accessories. One of its products is a steel wire curtain fabric jointing machine. In 2019, Weifang Fengming Industry and Trade Co., Ltd. filed a lawsuit against the defendant company, alleging that their product infringed their utility model patent with patent number 2011202057025.

 

Typical significance: In this case, the involved product and the technical solution of the patent are similar or identical in terms of structure, which meets the principle of comprehensive coverage of patent infringement. However, the structure of the defendant's product and the structure of the technical solution of the patent, although identical, have differences in details. These differences result in different technical effects achieved by the two, leading the court to conclude that the technical solutions of the two are not the same or equivalent. Therefore, the defendant company was not found to have infringed the patent.

 

06

Cangnan Zhemintai Aquatic City Co., Ltd. and Zhefu Aquatic Group Co., Ltd. v. Cangnan County Market Supervision Administration and Cangnan Wangdong Cold Chain Logistics Co., Ltd.

 

Case No.: First instance (2020) Zhe 0381 Xing Chu No.88, Second instance (2021) Zhe 03 Xing Zhong No.395

 

Attorneys：Landing (Wenzhou), Huang Runsheng, Xu Fuming

 

Brief introduction of the case:  The plaintiff, Zhefu Aquatic Products Group Co., Ltd. (referred to as Zhefu Group), held a seafood trading market named "Wenzhou Zhefu Border Trade Aquatic Products City" in Cangnan in 2002. In 2011, Zhefu Group and Cangnan County Aquatic Products Development Co., Ltd. jointly established the plaintiff, Cangnan Zhemintai Aquatic City Co., Ltd. On June 22, 2018, the People's Government of Lingxi Town, Cangnan County issued Document No. Ling Zheng [2018] 259, approving the naming of the seafood trading market constructed by Wangdong Company as "Cangnan Zhemintai Aquatic Products City." On January 15, 2020, the defendant, Cangnan County Market Supervision Administration, registered the market name of dried and fresh seafood products organized by Wangdong Company as "Cangnan Zhemintai Aquatic Products Trade City" based on the application of a third party, Wangdong Company. The plaintiff, Cangnan Zhemintai Aquatic Products City Co., Ltd. and Zhefu Group, believed that the defendant's approval and issuance of the market name registration certificate for "Cangnan Zhemintai Aquatic Products Trade City" were illegal and infringed upon their rights to the enterprise name and reputation. Therefore, they filed a lawsuit requesting the revocation of the registration.

 

Typical significance: In administrative disputes arising from conflicts of civil rights related to intellectual property, the key point of examination is still the legality of specific administrative actions. The determination of conflicts and ownership of civil rights related to intellectual property should not be made in the administrative actions involved in the case. This case has strong reference significance for future administrative disputes involving conflicts between market names and enterprise names.

 

 07

Dispute over Authorization and Cooperation of Online Broadcasting Rights for Film and Television Works

 

Case No.: (2020) Jing Zhong Cai Zi No. 0766, (2021) Jing Zhong Cai Zi No. 0687

 

Attorney：Landing (Shanghai), Han Tianlan

 

 Brief introduction of the case: Company A and Company B signed two video content cooperation agreements, in which Company B provided film and television content to Company A and authorized Company A to provide it to provincial-level IPTV platforms for broadcasting. However, due to issues with the copyright chain authorization of the works, the two agreements could not continue, resulting in two arbitration cases. Case No. 0766 was initiated by Company A, requesting the termination of the video content cooperation agreement and compensation. The arbitration ruling supported Company A's arbitration request. Case No. 0687 was initiated by Company B, requesting that Company A pay the minimum payment specified in the video content cooperation agreement. The arbitration ruling rejected all of Company B's arbitration requests.

 

Typical significance: These two cases belong to a new type of intellectual property dispute arising from the authorization of film and television works for different online platforms. The difficulty and highlight of the cases lie in whether the rights holders need to provide exclusive authorization for IPTV and OTT platforms, as there is no clear legal provision or precedent for such cases. The attorneys conducted in-depth research on relevant regulations of the National Radio and Television Administration and compiled a large number of normative documents. They argued that IPTV and OTT are different types of businesses operating under different network transmission requirements. According to the basic principles of the Copyright Law of the People's Republic of China regarding the right of information network dissemination, it was explained to the arbitration tribunal that using works on different platforms requires not only obtaining legitimate copyright chain documents from the rights holders but also providing different exclusive authorization documents for the two platforms. The arbitration ruling ultimately adopted the attorneys' viewpoint. The case is of great significance for protecting the online broadcasting rights of film and television works and promoting the healthy development of online broadcasting platform businesses.

 

 

 08

Software License and Technical Service Contract Dispute between Datacvg Company and IMPRO Company

 

Case No.: First Instance (2019) Su 05 Zhi Chu No. 507, Second Instance (2020) Supreme Court Zhi Min Zhong No. 1797

 

Attorney: Landing (Shanghai), Zhang Li,

 

Brief introduction of the case: In 2014, the plaintiff (Datacvg Company as the second party) and the defendant (IMPRO Company as the first party) signed a "BI Contract," which stipulated that the plaintiff would provide the "Intelligent Decision-making Platform Software V3.0" and "SAP BOOEM" (Business Objects BI, Edge edition with data integration V4.0) products to the defendant and its affiliates. The payment was divided into five installments, and the defendant paid the first three installments. Later, the two parties signed a "Supplementary Agreement" and a "Project Completion Agreement." In January 2017, the plaintiff delivered the corresponding software as agreed and requested the defendant to pay the remaining amount. However, in July 2017, the defendant sent a "BI Project Stop Notice," claiming that the software delivered by the plaintiff did not meet the contractual standards and refused to pay the remaining amount. The defendant also requested a refund of the amount already paid. As a result, the two parties filed a lawsuit. After the trial, the first instance supported all of the plaintiff's claims regarding the remaining amount and liquidated damages. The case was upheld by the Supreme People's Court in the second instance.

 

Typical significance: This case is a typical dispute over a software license and technical service contract. According to the characteristics of computer software development, the functional requirements of software may be explicitly stated in the contract text or attachments at the time of signing, or they may gradually become clear during the performance of the contract through communication and the phased completion of commissioned work. If the software name and the purpose of software implementation are agreed upon in the contract text, and the functional requirements are negotiated and communicated during the performance of the contract, the confirmed functional requirements constitute supplementary content to the contract and form the content of the software development contract. During the case representation process, Attorney Zhang Li meticulously analyzed and summarized a large amount of evidence and visual charts regarding: 1) the entire factual process of software development, i.e., whether the contract was actually performed as scheduled; 2) various software technical issues, i.e., whether there were defects in the performance of the contract and who was responsible for them. As a result, the plaintiff's claims received full support from the first and second instance courts. This case provides correct guidance for determining software functional requirements and proving technical issues in computer software development contracts, which is conducive to promoting the standardized and orderly development of the software industry.

  

 09

Ruiqian Company and Bohua Company's Dispute over Liability for Damage for Maliciously Initiating Intellectual Property Litigation and Dispute over Liability for Damage for Applying for Preservation of Property during litigation

 

Case No.: (2020) Hu 73 Min Chu No. 704

 

Attorney:：Landing(Shanghai), Zhang Li

 

Brief introduction of the case: On July 16, 2018, the defendant Bohua Company applied to the National Intellectual Property Office for a design patent titled "Eye Washer" (hereinafter referred to as “the patent in question”), and was granted authorization on January 4, 2019. On January 3, 2020, the defendant filed a lawsuit against the plaintiff Ruiqian Company in the Shanghai Intellectual Property Court, alleging infringement of the design patent and claiming that the eye washer products sold by the plaintiff infringed the patent in question. The defendant sought compensation for economic losses of 1 million yuan and applied to the court for property preservation. On March 3 of the same year, the Shanghai Intellectual Property Court ruled to freeze the plaintiff's bank account with 1,071,873 yuan or other equivalent property. On July 1 of the same year, the defendant withdrew the lawsuit, and the court lifted the aforementioned property preservation measures. On July 16 of the same year, the Patent Reexamination Board of the National Intellectual Property Office made a decision on the request for invalidation examination, declaring the patent in question completely invalid.

 

The plaintiff filed a lawsuit against the defendant, claiming that the defendant's shareholders and employees had publicly sold eye washer products as early as April 2017. Despite knowing that the eye washer had already been publicly sold, the defendant still applied for a design patent and filed a patent infringement lawsuit and applied for property preservation. This was a malicious act under the guise of patent protection to strike at business competitors, causing significant economic losses to the plaintiff. After trial, the first-instance judgment ordered the defendant to compensate the plaintiff for economic losses of 160,000 yuan within ten days from the effective date of the judgment.

 

Typical significance: This case is a typical case of malicious infringement litigation involving new patents. Lawyer Zhang provided detailed reasoning and evidence for "subjective malice," clarifying the boundary between legitimate intellectual property rights protection and malicious infringement of others' rights through the misuse of intellectual property litigation. This case serves as a deterrent to the use of intellectual property litigation as a means to maliciously attack competitors. The judgment has a positive legal and social effect and is of great significance for promoting the construction of litigation integrity and strengthening awareness of litigation integrity.

 

 10

"HEXAGON" Trademark Cancellation Case for Failure to Use the Registered Trademark for Three Consecutive Years

 

Case No.: Trademark Cancellation No. [2021] Y027640

 

Attorney：Landing(Qingdao), Yang Yanyan

 

Brief introduction of the case: Hexagon Metrology (Qingdao) Co., Ltd. (hereinafter referred to as Hexagon Company) had its registered trademark "HEXAGON" in Class 6 challenged for cancellation by another party on the grounds of "failure to use for three consecutive years." The cancellation request targeted specific goods approved for use, including a "movable metal greenhouse." Hexagon Company's business scope rarely involves goods in this category. Through communication, it was discovered that one component of a certain "coordinate measuring machine" operated by the company is a "temperature-controlled machine cover," which is a metal structure designed to provide a clean, temperature-controlled, and humidity-controlled environment for the use of the coordinate measuring machine, ensuring optimal performance. Based on this breakthrough, Hexagon Company collected and organized relevant evidence of trademark use, ultimately preventing the cancellation of the trademark.

 

Typical significance: The significance of this case lies in the defense against trademark cancellation for failure to use the registered trademark for three consecutive years. In cases involving goods with highly generalized functional purposes, providing detailed descriptions of the goods' functionality and purpose can help the examiner understand that the goods actually operated by the trademark registrant are similar to the goods approved for use, thereby preventing the cancellation of the trademark.

 

Attachment

Members of the Working Group for Selection of Landing Top 10 IP Cases in 2021

 

(In no particular order and in alphabetical order of the first letter of the last name)

 

1.Cai Shenghui, Landing (Qingdao)

2.Gao Qiang, Landing (Shanghai)

3. Huang Runsheng, Landing (Wenzhou)

4. Li Rong, Landing (Shanghai)

5. Xu Xinjian, Landing (Shanghai)

6. Xu Fuming, Landing (Wenzhou)

7. Zhang Bing, Landing (Shanghai)