Chinese Car Wars

Carmaker Land Rover (which India's Tata acquired from Ford) is suing Chinese carmaker Geely of Hangzhou (which acquired Volvo from Ford) for registering its Chinese characters "Lu Hu" in China. Land Rover says it used the characters for its "Land Rover" brand since the early 1990s. In 1999 Geely registered the "Lu Hu" trademark knowing that Land Rover was using it. Having lost at TRAB the case is now being appealed to the Beijing No 1 Intermediate court.

Meanwhile BMW (which sold Land Rover to Ford) has its own (dis)similar problems. Wenzhou Baoma Electric sought to register BMW's Chinese characters in its class 9 mark on electrical switches. After failing to prove that the marks could be confused by consumers, given the different goods, BMW has also appealed from TRAB to the Beijing No 1 Intermediate court.

The challenges illustrated by these cases include the difficulties of planning Chinese character brands. Secondly the slow pace of TRAB cases can leave disputes unresolved for many years. As in BMW's case the ongoing problem of proving reputation/fame challenges many IP holders, and this is of course even harder across classes.

Guest post by IP Komodo Dragon

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Three Main Problem Categories To Foreign Related IPR Litigation in China

The President Assistant of the Civil Fifth Court, part of the Beijing Municipal Intermediate People's Court Number 1, Yi Jun gave his view on what are the most important foreign-related IPR ligitation problems. The President Assistant distinguishes three categories of problems:

"1. The status of the person who signs letters of attorney on behalf of foreign companies can not be confirmed;

2. the items to be authorised, delegated authority and the period of validity are stated unclearly;

3. the parties concerned do not fully consider the time on notarisation and authentication procedure and the non-correspondence of the period of appeal and prosecution for foreign parties concerned based on China's Civil Procedure Law, Administrative Procedure Law and other laws."

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IPR Jurisdiction: Third Civil Division of Haining Municipal People's Court Specialises in Copyright and Trademark Disputes

Haining Municipal People's Court in Zhejiang Province set up the Third Civil Division, specializing the trial of civil cases concerning copyright disputes, trademark disputes and other related types of intellectual property rights disputes. Read the article here.

First instance IP appeal cases of TRAB and PRB will be heard by the IP Tribunal of the Beijing No. 1 Intermediate People's Court. Read the article by Howard Tsang and Lilian Shi of Wilkinson & Grist for Managing Intellectual Property Magazine here.

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Zhongyi Electronics to Microsoft: "See you in Court"

According to MarketWatch (head tip to China Economic Review) Microsoft is sued by Zhongyi Electronics for alleged copyright infringement for its Chinese character input method editor that Microsoft applies in Windows 95, Windows 98, Windows 2000 and Windows XP operating systems. The case will te held before the Beijing’s No.1 Intermediate People’s Court. Microsoft has denied any copyright infringement and said that is has written license agreements.

Read the article from MarketWatch here.

UPDATE: Stan Abrams of China Hearsay raises some good questions about the case here.

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Did Schneider Electric Infringed Its Own French Patent In China?

These days a high voltage commercial dispute is raging in the transnational low voltage products industry about a utility model, (which falls under the Patent Law, see article 2). What happened?

Saturday, September 29, the Wenzhou Intermediate People's Court ruled in the case of the Chint Group Co. versus Leqing Branch of Star Electric Equipment Co. Ltd. (the first defendant) an authorised distributor of Schneider Electric and the Tianjin-based joint venture in which Schneider Electric holds 75 percent (the second defendant), that both defendants infringed Chint's patent.

The court ordered:

• that the defendants stop selling five models of products that are based on the technology owned by Chint Group;


• Schneider Electric should pay 334.8 million yuan (4.3 million U.S. dollars) in ten days to compensate Chint's economic losses due to the unauthorized production and sales of the apparatus.

The Ministry of Commerce republished the Xinhua article which said: "Court investigations show that Schneider earned 883.6 million yuan (117 million U.S. dollars) by selling the five models of apparatus [which was used by Schneider in the manufacturing of C65a, C65N, C65H, C65L and EA9AN products (IP Dragon)], which fell in the protected scope of Chint's patent right, from August 2004 to July 2006 and made a profit of 334.8 million yuan." Read more here.

If this is true, Schneider Electric could be relieved by the verdict. If Schneider Electric has its patent registered in France this does not mean that it has a patent in China. However, Schneider Electric, claims that Chint Group's patent is invalid.

• In November 1997, Chint Group filed an application, with the State Intellectual Property Office, for a patent for utility model named "A Miniature Circuit Breaker".


• Schneider Electric's claim that Chint Group's patent is invalid was refuted by the State Intellectual Property Organisation (SIPO) and Chint Group was granted the patent right in March 1999.


• Then Chint Group started manufacturing and selling the patented NB1 series.

Schneider Electric does not agree with the refutation of its claim that the patent is invalid. So it started a procedure against SIPO's decision at the Beijing No. 1 Intemediate People's Court. The outcome is unknown, yet.

The 334.8 million yuan is the highest amount of compensation a company has to pay in case of an intellectual property dispute in China, accourding to Xinhua. Schneider Electric considers to file a lawsuit at the Supreme People's Court against the verdict of the Wenzhou Intermediate People's Court.

Domique Buffier of Le Monde reports about it as well, in French, here. Thanks for the link CH of Mobimania.

UPDATE April 17, 2009: 

The case has been settled: read 'Schneider Patent Case to be Settled' by China Hearsay blogger Stan Abrams and the Xinhua article at China Daily 'French electrical firm pays $23m for IPR violation'

 'French electrical firm pays $23m for IPR violation

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Santa Barbara Polo and Racquet Club Too Similar to Beverly Hills Polo Club for a Trademark

Beijing Nr. 1 Intermediate People's Court confirmed the rejection of the Trade Review and Adjudication Board (TRAB) of the application of Santa Barbara Polo & Racquet Club for a trademark.

"[A]lthough the two trademarks had slight differences in English words, the posture of the polo player and the direction of the horse, they were similar to each other as a whole trademark. If the two trademarks were used for identical or similar goods, the consumers may confuse the sources of the goods."


Read NTD Patent & Trademark Agency Ltd.'s article via IPR.gov.cn here.

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IPR: Overseas Parties Have 60 percent Success Rate at Beijing No.1 Intemediate People's Court

Xie Chuanjiao of China Daily wrote the article International laws applied in local IPR cases, read here. Nothing new really, China has this obligation already since April 12, 1986 when it adopted its General Principles of Civil Law .

When China became the 143rd member of the WTO on December 11, 2001, it automatically entered into TRIPs, which is an integral aspect of the WTO agreement. The supremacy of international treaties concluded by or acceded to China which apply to law in civil relations with foreigners is dealt with by article 142 General Principles of Civil Law [1]. It states that where the provisions of TRIPs differ from those in civil laws of the PRC, the provisions of the international treaty shall prevail. Unless it would concern provisions for which China would have made reservations. This is conform Section 2 Vienna Convention on the Law of Treaties [2]. China did not make any such reservation. This means that a foreign plaintiff can cite TRIPs in a lawsuit against a Chinese entity if no domestic legal recourse were available, or if these were in conflict with provisions of TRIPs.

[1] Article 142 General Principles of Civil Law: (..) where the provisions of an international treaty which the PRC has concluded or acceded to differ from the civil laws of the PRC, the provisions of the international treaty shall prevail, with the exception of those articles to which the PRC has made a reservation. (..).

[2] Articles 19-23 Vienna Convention on the Law of Treaties

However, in the last part of the article Xie gave some statistics about the period 2002-2006:

• Chinese courts dealt with 931 IPR cases involving overseas parties, or a rise of 50 percent each year, according to Jiang Zhipei, chief justice of the Supreme People's Court IPR Tribunal.
• Beijing No 1 Intermediate People's Court alone ruled in favor of overseas parties in 60 percent of the 670 IPR cases.

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FA Premier League Against Trademark Infringers 1:0

Sarah Butler reported for the Times Online about two rulings by the Beijing No. 1 Intermediate People's Court:

The English FA (football association, nowadays called after their sponsor: Barclays) Premier League was victorious in a trademark dispute with Xiangshi Celebration Service Company, based in Jiangsu province. Beijing No. 1 Intermediate People's Court upheld an earlier ruling that FA Premier League has the exclusive use of its crowned lion logo in China. Xiangshi Celebration Service Company must stop using a similar lion trademark, minus the football under the lion's claw.

The dispute began in 1999, when Xiangshi registered its version of the trademark. When the Premier League tried to register its logo in China in 2000, it was rejected. It won an appeal a year later.

Also this week the Beijing No. 1 Intermediate People's Court ruled that Beijing Health New Concept Pharmacy Company and Lianhuan Pharmaceutical Company, based in Jiangsu infringed upon Pfizer's Viagra patent. The court ordered to stop sales of generic blue pills similar to Viagra and to pay Pfizer 300,000 yuan (£19,500) in damages.

Read Butler's article here.

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Pfizer Accuses Guangzhou Welman Of Copyright Infringement

Pfizer sued Guangzhou Welman for alleged copyright infringement of Viagra reports Forbes.

I wonder why Pfizer's allegations focused on copyright infringement instead of patent infringement, or both. Or is copyright used mistakingly as the prototype of an intellectual property? Read more here

In 2001 Pfizer obtained a Chinese patent license for Viagra
July 2004 SIPO's Patent Review Board revoked its license after complaints by 12 Chinese pharmaceutical companies: Pfizer failed to accurately explain the uses of the pill's key ingredient, sildenafil citrate.
June 2, 2006 the Beijing No. 1 Intermediate People's Court reversed the review board's verdict and upheld Pfizer's patent. Read more here.
12 Chinese pharmaceutical firms have launched an appeal against this ruling. Read more here.

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Baidu Acquitted Of Charges By HK Music Companies Of Copyright Infringements

In September seven Hong Kong music companies brought against Baidu, the largest search engine of China, a copyright infringement lawsuit. Beijing No.1 Intermediate People's Court ruled that the accusations did not have adequate legal support.

The seven companies were:
Universal Music Hong Kong Limited;
Go East Entertainment;
Warner Music Hong Kong Limited;
Sony BMG Music Entertainment (Hong Kong) Limited;
EMI Group Hong Kong Limited;
Cinepoly Music and Gold Label Entertainment.

The music companies, represented by the International Federation of Phonographic Industry (IFPI), accused Baidu of providing and spreading pirated versions of 137 songs for which the record companies hold copyrights through http://mp3.baidu.com, which enables Internet users to search and download music on the Internet. They were seeking a total of RMB 1.67 million (USD 208,750) in compensation, a public apology, and for Baidu to cease facilitating downloads of pirated music.

"During the hearing Baidu argued that it never uploaded any music or songs to its own servers, nor provided any music downloads to users. The company iterated that it was just an online search platform that provided search results according to the input of users. Its "MP3 Search Service," is just one of its search services, and is not much different than the other services it offers, the company said."

IFPI's Benjamin Ng said they would definitely appeal to a higher court. To be continued.

Read more in an article of Interfax China here.

Baidu "strong on censoring, weak on copyright enforcement" here.

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