No.173 December 28, 2020 |
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| The Yonghegong Lama Temple in Beijing |
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| Unitalen News |
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In this issue
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 11thEdition of Nice Classification Effective from January 1, 2021
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At the request of WIPO, all member states of the Nice Union shall adopt the 11th edition of the Nice Classification from January 1, 2021. The applications filed after this date shall adopt the new edition for reference of trademark classes for goods and services, and the applications prior to this date shall adopt from the previous one.
(Source: The Trademark Office of CNIPA)
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| China-South Korea Electronic Priority Document Exchange Moved to WIPO DAS
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The China National Intellectural Property Adminitrtion (CNIPA) recently announced the termination of the bilateral exchange of electronic priority documents between China and South Korea, which had came into use since January 1, 2014 according to No. 196 Announcement of CNIPA.
As agreed by both China and South Korea, the bilateral exchange of electronic priority documents shall be available on WIPO DAS platform. The applicants that file applications after January 1, 2021 shall follow the instructions of WIPO DAS platform for the request for electronic priority documents. More details can be found through WIPO website: http：//www.wipo.int/das/en/.
(Source: CNIPA website)
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| China-Brazil PPH Project Entering Second Phase on January 1, 2021
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The new China-Brazil PPH pilot project was launched on January 1, 2020 for a 5-year term ending on December 31, 2024 and as of January 1, 2021 the PPH pilot project entered the second phase.
After entering the second phase, the applicant shall submit the PPH request to the Brazilian Industrial Property Office (BIPO) in accordance with the office’s new PPH guideline, while that of the Chinese National Intellectual Property Office (CNIPA) remain unchanged. The BIPO will accept 600 PPH requests per year at max (including the requests from its PPH partner offices), each applicant can submit 1 PPH request per week; and the same department of the International Patent Classification (IPC) will accept 150 PPH requests per year (including requests from all of its PPH partner offices).
(Source: CNIPA website)
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| Cases in Spotlight
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| A Turned Victory Won after Second Instance Litigation by Unitalen Client in Patent Infringement Defense
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Case Summary:
Chongqing Shangye Medical Equipment Co., Ltd. received the judgement of the first instance from the Guangzhou IP Court in June 2018 concerning the dispute over the infringement of an invention patent right (ZL201410336696.5) vs Guangzhou Zhongda Furui Medical Technology Co., Ltd., which ordered it to cease infringement immediately and compensate the plaintiff 800,000 yuan for economic losses.
Chongqing Shangye Medical Devices Co., Ltd. therefore entrusted Unitalen to handle the case in August 2018. Our attorneys then filed the request for invalidation of the involved patenta as well as filed the patent invalidation defense and applied for a halt on the infringement litigation of second instance. Unfortunately, the request for the halt was not supported. In November 2018, the Guangdong Higher People's Court of second instance issued the judgement that upheld the original judgment. Guangzhou Zhongda Company also filed the "Application for Enforcement" to the Guangzhou Intermediate People's Court.
To continue, Unitalen attorneys presented the reasons and envidences to the CNIPA Patent Office as to why the involved patent is lacking inventiveness, and we received the No. 39057 "Invalidation Decision" issued by the CNIPA in February 2019, ruling that all claims of the patent right involved are invalid!
We then submitted the decision as new evidence to the retrial case in the Supreme Court. The Supreme Court ruled in May 2020 to maintain the "Invalidation Decision", confirming the claims involved are invalid, and ruled to suspend the execution of the original judgment . Meanwhile, the plaintiff, under the pressure of the “Invalidation Decision”, voluntarily withdrew the aforementioned "Application for Enformece" in March 2019. Thus, our client won the final victory in this patent invalidation administrative litigation with all patent infringement liability and huge compensation excempted.
Comments:
Challenging the validity of a patent right is an important countermeasure for defendant in patent infringement lawsuit. If the patent right involved can be invalidated in the first instance, the right holder will be forced to withdraw the lawsuit or the court will rule to reject the lawsuit; if the patent right involved can be invalidated in the second instance, the court of second instance usually revokes the first instance judgment and ruled to reject the lawsuit; even after the second instance, if the patent right involved can be invalidated, there is still chance to turn defeat into victory.
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| Unitalen Client LG Won Its WHOO Brand Lipstick Container Design Patent Infringement Case
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Case Summary:
Unitalen client LG Life Health Co., Ltd. (hereinafter referred to as “the plaintiff”) is a world-renowned cosmetics company. Its WHOO brand Luxury lipstick series is popular among a wide range of female customers since it came out into the market. The patent involved in this case is the container of this series of lipsticks, which comprises two parts: a tube body and a lid. The patent was filed on June 6, 2017 and granted on December 15, 2017 with the priority date as May 24, 2017.
 
The product alleged of infringement in this case is the TUTU brand lipstick launched by Guangzhou Aoxini Cosmetics Co., Ltd (hereinafter referred to as “the defendant”).
 
In comparison, the patent involved is a lipstick container, which is used to hold various items such as cosmetics, while the alleged product is a lipstick. However, both of them fall under 28-02 category on the International Design Classification Table, so they are of the same type of products.
According to the patent right evaluation report of the involved patent, the main difference between the involved patent and other existing designs is:
1) The shape of the tube body, that is, it’s in the shape of the bullet, which is completely different from other existing design and thus constitutes the essence of innovative design;
2) The shape and pattern of the lid, that is, it’s a combination of a cylindrical upper part and the lower part of a trapezoid with a concave curve in the cross section. The upper part is designed with a hollow carved pattern, and the lower part is smooth without a pattern.
To compare the patent involved and the alleged product, it’s true that there are two differences in between, 1) The specific pattern of the hollow carving on the lid is slightly different; 2) whether there is a lip brush connected to the top perforation.
However, the first difference mentioned above is too for ordinary consumers to notice and has no significant impact on the overall visual effect, because: first, it’s a customary design method and does not produce a significant visual effect; secondly, the difference is relatively a very small difference vs other areas of the design, i.e., the pattern occupies a small proportion and is not easy to attract the attention of ordinary consumers.
As for the second difference, because it is an additional design feature, it does not belong to the scope of protection of the involved design patent and should not be included in the infringement comparison; in addition, this difference involves a lip brush, which is a functional feature Therefore, it should be excluded from the scope of protection of the involved patent.
Therefore, the design of the alleged infringing product falls within the protection scope of the patent involved and constitutes patent infringement. Our client LG Life Health Co. Ltd. thus filed the infringement litigation against the defendant.
Court’s Judgement:
Recently, the Guangzhou IP Court made the judgement of first-instance for this case, which found that our client’s claim established and ordered the defendant to compensate 200,000 yuan for our client’s economic losses.
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| Unitalen News
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| The Guidelines for the Protection of Trademark Rights in Key Overseas Countries with Unitalen Participation was Published
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On December 7, the "Guidelines for the Protection of Trademark Rights in Key Overseas Countries" was published at the 12th China International Trademark and Brand Festival. The writing of the Guidelines was organized by the CNIPA IP Protection and undertaken by the China Trademark Association and other participating law firms.At the festival, CNIPA and CTA officials issued the certificates of honor to the Guidelines writing project team members including our law firm.
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| Unitalen Partner Delivered Keynote Speech at AIPPI China Copyright Forum
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On December 12, 2020, the 5th AIPPI China“Copyright Hotspot Forum” was held in Beijing. As a member of the Copyright Professional Committee of AIPPI China, Unitalen partner Mr. Zhao Lei, was invited to attend the forum and delivered the keynote speech on the theme of "copyright protection of online games". The speech provided insight on the online games’ markets and corresponding laws and regulations through which how the businesses can devise the best copyright protection strategies and pathways.
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| Ten Unitalen Partners Selected into Beijing IP Industry Teacher List
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Recently, the Capital IP Agency Industry Teachers List was published and 10 Unitalen partners were selected into the list and they will represent Unitalen to participate in the development of IP talents in Beijing. |
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| Unitalen Awarded as Beijing Excellent Patent Agency Again
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Recently, the Beijing Association of Patent Attorneys announced the results of the 2019-2020 Beijing Excellent Patent Agency and Excellent Patent Attorney selection. Unitalen was once again awarded as "Beijing Excellent Patent Agency (Leading Agency)"; at the same time, our patent attorney, Xue Chenguang, was awarded the title of "Outstanding Agent" of year 2019-2020. |
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