No.174 January 28, 2021 |
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| Unitalen News |
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In this issue
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 Theme of 2021 WIPO Day: Bring Innovation to Market
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The WIPO recently promoted the idea on the 2021 WIPO Day for SMEs: bringing innovation to the market.WIPO encourages every business to have its own creative idea, and to create the products and services to meet the customers’ need with creativity and knowledge combined. Meanwhile businesses shall use IP rights to protect its business value and add value to it.
(Source: www.nipso.cn)
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| Nice NCL11-2020 Clarification Table for China-Japan-South Korea Trademark Applicants
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Per the arrangement among China, Japan and South Kore for the cooperation in the field of trademark protection, the Trademark Office of the China National IP Administration recently announced the comparison table of codes for China-Japan-South Korea similar groups of goods and services under code of the Nice Classification NCL11-2020.For details please follow the link to the table: Nice NCL11-2020 Classification Table
(Source: CNIPA website)
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| China-German PPH Pilot Program Extended
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The China Patent Office and German Patent Office will extend the China-Germany PPH Pilot Project for another 3 years from January 23, 2021 until January 23, 2024. The relevant requirements and procedures for submitting PPH requests in the two offices remain unchanged.
The China-German PPH pilot program was launched in 2012, and had ever extended for three times in 2014, 2016 and 2018 respectively, before expiation in 2021.
(Source: CNIPA website)
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| Cases in Spotlight
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| Unitalen Client Cleveron Won a Patent Invalidation Administrative Litigation with Application of High Degree of Probability in Using YouTube Video as Prior Art Evidence
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Background：
Cleveron is committed to creating robot-based package terminals and developing "last mile" click-and-collect service solutions for retail and logistics. Cleveron launched the PackRobot automatic package terminal at the 2015 Postal Expo. PackRobot uses an innovative 3D lifting system to pick up and deliver the target package to a dynamically configured fixed delivery slot. This new technology can handle three times as many pacakges per cubic meter. Cleveron released the exhibition video of the product on the Youtube website on September 16, 2015, and released a detailed introduction of the product on the Youtube website on June 14, 2016. Cleveron is also cooperating with American manufacturer Bell & Howell to deploy its package terminal in North America.
However, a Chinese company applied for a patent in China using the PackRobot automatic package terminal technology and got granted.Therefore, Cleveron filed the request for invalidation of the patent involved. In support of the claims, Cleveron submitted a large amount of public evidence of the prior use of the technology, including YouTube videos, of which the process was notarized in Hong Kong for authenticity. However, the China National IP Administration (CNIPA) determined in its invalidation decision that: "YouTube is a video exchange site, and the content of the video is unverified... and whether the video was uploaded at the time of the publication of the technology is unverified...". In response to the invalid decision, Cleveron entrusted our law firm to file an administrative lawsuit at the Beijing IP Court of first instance.
Court Ruling：
The Beijing IP Court had recently issued the ruling of the first instance, which supportsall of our client’s claims and ruled to revoke the decision made by the CNIPA Patent Office,a new decision shall be re-issued by CNIPA in due course.
Comments:
In patent invalidation and the subsequent patent administrative litigation, the “high degree of probability” shall be applicable to the standard for the proof of prior art. When judging public evidence on the Internet, the court shall consider the evidences submitted by all parties, and make judgments based on the authenticity, publicity and probative power of the public evidence on the Internet per the standard of high degree of probability.
As for the video evidence collected on the YouTube website, if a complete notarization and certification procedure has been performed, and the fact that the video has been disclosed before the filing date of the patent involvedis with high degree of probability, and if the patentee can only make a claim that it’s possible for the video being modified without providing convincing counter-evidence, it should be determined that the YouTube video can be used as prior art evidence.
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| Unitalen Client ICON Won an Administrative Litigation Concerning Trademark Invalidation Involving Similar Products in Different Groups
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Case Summary:
ICON is a world-renowned fitness equipment provider, and it owns a popular brand “iFit”, which is mainly used in smart training systems and smart wearable devices that support its fitness products.
“ifitfun”, the disputed trademark in this case, is registered by the third person, Mr. Cao, in Class 28 for "brainpower toys; balls for games; rehabilitation apparatus; beauty ware; pressure ware; body-training apparatus; machines for physical exercise; run-up ware; climber’s harness and plastic racetracks”. ICON company cited its trademarks “iFIT” and “IFIT”, which are registered prior and can be used in Class 28 for the products of “body-training apparatus” and “machines for physical exercises” etc., to apply for invalidation of the disputed trademark. After review, the Trademark Office held that the disputed trademark shall be declared invalid in use on the products that are in the similar groups as those of the cited trademarks, such as "body-building machines; rehabilitation apparatus; pressure ware”, however,the disputed trademark can be maintained in use on the rest of products, such as "smart toys; balls for games; sports equipment; run up ware; climber’s harness and plastic racetrack".
In disagreement with the above decision, ICON entrusted our law firm to file an administrative litigation vs the Trademark Office.
Court Ruling：
After hearing, the Beijing IP Court held that although the products approved for use by the disputed trademark and by the cited trademark are in different groups, they share certain overlap and strong relevance in terms of functional features, sales channels and consumer groups, etc., which constitutes the same or similar products. In addition, the third person’s act of registering the disputed trademark is not of subjectively goodwill, considering the publicity of the plaintiff and its products, and the distinctiveness of the cited trademark, which is easy for the relevant public to get confused or misidentify the source of the disputed trademark. Therefore, the disputed trademark constitutes similar trademark on the same or similar goods vs the cited trademark, violating Article 30 and Article 31 of the Trademark Law. It shall be declared invalid for use on all products. The decision made by the Trademark office shall be revoked and replaced by a new decision.
Typical Significance：
In trademark right determination review, the "International Classification of Goods and Services for Trademark Registration" and "Similar Goods and Services Classification Table" are usually used as references for judging similar goods or services. However, due to the continuous updating of goods and services, the judgment of similar goods or services will also be adjusted accordingly. In administrative cases involving trademark invalidation, case analysis should be carried out based on specific circumstances. This case combines the characteristics of the product itself, the subjective intention of the registrant of the disputed trademark, the actual use situation and the possibility of confusion and other consideration to provide a comprehensive view for judgment, which has provided a great reference for the handling of future similar cases.
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| A Typical Case of Wining Trademark Invalidation Litigation through Well-known Trademark and Malicious Intent Claims by Unitalen Client Taiwan Fullrich
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Our client Fullrich (Chinese name as “富麗真金”) Textiles was founded in Taiwan in 1988 and its wholly Taiwanese-owned enterprise in Hunan Province has sales network nation-wide in mainland China and enjoys high popularity. The defendant, Hunan Fu-li-Zhen-Jin(Chinese name as “富麗真金”) Furniture Co., Ltd. ,was registered and established by a natural person Mr. Chen in 2007. In 2015, Fullrich discovered that their business name in Chinese is used by the defendant and filed unfair competition litigation.
The Changsha Intermediate Court of first instance and the Hunan Higher Court of second instance both found the aforementioned act of the defendant constitute unfair competition. The case was also selected into the Top 50 typical cases by the Supreme Court in 2016.
With the winning litigation,Fullrich filed for invalidation of the trademarks registered by the defendant (the disputed trademark) citing their prior trademark (the cited trademark), which, however, was not supported by the review decision made by the Trademark Office. Therefore, our law firm filed an administrative litigation on behalf of Fullrich.
In the litigation, our lawyer explained how each word used in the trademark represent the vision and wishes of the founders of Fullrich (a couple from Taiwan). While the defendant failed to provide a reasonable explanation. In addition,we claimed that the cited trademark had already been well-known prior to the filing date of the disputed trademark; and the defendant shall constitute malicious intent because of his connection with a location of a store owned by Fullrich, therefore, even though the disputed trademark had been registered for more than 5 years, the 5-year limit for invalidation request shall be removed. All of these claims were supported by the Beijing Higher Court in 2019, and by the Supreme Court in 2020 retrial.
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trademark, which is a rare case of success that can be achieved for a Beijing municipal state-owned enterprise as the English trademark containing words of “National” and “China”.