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Industries / Hospitality

Hospitality

China’s hotel industry has experienced dramatic growth and it is on the rise to become one of the biggest markets in the world. Our attorneys and agents understand this growing trend through our experiences in different aspects of hospitality brands’ intellectual property matters in China. The combination of the depth of our legal and industrial knowledge help our client maximize their hotel brand’s protection.

Our trademark team provides comprehensive counseling to our clients on all aspects of brand protections in China, including trademark clearance, registration, enforcement, and litigation. Through many years of experiences, our attorneys helped our clients to obtain well-known mark recognition before the Chinese Trademark Office (CTMO), Trademark Review and Adjudication Board (TRAB), and the People’s Courts.

Our domain name team helps our clients perform all aspects of protections, including regular domain name monitor, domain name disputes, unanimous purchases, and other internet-related matters thanked to our Chairman Dr. Gao’s position as a panelist at the China International Economic and Trade Arbitration Commission (CIETAC), one of the four organizations behind the Asian Domain Name Dispute Resolution Centre (ADNDRC).

Beijing East IP have worked on many high level cases and wide spectrum of projects for our clients. Our services include:

  • Trademark clearance search
  • Trademark prosecution, enforcement, and litigation
  • Trademark portfolio counseling
  • Domain name disputes and enforcements
  • Copyright registration and enforcements
  • Patent prosecution across all technical areas before the State Intellectual Property Office (SIPO)
  • Challenging and defending the validity of client’s patents in administrative proceedings before SIPO and the Patent Reexamination Board (PRB)
  • Asserting patent rights in litigation before the People’s Courts
  • Defending clients from infringement before the People’s Courts
  • Patent information consulting services include patentability search, patent validity search, freedom-to-operate (FTO) search, evidence-of-use search, due diligence, and identify, monitor existing and potential competitors activities

 Representative Clients

  • A famous Chinese Peking Duck restaurant
  • A leading English multinational hotels company
  • A leading American multinational hotels companyh
  • A leading American multinational luxury hotel chain
  • A leading American casino and resort operating company

Contact us

Yan ZHANG

Trademark, Copyright and Legal Group - Partner
T +86-10-85189318 O Beijing
  • Determination of Similarity Criteria in Design Infringement

    2017-03-06

    The similarity criteria is always a focus of attention in determination of design infringement. Conventionally, people often discuss whether two designs are alike in determining design infringement without objective analysis standards.

  • Determination of Service Invention

    2017-02-27

    For a service invention-creation, the right to apply for a patent belongs to the entity. After the application is allowed, the entity shall be the patentee. In these cases, the Supreme Court provided a method to determine whether an invention-creation in a patent application is a service invention.

  • Determination of Patent Infringement Related to Components

    2016-12-23

    The type of the infringement of making and selling a component patent that contains a patented component has been expressly determined, in the judicial interpretation published by the Supreme People’s Court in December 2009, as infringing actions of “using” and “selling” a patented component.

  • Properly Selecting Claims to Build the Foundation for Winning a Patent Infringement Litigation

    2016-12-16

    In patent infringement litigations, the right owner usually selects independent claim(s) with largest scope of protection for enforcement of the patent right. Senior patent attorney Bing Wu combines the SPC interpretations and his trial experiences to provide a brief guide on building a good foundation of selecting the rights claims is crucial for winning a patent infringement in China.

  • Supreme People’s Court Sets New IP Standards

    2016-12-01

    In its latest report the Supreme People's Court explains the new patent, trademark and copyright concepts explored through 2015's most complex and major IP disputes.

  • Possible Exemption from the Infringement Liability? Find an Answer Here!

    2016-09-23

    Article 25 of SPC'S Judicial Interpretation on Trial of Patent Infringment Dispute where products infringing a patent right are used, offered to sell, or sold for production or business purposes without knowing said products were manufactured and sold without the authorization of the patentee, and......

  • The Influence of Design Freedom on Judgement of Design Patent Infringement

    2016-09-23

    Article 14 of SPC'S Judicial Interpretation on Trial of Patent Infringment Dispute , the People’s Court, in determining the knowledge level and cognitive ability of the ordinary consumers for a design, generally shall consider the design space of the same or similar type of products to which the patented design belong at the time of the occurrence of the alleged infringement action.

  • No Liabilities for Indirect Infringers? Change Them into Direct Ones

    2016-09-23

    Article 21 of SPC’S Judicial Interpretation on Trial of Patent Infringement Disputes where a provider provides, for production or business purposes and without authorization of the patentee, a product to another party to commit a patent infringement action, with the knowledge that the product is material, device, component, intermediate and so on specialized for exploiting the patent, the People’s Court shall support the right owner if he or it assets that the action of the provider belongs to assisting another party to commit a tort provided in Article 9 of the Tort Law.

  • Trademark “AIR RESCUE & Design”, Distinctive? Or Not?

    2016-09-23

    In April, 2016, Beijing Intellectual Property Court made the first instance judgment, canceled the Rejection Appeal Decision regarding the mark “AIR RESCUE & Design” made by the Trademark Review & Adjudication Board (TRAB), and determined that the TRAB shall make a new decision on the application for review regarding the mark “AIR RESCUE & Design”.

  • A Tale of Two Giants in China: Why Did Facebook Win and Apple Lose

    2016-07-08

    Two U.S. brands recently battled brand squatters in China with very different outcomes. Facebook won. Apple lost. Jason Wang and Amy Hsiao look behind these different results for strategic insights. What are the key issues to bear in mind when an infringer copies your brand – in China? The authors, including the lead attorney for the Facebook case, tell you the secrets.

  • Boundary for Extension of Protection from Patented Process to Product - Claims should be drafted according to possible patterns of infringement

    2016-06-26

    Article 20 Where process or treatment is made to a follow-up product, which was obtained by further processing or treating a product directly obtained by a patented process, the People’s Court shall determine the action does not belong to “using the product directly obtained by the patented process” prescribed in Article 11 of the Patent Law.

  • China Judge’s View: Why Apple Lost and Facebook Won? Selection of Right Law under the Chinese System is the Key!

    2016-06-25

    The Apple-Facebook different outcome is not a result of inconsistency or “double standard”; rather, it is a result of applying the most fitting sets of laws -- under the Chinese system -- to the facts in each case. Although the two cases involve similar facts, the attorneys in each case have relied on different sets of law as their primary arguments and this strategy difference has had a crucial impact on the final outcome.

  • Effective Way for Collecting Evidence to Show Monetary Damage

    2016-06-20

    Article 27 Where it is hard to determine a right owner’s actual loss caused by infringement, the People’s Court shall request the right owner to provide evidence regarding benefit that the infringer has obtained from the infringement according to Article 65, Paragraph 1 of the Patent Law.

  • Rules and Cases Review Regarding Claim Interpretation under the Patent Law of the People’s Republic of China

    2016-04-28

    Article 59 of the Patent Law of the People’s Republic of China (“Chinese Patent Law”) provides that: The protection scope of a patent right for invention or utility model shall be determined by the terms of the claims. The description and the appended drawings may be used to interpret the content of the claims.

  • Application of the Doctrine of Equivalents and the Dedication Rule in Patent Infringement Case for Method Claims

    2016-04-28

    The extent of protection for an inventioCXVZCXVVCVCVXVCVn patent includes not only the extent determined by the technical features literally recited in the claims, but also the extent determined by the equivalent technical features.

  • Protection for Prior Copyright in Trademark Disputes

    2016-04-18

    In the recent practice, the famous carmaker Tesla Motors, Inc. filed two civil lawsuits in China in September 2013 before Beijing Third Intermediate Court, against ZHAN Bao Sheng. ZHAN is the registrant of the disputed trademark of the “TESLA TESLA MOTORS and T Design” in China, where Tesla Motors, Inc. has filed disputed cancellations before the Trademark Review and Adjudication Board (TRAB) as well.

  • New Practice and Tendency for the Application of the Burden of Proof in Patent Enforcement in China

    2016-04-18

    The patentee who wants to enforce his patent in China should pay attention to the principle of allocating the burden of proof which is one of the most important factors affecting whether the intended goal could be achieved in patent infringement litigation.

  • Hot Debate over Patent Jurisdiction

    2016-04-18

    Forum shopping is an important issue in a patent infringement lawsuit. Under the Chinese Civil Procedure Law, a plaintiff in an infringement case shall file the litigation with a court at the place of infringement or at the place where the defendant is domiciled. However, it often happens that the alleged infringing manufacturer or seller is not in the jurisdiction where the plaintiff wishes to bring the litigation.

  • 【Trademark】Corresponding Association between English Commercial Sign and Chinese Equivalent

    2015-10-26

    A common question regarding English commercial signs, such as trademarks, personal names, or trade names, is how to protect their Chinese equivalent. On the one hand, the holder of the English commercial sign failed to select the Chinese equivalent for some reasons, or failed to have it registered as a trademark in a timely matter. On the other hand, the holder may have used the Chinese equivalent together with the English mark in commerce, or have used the Chinese equivalent passively.

  • 【Trademark】Protection of the Chinese Equivalent for its English Trademark

    2015-08-24

    When foreign brands enter into the China market they are generally translated into Chinese, either for use by the brand owners, or by Chinese media and Chinese public. According to authorities including the China Supreme Court, some Chinese equivalents for its English trademarks are protected, such as GOOGLE, CANON, LAND ROVER, HARLEY (of Harley-Davidson), MICHELIN, PORTS INTERNATIONAL, GIOGRIO ARMANI, SOTHEBY’S, RITZ CARLTON, and FREDDIE MAC. Others are not protected, such as VIAGRA, SONY ERICSSON, DELL, MICHAEL JORDAN, and RANDOM HOUSE. And still others are protected in one case while not protected in another, such as LAFITE.

  • 【Trademark】Determination of Similarity between Chinese Equivalent and English Mark: Trademark Administrative Lawsuit of “FREDDIE MAC in Chinese”

    2015-07-30

    In June 2015, the Beijing High Court (second instance court) sustained the decisions of the Beijing First Intermediate Court (first instance court) and the Trademark Review and Adjudication Board (TRAB), and held that the opposed mark “FANG DI MEI in Chinese” (FREDDIE MAC in Chinese) constitutes similar to the cited mark “FREDDIE MAC” owned by Federal Home Loan Mortgage Corporation (“Freddie Mac”) in terms of similar services in Class 36. The key issue of this case is the determination of similarity between Chinese equivalent and English mark.

  • INTERNATIONAL LICENSING

    2015-05-26

    Article 11 of the Chinese Patent Law (2001) generally provides to what extent a patent can be protected under the Chinese law and, on the other hand, what actions are determined to infringe a patent right. Further, a recent court decision by the Supreme People’s Court (SPC) demonstrates that for issues other than those provided in Article 11, the licensing contract shall be the final word on whether an infringement has occurred.

  • Thermostable Glucoamylase - Feasible Way to Define a New Protein Patent and Subsequently Obtained Scope of Protection

    2015-05-18

    This is the first case for successful enforcement of biological patent in China, which clarifies a feasible definition of new protein patent, i.e. defining homology, origin (species), and function simultaneously. Furthermore, this case provides directions to judgment of future invalidation and infringement cases of new protein patents.

  • REPETITIVE LITIGATION BASED ON THE PRINCIPLE OF DOUBLE JEOPARDY

    2015-04-29

    The patentee of this design, Zhiming LI, holds a design patent No. ZL03319125.5, titled “Toothbrush Handle”, which was granted and announced on September 17, 2003. On the same day of the announcement, the patentee authorized Guangdong Sugere Daily Chemicals Co., Ltd. (“Sugere Company” hereinafter, the legal representative of this company is Zhiming LI himself) to make and sell the patented product exclusively.

  • INSPIRATION ON USAGE OF EVIDENCE AND APPLICATION OF GRACE PERIOD FOR NON-PREJUDICIAL DISCLOSURES

    2015-04-22

    In patent invalidation or infringement procedures, to prove an uncertain publication date of a prior art or prior design, a plurality of evidences is generally required to form a complete and reliable chain of evidence. Evidence collection and organization usually rely on patent attorneys’ understanding of law and practical experiences. Within a novelty grace period, certain pre-filing disclosures will not cause lose of the novelty of the subsequent patent application. There are rigorous restrictions on such grace period disclosures. It is of vital importance to determine whether a disclosure of an invention-creation before filing can be regarded as a grace period disclosure.

  • Stand - The First Application Of An Earlier Design In Non-Infringement Defense

    2015-04-15

    Prior design defense is a very important non-infringement defense system in design patent infringement lawsuits, which allows the People's Court to determine whether an infringement is established simply by determine whether the accused design constitutes similar to the prior design without evaluation of validity of the design patent.[1] This case shows that although a design patent application was submitted before the filing date of the involved patent and published thereafter the filling date (hereinafter referred to as the “earlier design”) does not constitute as prior design. It can be used, however, as the basis for a non-infringement defense by referring to the prior design defense rules, thereby substantially expanding the applicable scope of prior design defense.

  • Sticker for Tableware - Factors for Determine Products of The Same or Similar Categories in Design Patent Infringement

    2015-04-08

    In design patent infringement disputes, there is a certain number of copies or imitations across categories. Regarding the problem whether such copy and imitation constitutes infringement, there are different practices among courts. Usually, the question of whether the alleged infringing product and the product incorporating the patent concerned belong to products of identical or similar categories is the prerequisite to whether the alleged infringing product falls into the protection scope of the design patent concerned. Therefore, if the categories of products are neither identical nor similar, a conclusion of non-infringement can be obtained without comparison.

  • Determination of New Evidence and Allocation of Burden of Proof in Litigation over Infringement of Patent Process for Making Non-new Products

    2015-04-02

    New evidence should be determined according to Article 10 of Interpretation of the Supreme People's Court on Several Issues Concerning Application of the Trial Supervision Procedure of the Civil Procedure Law of the People's Republic of China. Regarding allocation of burden of proof in litigation over infringement of patent process for making non-new products, it may be determined according to the principle of fairness and that of honesty and good faith, taking into consideration such factors as the ability to provide evidence. If the patentee can prove that the product in question is the same as that made by the patent process, and that it has made reasonable effort to prove that the manufacturing process of the product in question falls within the scope of protection of the patent process, using this as a basis and considering the known facts and common experience, it can be presumed that it is very likely that the alleged infringer has used the same process, therefore imposing on the alleged infringer the burden of proof to show that its manufacturing process is different from the patent process.

  • Application of the Doctrine of Equivalents

    2015-04-01

    In determining whether a patent infringement is established based on the doctrine of equivalents (“DOE”), attention should be paid to which feature in a claim is compared against which feature of an accused infringing product. Only those features of a product that are not identical to their counterparts in the claim should be taken into consideration for the purpose of DOE. Determination under DOE is different from the determination on inventiveness during patent prosecution – the requirement of “three substantially, one ordinarily” should be met.

  • Socket (Ground-Fault Current Interrupters GFCI) - The Influence of Functional Features on the Overall Visual Appearance of a Design

    2015-04-01

    Functional features play important role in the determination of identity or similarity between two designs. When judging whether a design is similar to a prior design, functional features should be considered as “having no influence on the overall visual appearance of a design’s product,” so as to avoid the possible situation of “monopolizing a product’s function on the pretext of protecting a product’s design.”

  • FEASIBLE WAY TO DEFINE A NEW PROTEIN PATENT AND SUBSEQUENTLY OBTAINED SCOPE OF PROTECTION

    2015-03-25

    With reference to new protein inventions, applicants always define biological sequences by the combination of homology and function, so as to obtain a broader scope of protection. However, considering that the association between the primary structure and the function of a protein is highly unpredictable, thus defined protein claim is always considered as not supported by the description and not conforming to Article 26.4 of the Chinese Patent Law. Therefore, discussions in this filed focuses on a proper manner to define a new protein patent and subsequently obtained protection scope. This is the first case for successful enforcement of biological patent in China, which clarifies a feasible definition of new protein patent, i.e. defining homology, origin (species), and function simultaneously. Furthermore, this case provides directions to judgment of future invalidation and infringement cases of new protein patents.

  • Crystalline Monohydrate of Tiotropium Bromide - How to Judge Inventiveness of a Crystalline Compound

    2015-03-18

    This case clarifies that in the determination of inventiveness of a crystalline compound, the wording “structurally similar compounds” specifically refers to compounds having the same central part or basic ring, and has nothing to do with comparison between microcrystalline structures. The microcrystalline structure difference shall be considered only if it brings unexpected technical effect.

  • How to Construe a Close-ended Claim - Injection Consisting of Adenosine Disodium Triphosphate and Magnesium Chloride

    2015-03-11

    The highlight of this case is the confirmation that generally a close-ended claim of a chemical composition shall be construed as the composition merely consisting of the indicated components, and including no other components but impurities in a normal amount, while adjuvants do not belong to the impurities.

  • HOW TO JUDGE INVENTIVENESS OF A CRYSTALLINE COMPOUND BOEHRINGER INGELHEIM PHARMA GMBH & CO.KG V. PATENT REEXAMINATION BOARD (ARTICLE NO. 23 FROM “CHINA PATENT CASE REVIEW 2015” BY BEIJING EAST IP LTD.)

    2015-03-11

    With reference to inventive step of compound claims, it is stipulated in the Guidelines for Patent Examination that for a compound NOT similar in structure to a known compound, it will be regarded as inventive when it has a certain use or effect where a compound that IS similar in structure to a known compound, it might be regarded as inventive only if it has an unexpected use or effect. As can be seen, it is important to judge whether a compound is structurally similar to a known compound. This case clarifies that in the determination of inventiveness of a crystalline compound, the wording “structurally similar compounds” specifically refers to compounds having the same central part or basic ring, and has nothing to do with comparison between microcrystalline structures. The microcrystalline structure difference shall be considered only if it brings unexpected technical effect.

  • HOW TO CONSTRUE A CLOSE-ENDED CLAIM SHANXI ZHENDONG TAISHENG PHARMACEUTICAL CO., LTD. ET.AL. V. HU XIAOQUAN (ARTICLE NO. 22 FROM “CHINA PATENT CASE REVIEW 2015” BY BEIJING EAST IP LTD.)

    2015-03-11

    The patentee, HU Xiaoquan, owns a patent for invention No. ZL 200410024515.1, titled "Process for the Preparation of an Injection of Adenosine Disodium Triphosphate and Magnesium Chloride," wherein claim 2 recites the additional technical features, "a freeze-dried powder injection of adenosine disodium triphosphate and magnesium chloride for injection, consisting of adenosine disodium triphosphate and magnesium chloride at the ratio by weight of 100 mg to 32 mg."

  • Pharmaceutical Composition for Use in Diabetes Treatment - Admission of Post-filing Experimental Data for Inventiveness

    2015-03-04

    This case highlights the premise to admit the post-filing experimental data for determination of inventiveness, i.e. such data should direct to the technical effect described in the original application documents.

  • ADMISSION OF POST-FILING EXPERIMENTAL DATA FOR INVENTIVENESS TAKEDA PHARMACEUTICAL CO.,LTD. V. PATENT REEXAMINATION BOARD (ARTICLE NO. 21 FROM “CHINA PATENT CASE REVIEW 2015” BY BEIJING EAST IP LTD.)

    2015-03-04

    The patentee, Takeda Pharmaceutical Co.,Ltd. (hereinafter “Takeda”), owns a invention patent No. ZL96111063.5 titled as “Pharmaceutical Composition for Use in Treatment of Diabetes” (hereinafter “the patent concerned”). Claim 1 was “pharmaceutical composition useful for prophylaxis or treatment of diabetes, diabetic complications, glucose or lipid metabolism disorders, which comprises an insulin sensitivity enhancer selected from pioglitazone or a pharmacologically acceptable salt thereof, and Sulfonylurea as insulin sensitivity enhancers.”

  • Admission of Post-filing Experimental Data and the Binding Effect of Examination Result in Other Countries

    2015-02-25

    Experimental data is vital to the patentability requirements of inventiveness, support, and enablement for chemical/medical application. During the substantive examination, the applicant may intend to supplement experimental data to support inventiveness after filing, which is called “post-filing experimental data”. It is controversial whether post-filing experimental data shall be admitted. This article discusses admission of post-filing experimental data, as well as the binding effect of examination result in other countries based on analysis on an actual case.

  • THE DETERMINATION OF THE DATE WHEN A PATENT RIGHT IS DECLARED INVALID

    2015-02-18

    This judgment illustrated that the date when a patent right is declared invalid shall be the decision date of the patent invalidation proceeding.

  • THE INFLUENCE OF LICENSE CONTRACT ON DETERMINATION OF INFRINGEMENT

    2015-02-11

    This case relates to invention patent No. ZL 96107072.2 of the patentee, Qianping AO. After issuance of the patent, the patentee issued a license to Shenzhen DNS Industries Co., Ltd. (“DNS Industries” hereinafter), agreeing that DNS Industries can further permit a third party to exploit the patent in a manner of commissioned processing such as OEM or ODM.

  • THE APPLICATION OF JUDICIAL APPRAISAL IN PATENT INFRINGEMENT LITIGATION

    2015-02-04

    Zhejiang Huali Communication Group Co., Ltd. (hereafter referred to as “Huali Communication”) is the sole and exclusive licensee of a licensing contract for exploitation (in which the patentee does not retain any right to exploit its technology) of an invention patent titled “CDMA/GSM dual-mode mobile communication method and communication device thereof” with Patent No. ZL02101734.4 (hereafter referred to as “the involved patent”).

  • THE FIRST APPLICATION OF THE PRINCIPLE OF CONDUCTING EXAMINATIONS EX OFFICIO UNDER RULE 72.2 OF THE IMPLEMENTING REGULATION OF THE CHINESE PATENT LAW (2010)

    2015-01-27

    Examination Decision No. 19631, which is related to the validity of patent No. ZL95190642.9, titled “Shaving Apparatus”, is the first decision that involves the petitioner withdrew the invalidation request and the examination of the request for invalidation was not terminated. This is the PRB’s first application of the principle of conducting examinations ex officio under Rule 72.2.

  • THE APPLICATION OF PRIOR ART DEFENSE IN PATENT INFRINGEMENT LITIGATION

    2015-01-21

    The principle of prior art defense established in patent infringement litigation means that the scope of protection of a patent right shall not encompass the prior art. The rationale of the principle is that the public have the right to freely practice the prior art known to the public, and no one is entitled to claim the prior art into the scope of an exclusive patent right, or else the public interest will be damaged. In addition to examining the legal validity of the patent right in the patent invalidation procedure, examining an accused infringer’s assertion of the prior art defense in the patent infringement litigation is advantageous for timely resolving disputes, reducing litigation exhaustion of the parties, and realizing unification of equity and efficiency. The prior art defense and its difference from determination of novelty judgment or inventiveness in the patent invalidation procedure are articulated in this case, which facilitate the parties’ understanding the standards of application of the prior art defense by the courts in China.

  • 【TRADEMARK】PROTECTION FOR PRIOR COPYRIGHT IN TRADEMARK DISPUTES

    2015-01-20

    As prescribed in the Chinese Trademark Law, application for registration of a trademark shall not create any prejudice to another person’s prior right, which includes prior copyright. Prior copyright is considered as an important aspect in trademark disputes with various advantages to claim against the disputed trademark, such as automatic protection without registration, cross-jurisdiction protection and cross-Class protection.

  • AN INVENTION-CREATION SHOULD BE EVALUATED AS AN ORGANIC WHOLE

    2015-01-14

    A technical solution refers to a collection of technical means that are adopted to solve a technical problem and utilize the laws of nature. Generally, a technical means is embodied by one or more technical features. When an invention-creation, especially inventiveness of a claim, is evaluated, usually a standard three-step method is adopted. However, there is a deviation that an invention-creation is NOT evaluated as an organic whole and a claim is divided as several fragmented parts and the respective parts are evaluated separately. However, such kind of evaluation is inappropriate. In this case, the Supreme People’s Court emphasized that an invention-creation should be evaluated as a whole.

  • LIMITATION OF USAGE ENVIRONMENT FEATURE ON PROTECTION SCOPE OF CLAIMS

    2015-01-07

    The usage environment feature refers to a technical feature for describing the environment or conditions under which an invention is applied. The usage environment feature included in a claim is a part of the essential technical features of the claim, contributes to define the protection scope of the claim, and thus shall be considered when determining the protection scope of the claim.

  • WEIGHT OF EVIDENCE OF TRADEMARK REGISTRATION CERTIFICATE AND TRADEMARK GAZETTE IN DETERMINING COPYRIGHT OWNERSHIP

    2015-01-06

    On October 15, 2014, Rule 14 of the Provisions of the Supreme People’s Court (SPC) on Several Issues concerning the Trial of Administrative Cases Involving the Granting and Determination of Trademark Right (Draft for Comment) was released by the SPC with two different opinions regarding the weight of evidence of trademark registration certificate and trademark gazette in determining copyright ownership. The first opinion provides that, “trademark gazette, trademark registration certificate, etc. may serve as prima facie evidence to ascertain the copyright owner or the interested party thereof. Where the applicant of the disputed trademark opposes, that applicant has the burden to provide counter evidence to support his opposition.”

  • PATENTEE’S BURDEN OF PROOF IN INFRINGEMENT CASE INVOLVING PATENTED PROCESS FOR OBTAINING NEW PRODUCTS

    2014-12-31

    According to Article 61, Paragraph 1 of the Chinese Patent Law (2009), a patentee may choose to shift its burden of proof for infringing process to the defendant when the patented process is for obtaining new product. However, to take use of such convenience, the patentee has to satisfy some preconditions. This case illustrates that the patentee have to submit preliminary evidence regarding “new product.” Based on this case, this article will discuss all the preconditions for application of Article 61, Paragraph 1 with an overview.

  • Allocation of the Burden of Proof Manfred A. A. Lupke V. Weifang Zhongyun Machine Co., Ltd. Et. Al. (Article No. 11 from “China Patent Case Review 2014” By Beijing East IP Ltd.)

    2014-12-24

    The patentee Manfred A. A. Lupke (hereinafter referred to as “Lupke”) owning an invention patent No. ZL95192937.2 brought a lawsuit before the Tianjin Intermediate People’s Court against Weifang Zhongyun Machine Co.,Ltd. (hereinafter referred to as “Zhongyun Machine”) as the producer of a corrugated pipe manufacturing equipment, and Tianjin Shengxiang Plastic Pipe Industry Co., Ltd. (hereinafter referred to as “Shengxiang Industry”) as the user of the equipments, alleging that the corrugated pipe manufacturing equipment produced by Zhongyun Machine has infringed the patent.

  • 【TRADEMARK】TRADEMARK DISTINCTIVENESS AFFECTS THE DETERMINATION OF PREEMPTIVE REGISTRATION IN BAD FAITH

    2014-12-19

    The latter half of Article 32 of the Chinese Trademark Law 2013 (Article 31 of the Chinese Trademark Law 2001) stipulates that“ preemptive registration by unfair means of a trademark with certain fame already used by another party” shall not be approved (“Bad Faith Filing Provision”). From the literal understanding of such provision, the fame of the trademark with prior use and the bad faith of the applicant of the disputed trademark are two requirements for application of law for the Bad Faith Filing Provision.

  • JUDGMENT OF INFRINGEMENT UPON PATENTED PROCESS THROUGH COMPARISON BETWEEN PRODUCTS SHICHANG XU V. SONY (CHINA) CO. LTD. ET AL. (ARTICLE NO. 10 FROM “CHINA PATENT CASE REVIEW 2014” BY BEIJING EAST IP LTD.)

    2014-12-17

    A method patent is different from a product patent in that it protects a dynamic operation process. How to compare between the method used by the defendant and the patented process is a key point when the court tries an infringement case involving a process patent. In this case, by finding the technical feature difference of the products, the court held that the two processes are neither identical nor equivalent and thus the defendant does not infringe upon the plaintiff’s patent. This shows a new way for judging infringement upon a process patent.

  • CONDITION TO APPLY THE DOCTRINE OF ESTOPPEL (DOE)

    2014-12-10

    The Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases stipulates, in Rule 6, “where the applicant or patent right owner abandons a technical solution through amendments to the claims and/or specification or observations during the prosecution of the application or the invalidation proceedings of the patent, the court shall not support the right owner’s claim of reclaiming the abandoned technical solution back into the protection scope in the infringement litigation case.” Therefore, application of the DOE is premised with a condition that the right owner has abandoned the technical solution through amendments or observations during the patent prosecution or invalidation proceedings.

  • THE STANDARDS FOR DETERMINING AN EQUIVALENT FEATURE

    2014-12-03

    An equivalent feature is a feature that, as compared to the feature described in a claim, performs substantially the same function by substantially the same means, produces substantially the same effect, and can be associated by an ordinary person skilled in the art without any inventive work. While determining whether a prosecuted product falls within equivalent infringement, the means, function, effect, and inventive work should be determined in the above order. Only when all four elements of a feature meet the above conditions, the feature can be determined as an equivalent feature.

  • DIVISION OF TECHNICAL FEATURES IN PATENT INFRINGEMENT

    2014-11-26

    When determining whether an infringement is established by employing the equivalent doctrine, it is necessary to compare technical features of an involved patent with those of an alleged infringing product, so division of technical features will influence determination of an equivalent feature. In this case, the Supreme People’s Court suggests that for division of technical features of a claim, a technical unit that is able to implement a relatively independent technical function generally should be considered as one technical feature, and it should not designate multiple technical units that implement different technical functions as one technical feature.

  • THE INFLUENCE OF AMBIGUITY IN CLAIM ON THE PATENT INFRINGEMENT

    2014-11-19

    The case relates to an infringement dispute between Patentee, Wanqing BAI, and Chengdu Nanxun Marketing Service Center (hereinafter referred to as “Nanxun Center”), Shanghai Tianxiang Industry Co.,Ltd. (hereinafter referred to as “Tianxiang Industry”).

  • IMPORTANCE OF SPECIFICATION ON CLAIMS INTERPRETATION

    2014-11-12

    The patentee, Zhaoqing New Leader Battery Industry Co.,Ltd. et.al.(“New Leader Battery” hereinafter), has a utility model patent No. ZL01234722.1 titled “Mercury-free Alkaline Button Cell Battery.” The involved patent underwent three rounds of invalidation after the date of authorization proclamation. Finally, the Patent Reexamination Board (the “PRB” hereinafter) made the No. 13560 decision on the request for invalidation (hereinafter referred to as the invalidation decision) on June 9, 2008 declaring that all claims of the involved patent are invalidated. In the subsequent administrative litigation, both the court of first instance and second instance judged that the invalidation decision should be reversed.

  • HOW TO INTERPRET INCONSISTENT CLAIMS WITH DETAIL SPECIFICATIONS

    2014-11-05

    Xi’an Qinbang Telecommunication Material Co.,Ltd. (hereinafter referred to as “Qinbang”) is the patentee of Chinese Invention Patent No. ZL01106788.8 titled “Method for Manufacturing Smooth Metal-shield Composite Belt.” Qinbang brought a patent infringement lawsuit to the Xi’an Intermediate People’s Court against three defendants including Wuxi Longsheng Cable Material Factory (hereinafter referred to as “Longsheng Factory”) and other two entities, claiming monetary damages and injunctions.

  • INTERPRETING CLAIMS IN MULTIPLE WAYS

    2014-10-29

    Claim interpretation is the key to determine the scope of protection of claims. The meaning of the claims can be determined based on internal and external evidence using a variety of interpretation methods, wherein the methods of interpretation can verify each other, eliminating contradictory, uncertain or ambiguous conclusions in order to obtain reasonable and accurate protection scope of the claims.

  • THE DETERMINATION OF OBVIOUS MISTAKES IN PATENT APPLICATION

    2014-10-24

    The judge held in this case that, if, by looking into the nature and degree of the typing mistakes, the person skilled in the art can naturally identify the typing mistakes and appreciate the corrected meaning of the typing mistakes, the typing mistakes shall be interpreted in a corrected manner. Consequently, negative effect of the typing mistakes on validity of valuable patents can be reduced, especially in the current circumstance where there exists no post-grant correction procedure for correcting typos and other clerk errors.

  • THE ROLE OF THE “PURPOSE OF INVENTION” PLAYS IN CLAIM CONSTRUCTION

    2014-10-15

    The judge proposed an important principle for claim construction in this case, holding that the claim construction should comply with the purpose of invention described in the detailed description of the patent application.

  • GRANTING CROSS-CLASS PROTECTION WHERE GOODS / SERVICES ARE DEEMED SIMILAR – BASED ON BREAKTHROUGH PRACTICES OF TRADEMARK ADMINISTRATIVE AND JUDICIAL DEPARTMENTS ON CLASSIFICATION OF SIMILAR GOODS AND SERVICES

    2014-09-28

    With China’s rapid economic developments, the relevance of similar goods and services changes with the method of commercial trading, consumption habit, and consumer psychology. However, the Classification of Similar Goods and Services may not include all the goods and services, and there are often contradictions when determine whether goods and services are similar or not. There is a new trend that the Chinese Trademark Office (CTMO), the Trademark Review and Adjudication Board (TRAB), and the courts begin to grant cross-class protection by deeming goods and services similar.

  • INFLUENCE OF THE COEXISTENCE AGREEMENT ON REGISTRABILITY OF TRADEMARKS

    2014-09-17

    Avago Technologies General IP (Singapore) Pte. Ltd. (hereinafter referred to as “Avago”), successfully obtained registration for its core trademark (A Logo) (Registration No. 5226289, red color designated) in China in January 2010.
    The application for registration of the A Logo was filed in the name of Argos Acquisition Pte. Ltd. (hereinafter referred to as “Argos”) in 2006 (the A Logo was later assigned to Avago in 2009). In 2008, the A Logo was rejected by the Chinese Trademark Office (CTMO) on the ground that it shall be deemed similar to the prior registered trademark (International Registration No. 789052) in terms of similar goods. Avago filed a rejection appeal before the TRAB.

  • DETERMINATION OF INFRINGEMENT AND USE OF TRADEMARK IN OEM BUSINESS

    2014-09-09

    Original Equipment Manufacturer, commonly known as “OEM,” is and will continue to be a huge business in China. Whether OEM constitutes trademark infringement is of great practical significance to foreign companies whose manufacturing bases are in China, and the issue has always been the subject of hot debates. In OEM business, a local Chinese company manufactures the products on behalf of a foreign brand owner with the foreign brand owner’s trademark, but the products are solely for export and not sold in China.

  • “DUCK KING IN CHINESE” RETRIAL AS CHINA COURTS 2013 TOP 10 INNOVATIVE IP CASE

    2014-09-09

    In April 2014, the Supreme People’s Court (SPC) announced the list for China Courts 2013 Top 10 Innovative IP Cases. These Top 10 Innovative IP Cases were selected from over one hundred thousand (100,000) decisions of nationwide courts in China rendered in 2013, which have significant and innovative contribution to application of the laws and regulations.

  • PROTECTION FOR PRIOR COPYRIGHT IN TRADEMARK DISPUTES

    2014-09-05

    In the recent practice, the famous carmaker Tesla Motors, Inc. filed two civil lawsuits in China in September 2013 before Beijing Third Intermediate Court, against ZHAN Bao Sheng. ZHAN is the registrant of the disputed trademark of the “TESLA TESLA MOTORS and T Design” in China, where Tesla Motors, Inc. has filed disputed cancellations before the Trademark Review and Adjudication Board (TRAB) as well. In one of the civil lawsuits, Tesla Motors, Inc.

  • Admissibility of New Evidence during Trademark Administrative Trials

    2014-08-29

    Since the implementation of the Chinese Trademark Law 2001, the courts (the Beijing First Intermediate Court as the first instance court and the Beijing High Court as the second instance court) have been granted the final adjudication power for administrative cases involving the authorization and confirmation of trademark rights (hereinafter referred to as “Trademark Administrative Cases”), where interested parties sued the Trademark Review and Adjudication Board (TRAB) to court in connection with its administrative decisions in trademark rejection review, trademark dispute, and trademark cancellation review.

  • STARTING TIME OF APPLICATION FOR THREE-YEAR NON-USE TRADEMARK CANCELLATION

    2014-08-15

    The cases of three-year non-use trademark cancellation have been on the rise in the recent years and have attracted more and more attention. However, as to some special circumstances (such as the trademark obtaining registration after the opposition procedure and the international trademark registration designating China for territorial extension), the registration date (the date when the exclusive right to use a trademark is granted) may probably be inconsistent with the date when the registration status has been confirmed (the date when the trademark administration or judicial authority finally determines and grants the trademark right).

  • RESTRICTION ON DISCLAIMER TO PART OF EXCLUSIVE RIGHT TO USE THE TRADEMARK

    2014-08-08

    The earliest Chinese regulations with regard to “examination on the disclaimer to the exclusive right to use the trademark” appeared in Trademark Examination Rules, which was promulgated by the Chinese Trademark Office (CTMO) in 1994. Rules 3 and 4 of the CTMO Notice on Issues concerning Trademark Examination Notification [Shang Biao (2000) No. 80] further stipulated the specific circumstances where the exclusive right to use the trademark should be disclaimed.

  • COMMENT AND ANALYSIS ON WELL-KNOWN TRADEMARKS IN THE INTERNET INDUSTRY

    2014-08-06

    In April 2012, the Trademark Review and Adjudication Board (TRAB) announced the latest list of well-known trademarks recognized in China, including “Sina & design, Sina, SINA NET in Chinese,” and “SOHU in Chinese.” Up to date, around ten trademarks have been recognized as well-known in the Internet industry in China.

  • CONFLICT BETWEEN ENTERPRISE NAME AND PRIOR TRADEMARK – COMMENT AND ANALYSIS ON ARTICLE 58 OF THE CHINESE TRADEMARK LAW 2013

    2014-08-01

    The newly revised Chinese Trademark Law 2013 adopts Article 58 which prescribes as follows: “Where the registered trademark or unregistered well-known trademark of others is used as a trade name contained in the enterprise name, which is likely to mislead the public and constitutes unfair competition, it shall be adjudicated under the Chinese Anti-Unfair Competition Law.”

  • JUDGMENT ON “PREEMPTIVE REGISTRATION BY UNFAIR MEANS” IN ARTICLE 31 OF THE CHINESE TRADEMARK LAW

    2014-07-25

    In February 2013, the Supreme People’s Court (SPC) rendered a decision [The SPC Administrative Order (2012) Zhi Xing Zi No. 9] (the SPC No. 9 Order) on the re-trial case of the trademark “Duck King in Chinese” filed by Shanghai Huai Hai Duck King Roast Duck Restaurant Co., Ltd. (previously named as Shanghai Huai Hai Quanjude Roast Duck Restaurant Co., Ltd., hereinafter as “Shanghai Duck King”).

  • ENFORCING YOUR RIGHTS – IP LITIGATION IN CHINA

    2014-07-24

    More and more multinational companies (MNCs) are realising that, as an indispensable part of a global IP strategy, importance of successfully enforcing IP right in China cannot be overstressed. Besides administrative remedy, initiating IP infringement lawsuit in China is widely considered as a feasible yet challenging measure for enforcing IP rights.

  • TRADEMARK PROSECUTION CASE OF “DUCK KING IN CHINESE”: PRIOR RIGHTS PROTECTION SHALL COORDINATE WITH MAINTENANCE OF MARKET ORDER

    2014-07-21

    This article is the English translation for Mr. Wang’s article in Chinese published on China Trademark magazine (Issue 3, 2011). China Trademark magazine is sponsored by China Trademark Association under supervision of the State Administration for Industry and Commerce (SAIC) overseeing the Chinese Trademark Office (CTMO) and the Trademark Review and Adjudication Board (TRAB).

  • COMMENTS ON DUCK KING TRADEMARK RE-TRIAL LISTED AS NO. 7 OF CHINA 2013 TOP 10 INNOVATIVE IP CASES

    2014-05-08

    The DUCK KING trademark re-trial is listed as No. 7 of China 2013 Top 10 Innovative IP Cases (published by the Supreme People’s Court on April 21, 2014).
    The English translation below [CASE BRIEF and INNOVATIVE SIGNIFICANCE] is prepared by Beijing East IP Law Firm for reference merely, based on Chinese Language Version published by the Supreme People’s Court. Beijing East IP Law Firm also provides comments and analysis on this case.

  • TRADEMARK DISTINCTIVENESS AND APPLICATION OF BAD FAITH FILING PROVISION UNDER ARTICLE 31 OF THE CHINESE TRADEMARK LAW

    2014-04-21

    Article 31 of the Chinese Trademark Law states that “using unfair means to preemptively register the trademark of some reputation of another person has used” shall not be registered. According to the provision’s language, fame of the prior mark and the bad faith of the trademark applicant are the two applicable elements of the bad faith filing prescribed by Article 31.

  • GUIDELINES ON GUI-RELATED DESIGN PATENT APPLICATION

    2014-04-16

    On March 17, 2014, the State Intellectual Property Office (SIPO) issued Order No. 68. Under this Order, graphic user interface (GUI) is becoming eligible for design patent protection as of May 1, 2014.

  • Aspects Deserved Attention for Patent Filing Regarding Invention-Creations Made In China

    2013-12-27

    Since the reform and opening-up in 1978, China has seen huge increase of foreign direct investment. More and more foreign companies have set up their R&D centers in China, hence making more and more invention-creations therein.

  • RITZ-CARLTON: WELL-KNOWN MARK IN CHINA

    2013-11-25

    As a famous luxury hotel band around the world, the RITZ-CARLTON mark owned by Ritz-Carlton hotel was recognized by China court recently. Both the trial court (Beijing First Intermediate Court) and the appellate court (Beijing High Court) overruled the decision of the Trademark Review and Adjudication Board (TRAB), and recognized the RITZ-CARLTON mark on hotel services and restaurant services as a well-known mark.

  • CIVIL REMEDY PLAINTIFF MAY SEEK AGAINST DEFENDANT AND COUNTERMEASURE DEFENDANT COULD USE AGAINST PLAINTIFF IN PATENT INFRINGEMENT LAWSUIT IN CHINA

    2013-09-23

    China is becoming an arena of significant importance where companies are taking advantage of patent portfolios against competitors. According to “2012 Intellectual Property Rights Protection in China” issued by State Intellectual Property Office of China, in 2012, local people’s courts around China accepted 9,680 patent civil cases, with year-on-year increase of 23.80%.

  • SHANGHAI HIGH PEOPLE’S COURT ISSUED GUIDANCE ON HEARING REWARDS OR REMUNERATIONS DISPUTES OF SERVICE INVENTION MADE BY AN EMPLOYEE-INVENTOR OR DESIGNER

    2013-09-22

    This "Guidance on Hearing Rewards or Remunerations Disputes of Service Invention Made by an Employee-Inventor or Designer" was promulgated by IP tribunal of Shanghai High People’s Court in June, 2013.

  • KEY AMENDMENTS OF NEW CHINESE TRADEMARK LAW 2013

    2013-09-04

    On August 30, 2013, China National People’s Congress enacted the amended the Chinese Trademark Law, and the new Chinese Trademark Law shall come into effect as of May 1, 2014. The current Chinese Trademark Law was enacted in 1982, and amended in 1993 and 2001 respectively. In December 2012, June 2013 and August 2013 respectively, the National People’s Congress has reviewed the draft amendments of the Chinese Trademark Law three times. We have sorted out the key amendments of new Chinese Trademark Law. Please see below the brief.

  • THE SUPREME COURT INTERPRETS ARTICLE 33.

    2013-04-26

    The Supreme Court held that “as long as the content inferred directly and unambiguously from the original disclosure is obvious to the person skilled in the art, such content belongs to the original disclosure of the filing document under Article 33 of the Chinese Patent Law.”

  • FOURTH AMENDMENT OF PATENT LAW

    2013-04-26

    The proposed 4th amendment aims to strengthen the protection of patent rights, which is a good news to applicants.
    However, instead of improving current patent enforcement related proceedings via judicial route, the current draft tends to achieve the above goal via administrative route by granting more power to the administrative organ (local patent bureau), which causes concerns from overseas clients, and judicial system oppositions.

  • HOW TO CLAIM PRIORITY WHEN FILING DESIGN PATENT APPLICATION IN CHINA

    2013-03-18

    Foreign applicants are very interested in how to claim priority when they want to file a Chinese design application. We will introduce some relevant issues about foreign priority.

  • HOW INNOVATIVE IS CHINA? VALUING PATENTS

    2013-01-30

    China has overtaken America again. Its patent office received more applications than any other country’s in 2011. (The numbers were released in December.) But look closer, and the picture is murkier.

  • BUSINESS METHOD APPLICATION

    2012-12-31

    Business method application cannot be granted a patent right before the SIPO, unless you are very careful at the very beginning of drafting an application, fully understand the special tactics during prosecution of the application, and foresee the direction SIPO is heading regarding examination of a business method application.

  • SERVICE INVENTION REGULATION

    2012-12-25

    The SIPO is coming up with the Draft of Service Invention Regulation aiming for protecting the right of a service inventor for claiming reward when the application is filed and remunerations when an application is patent granted and/or practiced from which the applicant obtains benefit.

  • PARTIAL DESIGN/UI PROTECTION

    2012-11-01

    The SIPO is proposing to amend relevant regulations in the Patent Examination Guideline to protect partial design/UI with design patent.