Weekly China Trademark News Updates

May 18, 2021

1. CNIPA issued the Notice of Deepening “Deregulation, Innovation, and Service” in the Intellectual Property Industry on Optimizing and Improving Innovation Environment and Business Operation Environment

On May 11, 2021, the CNIPA issued the Notice of Deepening “Deregulation, Innovation, and Service” in the Intellectual Property Industry on Optimizing and Improving Innovation Environment and Business Operation Environment. The notice includes the following news.

1. Continue to reduce trademark examination period. Aim to regulate trademark examination time within four months. The entire trademark application proceeding will be reduced from eight months to seven months. At the end of 2021, examination time for trademark assignments, oppositions, rejection appeals, and invalidations will be reduced to one and half months, twelve months, five and half months, and nine months, respectively. Examination time for trademark applications and renewals filed electronically will be reduced by one fifth.
2. Strengthen trademark examination supervision. Rigorously crack down on bad faith trademark registration and refuse to accept or fast-reject trademark applications with significant adverse effects according to the law. Promptly disclose typical bad faith trademark registration cases in time. Include bad faith trademark registration without intent to use into credit supervision according to the law.
3. Fully implement electronic trademark registration certificate, accelerate the use of the electronic trademark registration certificate on e-commerce platform, enforcement, proffer evidence and other fields.
4. Establish and improve the green channel acceleration model of trademark examination. Priority examination for qualified trademark rejection appeals and oppositions in order to assist applicant in obtaining trademark certificate and safeguard legal rights and interests.
5. Strengthen the crack down on illegal agency. Rigorously crack down on the forgery of legal documents and seals and disrupt the order of the agency market by fraud and false publicity. Strengthen the credit supervision and punishment of illegal agency in accordance with the laws and regulations.
6. Fully exploit the value of intellectual property information. On the basis of data security, fully released basic data of intellectual property right, and fully employ the strategic resource value of intellectual property information.

2. The Beijing IP Court – Investigation report on trademark cases involving the protection of prior rights and interests of work name and character name

The Beijing IP Court investigated regarding grant and affirmation of trademark rights regarding the protection of prior rights and interests of work name and character name in the last two years.

From January 2019 to March 2021, the Beijing Intellectual Property Court docketed 35,966 trademark administrative cases and concluded 35,028 cases. Among them, 101 cases, or 0.3%, have applied Article 32 of the Chinese Trademark Law to protect the prior rights and interests of the work name and character name. Among them, the court concluded in 48 cases, or 48%, that the dispute mark constituted infringement of the prior rights and interests of the prior right owner. These cases have the following characteristics:

1. The work has high popularity and wide audience. The names and characters involved in the case include “Kung Fu Panda,” “Three Life Three Generations Shi Li Peach Blossom,” Honor of Kings,” “Astro Boy,” “Luding Ji,” etc. The high popularity of these works and characters makes their names have certain commercial value and can be protected as the prior rights and interests.
2. The name is highly “recognizable.” The name of the works and characters actually plays a role of distinguishing the source of goods or services like trademarks so that the relevant public can form an one-to-one correspondence through the association between the name and the work owner.
3. There were more foreign rights holders involved. The cases involving foreign rights holders such as Japan, U.K., and the U.S. accounted for about 55% of all cases.
4. The scope of protection is close to daily life. The scope of protection of the title of the work and the name of the character was not limited to its field of work, but also covered the field where popularity of the work or the character reached in daily life.

3. First criminal copyright infringement case involving an artwork came into effect with RMB 410,000 in penalty in Shenzhen

Recently, the Shenzhen Longgang District Court (the “First Instance Court”) concluded the defendant WANG infringed upon the plaintiff’s copyright. The Shenzhen Intermediate Court rendered the final decision as the second instance court which rejected WANG’s petition to appeal and affirmed the First Instance Court’s decision. In the First Instance Court decision, WANG was sentenced to 3 years and 8 months in prison with penalty of RMB 410,000 (USD 63,675). The infringing toys used as evidence during the trial were confiscated and destroyed. This is the first criminal copyright infringement case involving an artwork in Shenzhen.

Between October 2016 and November 2018, without authorization from CCA and B, LLC. (“CCA”), Wang purchased the infringing Christmas genie dolls and reindeer dolls that he knew were infringing CCA’s copyright. Upon purchase, WANG made unjustified profits from selling the dolls on its Alibaba store “mcroon,” “An Ke Trading” and Amazon store “plush kids.”

On October 31, 2018, Longgang Branch of Shenzhen Municipal Administration for Market Regulation seized 8,340 “Christmas genie dolls” and 215 “reindeer dolls” for sale in WANG’s company. Identified by the Copyright Appraisal Committee of Copyright Protection Center of China, these dolls constated as copies of the ‘Christmas genie dolls” and “reindeer dolls” owned by CCA. They are infringing copies of “Christmas Genie dolls” and “reindeer dolls”. On July 15, 2019, the case was transferred to Longgang Public Security Bureau.

It was verified that between May 31, 2017 to October 30, 2018, WANG sold the infringing products through three online stores and earned a total amount of RMB 557,000 (USD 86,500). The value of the seized infringing products for sale was about RMB 213000 (USD 33,000). The total unjustified profit was RMB 771, 000 (USD 119,700).

After hearing, the First Instance Court concluded that WANG’s operation purpose was to obtain unjustified profits by copying and selling copyrighted artworks without authorization, which amounted to RMB 771, 000 (USD 119,700). Such circumstance was particularly serious and constituted as a crime of copyright infringement.

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