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| No.205 August 28, 2023 | | In this issue |
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| Theme of World Intellectual Property Day 2025: IP and music: Feel the beat of IP | | Measures for Administrative Adjudication and Mediation of Patent Disputes (No. 81 Order of the CNIPA) | | CNIPA's Administrative Review Regulations (No. 82 Order of the CNIPA) | | SAMR and CNIPA Jointly Publish the Trademark Administrative Enforcement Evidence Provisions | | CNIPA Revises Seven Patent Application Request Forms | | China and Brazil Extend PPH Pilot Program | | Cases in Spotlight |
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| Unitalen Assisted a World-Renowned Automotive Powertrain Manufacturer in Substantially Resolving Patent Infringement Disputes, Achieving a Global Settlement | | Unitalen Assisted Hong Kong "B.Duck" 小黃鴨 and Other Equivalent Trademarks in Winning Determination of Famous Trademarks, with Damages of 4,840,000 yuan Awarded under the Application of the Punitive Legal Compensation | | Unitalen Client Sichuan Huaguang Won Patent Confirmation Case | | Unitalen News |
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| Five Unitalen Partners Continued to Stand on the List of Top 100 "IP Experts in China 2024" Released by Asia IP | | Unitalen's Trademark Was Included in the Key Trademark Protection List of Beijing,and Unitalen Received the "Award for Special Contributions to Trademarks" | | Unitalen Shanghai Office Received Multiple Honors Including "Outstanding Trademark Agency" in Shanghai, "Outstanding Trademark Agency Case in Shanghai", and "Nomination for Outstanding Trademark Agency Case in Shanghai" |
| | In this issue |
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Theme of World Intellectual Property Day 2025: IP and music: Feel the beat of IP |
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The World Intellectual Property Organization invites all Member States and stakeholders to join in celebrating World Intellectual Property Day on April 26, 2025. The campaign theme of World Intellectual Property Day 2025 is IP and music: Feel the beat of IP
World Intellectual Property Day 2025 highlights how creativity and innovation, backed by IP rights, keep a thriving music scene that benefits everyone everywhere. This year's World IP Day invites us to explore how IP rights and innovation policies empower creators, innovators, and entrepreneurs to bring fresh ideas to the music industry, safeguarding the work of songwriters, composers, performers, and all those who shape the music that moves us.
(Source: website of the CNIPA) 
| Measures for Administrative Adjudication and Mediation of Patent Disputes (No. 81 Order of the CNIPA) |
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No. 81
Order of the CNIPA
The Measures for Administrative Adjudication and Mediation of Patent Disputes have been deliberated and adopted at the 7th executive meeting on December 13, 2024, and are hereby promulgated and shall be effective from February 1, 2025, onwards.
Commissioner SHEN Changyu
December 26, 2024
Among them, Article 18 provides:
Article 18 If the petitioner is a foreigner, the case adjudicator shall require them to submit a valid identity certificate notarized by the notary office of their country and authenticated by the Embassy of the People's Republic of China in that country. The application will not be accepted if they refuse to provide the documents. If they entrust an agent, the submitted power of attorney formed abroad shall be notarized by the notary office of the petitioner's country and authenticated by the Embassy of the People's Republic of China in that country. If there are specific provisions in relevant treaties regarding certification procedures between the People's Republic of China and the petitioner's country, the specific provisions should prevail.
The power of attorney signed in the People's Republic of China territory shall be recognized if it is signed in the presence of the case adjudicator or notarized by a notary organ of the People's Republic of China. For foreigners who have obtained permanent residence status in China, the foreigner's permanent residence document they hold is a valid identity document.
If the petition has been accepted, the department in charge of patent affairs may require the petitioner to provide relevant supplementary materials within a specified time limit. If the petitioner fails to provide the materials without any justified reasons after the expiration of the time limit, the case may be lawfully revoked.
(Source: website of the CNIPA)
| CNIPA's Administrative Review Regulations (No. 82 Order of the CNIPA) |
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No. 82
Order of the CNIPA
The have been deliberated and adopted at the 7th executive meeting on December 13, 2024, and are hereby promulgated and shall be effective from February 1, 2025 onwards.
Commissioner SHEN Changyu
December 30, 2024
Among them, Article 42 provides:
Article 42 If foreigners, stateless persons, or foreign organizations apply for administrative review to the CNIPA in the People's Republic of China territory, the Regulations shall be applied.
(Source: website of the CNIPA)
| SAMR and CNIPA Jointly Publish the Trademark Administrative Enforcement Evidence Provisions |
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The Provisions are formulated to strengthen guidance on trademark administrative enforcement and standardize the collection, examination, and determination of evidence.
Among them, Article 15 provides:
Article 15 Evidence formed abroad mainly means public documentary evidence formed beyond the territory of the People's Republic of China, evidence of identity relations such as the subjective qualification, authorization documents, and identity certificates of a foreign rights holder, and other evidence related to the facts of cases, including both evidence formed abroad provided by the party concerned and evidence collected and obtained from abroad by the case-handling organ through the relevant channels.
Evidence formed abroad shall indicate its source and be subject to the certification procedures stipulated in international treaties concluded or acceded to by the People's Republic of China. For evidence formed in the Hong Kong Special Administrative Region, Macao Special Administrative Region, and Taiwan Region of the People's Republic of China, the certification procedures shall be fulfilled as stipulated in relevant regulations.
Documentary evidence or audio-visual materials in a foreign language involved in evidence formed abroad shall be accompanied by a Chinese translation provided by an agency with translation qualifications or other Chinese translations that are accurate, and authenticated by the translation agency's seal or the translator's signature.
Attachment of the full text: Trademark Administrative Enforcement Evidence Provisions
(Source: website of the SAMR)
| CNIPA Revises Seven Patent Application Request Forms |
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To advance the extension of the right to receipt and service of legal documents to litigation proceedings in the administrative procedures of grant and confirmation of patents, and to address difficulties in service of legal documents to a foreign party involved in administrative litigation, the China National Intellectual Property Administration (CNIPA) has revised the filling instructions for seven request forms, including the Invention Patent Request Form and the Utility Model Patent Request Form, by adding the instruction "Unless any statement to the contrary, the recipient of legal documents for patent business in the territory of PRC and the address of such recipient shall extend to administrative litigation procedures in the future."
The revised request forms are hereby announced (see the attachment). The above amendment will take effect from January 10, 2025, and the corresponding former versions of the forms will be discontinued simultaneously. This amendment does not involve any adjustments to the client-side and electronic application data standard specifications.
The current paper-based request forms for patent applications in force can be accessed and downloaded immediately by the party by logging in to the website of the CNIPA (http://www.cnipa.gov.cn) and navigating to the "Form Download" subsection under the "Government Services" column.
Attachment: the revised seven request forms
(Source: website of the CNIPA)
| China and Brazil Extend PPH Pilot Program |
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Recently, the China National Intellectual Property Administration (CNIPA) and the National Institute of Industrial Property (INPI) have jointly decided to extend the CNIPA-INPI Patent Prosecution Highway (PPH) pilot program starting from January 1, 2025. The established Guideline of CNIPA-INPI PPH Request continues to control the pertinent requirements and procedures governing applicants' PPH requests at the two offices.
According to information released by INPI, its PPH program will enter a new phase starting January 1, 2025. The total annual number of PPH applications accepted from all its PPH cooperation partners will increase to 3,200, with no more than 800 applications received per quarter. Additionally, the total annual number of PPH applications accepted under the same International Patent Classification (IPC) Section will increase to 1,000. The restriction previously allowed each applicant to submit only one application per week will be lifted. Since the first quarter of 2025, INPI will not accept PPH applications under IPC classification H04. The accepted technical fields will be reassessed quarterly.
(Source: website of the CNIPA)
| | Cases in Spotlight |
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Unitalen Assisted a World-Renowned Automotive Powertrain Manufacturer in Substantially Resolving Patent Infringement Disputes, Achieving a Global Settlement |
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Case Brief
Company A is a globally renowned independent automotive powertrain manufacturer, with headquarters in Belgium and has main R&D and production centers in Belgium, Netherlands, and China. Company A is the patentee of two invention patents related to "Dual Clutch Transmission (referred to as DCT) Technology."
Company B is one of the world's largest producers of transmission systems for private and commercial vehicles, with headquarters in Germany, and provides automotive transmission system products or technologies to internationally renowned Original Equipment Manufacturers such as Mercedes-Benz, Ferrari, Audi, BMW, Volvo, Ford, and General Motors. Company B is one of the subsidiaries of Canadian company M, which is one of the world's largest automotive component manufacturers.
Company C is a well-known enterprise in China, which is the manufacturer and seller of the alleged infringing products in the Chinese Mainland. Company C's dual-clutch transmission technology stems from Company B's license.
From August 2022 to September 2023, Company A sent notification letters regarding the patent infringement dispute to Company C, pointing out that the two dual-clutch transmission products manufactured and sold by Company C were suspected of infringing Company A's two invention patents and requesting negotiations on patent royalties for the products.
In March, October, and December 2023, Unitalen's attorney team, under the commission by Company B and Company C, conducted a prudent analysis of the two alleged infringing products and issued a detailed non-infringement analysis report to Company A.
In November 2023, on the basis of the patents of divisional applications, Company A filed two lawsuits of patent infringement with the Nanjing Intermediate People's Court against two products manufactured and sold by Company C and its affiliated companies. Company A claimed 120,000,000 yuan, including the damages of 24,000,000 yuan and 95,000,000 yuan, respectively, plus the costs for safeguarding its rights.
Concurrently, Company A also filed multiple cases of patent infringement disputes against Company B regarding the "Dual Clutch Transmission (DCT) Technology" in Europe.
After accepting the commission, Unitalen's attorney team immediately handled the matters pertaining to the defense of the two civil infringement cases in the Nanjing Intermediate People's Court and the matters of request for invalidation of the involved invention patents and associated invention patents.
In January 2024, Unitalen represented the defendant Company C in filing the request for invalidation of the involved patents with the China National Intellectual Property Administration (CNIPA). In June 2024, Unitalen represented Company B in filing the second request for invalidation of the involved patents with the CNIPA. In August 2024, Unitalen represented Company B in filing the request for invalidation of the parent patent of the involved patents with the CNIPA.
The Reexamination and Invalidation Department of the CNIPA organized oral hearings for the above patent invalidation cases in June, August, and October 2024, respectively.
Highlights of the Case
1. Unitalen's attorney team has conducted a thorough investigation into the information of the global family patents of the involved patents. As found in the case of the second request for invalidation of the involved patents, Evidence 6 has an international filing date of April 20, 2011, and the earliest priority date of April 20, 2010. The Unitalen's attorney team asserts that both the international filing date and the earliest priority date of Evidence 6 are earlier than the earliest priority date of the involved patents, October 18, 2011. The earliest priority claimed by the involved patents is not a "first application" in the sense of the Chinese Patent Law. Therefore, the relevant claims of the involved patents are not entitled to priority. As a result, Evidence 6 can serve as the prior art for evaluating the novelty and inventive step of the relevant patents' relevant claims.
2. In the present case, in an effort to increase the likelihood of maintaining the patents valid, the patentee has made multiple amendments and limitations to the scope of protection of the claims. The patentee's multiple amendments in response to the request for invalidation also prominently manifest the significant threat to the involved patents posed by the request for invalidation and evidence, as presented by Unitalen's team.
3. To prevent the patentee from gaining an advantage in both infringement litigation and patent invalidation proceedings, and to strive for the most favorable invalidation examination output, under the circumstance that the patentee expansively interprets the claims in infringement allegations, the petitioner for invalidation, in the principle of good faith, can assert the application of the reverse doctrine of estoppel.
Global Settlement
On the day of the infringement litigation hearing organized by the Nanjing Intermediate People's Court in October 2024, Company A in Belgium and Company B in Germany reached a settlement agreement. The patentee, Company A, immediately submitted in court the application for withdrawal of the lawsuit against the Chinese Company C and its affiliate companies. Thereafter, Unitalen's team, representing Company B and Company C, successively submitted applications to withdraw the request for invalidation to the CNIPA.
The patent disputes between world-renowned automotive powertrain manufacturers have thus ended, with a sound resolution of two civil infringement disputes in the Chinese Mainland, three patent invalidation cases, and multiple litigation and invalidation cases filed in the European region. Unitalen's attorney team successfully assisted the clients in achieving the desired outcomes in the patent disputes.
| Unitalen Assisted Hong Kong "B.Duck" 小黃鴨 and Other Equivalent Trademarks in Winning Determination of Famous Trademarks, with Damages of 4,840,000 yuan Awarded under the Application of the Punitive Legal Compensation |
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Recently, the Chongqing First Intermediate People's Court issued a judgment of first instance in the case of dispute over infringement of trademark right between SEMK PRODUCTS LIMITED and others (hereinafter referred to as "Hong Kong B.Duck 小黃鴨," represented by Unitalen) and certain companies in Wenzhou. The court determined that the No. 8814480 trademark " ", and the No. 8814488 trademark " " owned by Hong Kong B.Duck 小黃鴨 had constituted the famous trademarks before September 11, 2019, and September 9, 2020, respectively. Use of the marks "G.DUCK", " ", "G.DUCKKIDS", " ", and " " by the certain company in Wenzhou on clothing, shoes, and other goods had constituted trademark infringement. The company was ordered to stop the infringement, pay compensation of 4,840,000 yuan, and publish a statement in the Wenzhou Daily to eliminate the effects.
Basic Fact
The history of Hong Kong B.Duck 小黃鴨 can be traced back to 2001. The founder, Mr. Hui Ha Lam, created the signature character B.Duck and commenced the retail business for B.Duck featured consumer merchandise in 2005. In 2020, B.Duck became China's No. 1 proprietary IP brand (in terms of revenue). B.Duck has also won the LIMA Asian Licensing Award, Jade Monkey Award, and other influential industry awards and has been included in the Guangdong Key Trademark Protection List, enjoying a high reputation.
The defendant, the certain company in Wenzhou, used the marks "G.DUCK", "", "G.DUCKKIDS", "", and "" on "clothing, shoes" and other goods, and publicized, promoted, and sold them through offline stores, e-commerce platforms, self-media platforms and other ways. In response to the defendant's act of trademark infringement, Hong Kong B.Duck 小黃鴨 filed a lawsuit with the Chongqing First Intermediate People's Court in March 2023.
Judgement Viewpoint
I. The plaintiff's trademarks "" and "" have constituted famous trademarks prior to the date of the application for registration of the sued marks.
II. The use of the marks "G.DUCK", "", "G.DUCKKIDS", "", and "" by the defendant, the certain company in Wenzhou, on clothing, shoes, and other goods is likely to lead to confusion and misrecognition of the relevant public, and also leads to trademark dilution, which infringes the plaintiff's exclusive right to use the famous trademarks.
III. The punitive legal compensation is applicable to determine the amount of damages.
Case Significance
Unitalen previously assisted Hong Kong B.Duck 小黃鴨 in realizing the first judicial determination of "" and "" as the famous trademarks. This time, when the infringer had registered trademarks in the same class, Unitalen assisted Hong Kong B.Duck 小黃鴨 in realizing the equivalent determination of the trademarks "" and "" as the famous trademarks in Class 25.
| Unitalen Client Sichuan Huaguang Won Patent Confirmation Case |
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In the patent confirmation case handled by Beijing Unitalen Law Firm representing Sichuan Huaguang Company (the "Client"), the involved patent was declared invalid. After the first and second instances, it was recently received the (2024) Zui Gao Fa Zhi Xing Zhong No. 366 Judgment issued by the Supreme People's Court, which rejected the appellant's appeal request. The case was ultimately supported by the Supreme People's Court, safeguarding the interests of the client.
Case Brief
The involved patent relates to an expansion bolt set, which is a connecting component used for connecting furniture boards. As granted and announced, the involved patent comprises ten claims. The closest reference document cited in this case to request the invalidation of the involved patent is another patent application for invention of the Client (the “Reference Document”), which shares the same filing date with the priority document of the involved patent. Therefore, the debate between the two parties in this case focuses on whether the involved patent enjoys the priority right and the inventive evaluation based on this. The China National Intellectual Property Administration determined that the "locking structure" defined in the independent claims of the involved patent and the specific locking structure further defined in the dependent claims, such as the features "buckle," "insertion hole and matching interlocking teeth," and "convex strip of interlocking teeth," are not disclosed in the priority document, and are not even mentioned in a general or vague manner. It is also impossible to directly and unambiguously determine these contents from the drawings of the priority document. Therefore, the involved patent and the priority document do not have the same subject matter, and the involved patent cannot enjoy the priority. On this basis, it is determined that, through the combination of the Reference Document with other evidence and common knowledge, all claims of the involved patent do not involve an inventive step, and the involved patent is declared invalid.
With dissatisfaction, the patentee filed an administrative lawsuit. Both the courts of first instance and second instance ruled to uphold the invalidation decision concerning the involved patent.
Attorney's Analysis
One of the disputes, in this case, is whether the technical solution of the involved patent should enjoy the priority of the prior application. In particular, in the case where the prior application documents only disclose the technical features of the specific term, whether the later application can enjoy the priority of the generic summary based on the specific term of the prior application.
Based on the relevant provisions of Paragraph 2, Article 29 of the Chinese Patent Law and Part II of the Guidelines for Patent Examination, a legal basis is provided for determining whether the later application claiming priority and the prior application have the "same subject matter". However, in practice, there may still be different understandings of the "same subject matter." For example, in this case, the patentee asserted that the standards for the determination of priority and the determination of the novelty and inventive step should be the same, and the recognition of the contents disclosed in the prior document should follow a completely consistent standard.
The judgment of the second instance negated the patentee's view, emphasizing that the determination of the "same subject matter" in the priority judgment also requires an examination of whether the extension of technical features is the same: if the later application provides a generic summary based on a specific summary corresponding to the prior application, and the summary makes it cover other technical solutions not included in the prior application, resulting in different technical solutions of the prior application and the later application, then the later application and the prior application do not share the same subject matter. The judgment of the second instance also confirmed the difference between the determination of the "same subject matter" for priority and the determination of the "identical invention-creation" for novelty. That is, the determination of the "same subject matter" requires a stricter standard, and the priority document needs higher correspondence to the contents of the later application. However, the determination of the "identical invention-creation" has a relatively loose standard. Theoretical analysis also supports the same conclusion.
The second instance judgment provides a new adjudicative rule for determining the "same subject matter" for priority in the form of a case, serving as a reference case for subsequent related cases.
| | Unitalen News |
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Five Unitalen Partners Continued to Stand on the List of Top 100 "IP Experts in China 2024" Released by Asia IP |
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Recently, Asia IP, an authoritative international IP media, released the list of Top 100 "IP Experts in China 2024", and five Unitalen partners, YU Zehui, LI Deshan, HUANG Ying, ZHAO Lei, and PAN Wei, stood honorably once again on the list of Top 100 for their outstanding achievements in the field of intellectual property rights and the support and recognition from the clients around the world!
| Unitalen's Trademark Was Included in the Key Trademark Protection List of Beijing,and Unitalen Received the "Award for Special Contributions to Trademarks" |
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On the afternoon of January 10, 2025, the Beijing Trademark Protection Forum and the release ceremony of the first Key Trademark Protection List of Beijing were grandly held, hosted by the Beijing Trademark Association. At the release ceremony, the first Key Trademark Protection List of Beijing was released with great attention, and Unitalen's trademark " " was included in the Key Trademark Protection List of Beijing 2024.
Meanwhile, at the release ceremony, the Beijing Trademark Association granted Unitalen the "Award for Special Contributions to Trademarks", expressing gratitude and recognition for Unitalen's strong support to the association's operation and management.
| Unitalen Shanghai Office Received Multiple Honors Including "Outstanding Trademark Agency" in Shanghai, "Outstanding Trademark Agency Case in Shanghai", and "Nomination for Outstanding Trademark Agency Case in Shanghai" |
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On January 7, 2025, the Shanghai Trademark Association held its Sixth Members' Representative Conference, where Unitalen Shanghai Office was honored as the "Outstanding Trademark Agency in Shanghai" in 2023. Meanwhile, the conference commended cases that were selected as the "Outstanding Trademark Agency Case in Shanghai" and "Nomination for Outstanding Trademark Agency Case in Shanghai" for 2023-2024. The case "Online 吳良材(WU LIANG CAI) Trademark Infringement Dispute" represented by Unitalen Shanghai Office was awarded as an Outstanding Trademark Agency Case in Shanghai, and the case "金陵吳良才(JINLING WU LIANG CAI) Trademark Objection" was awarded as a Nomination for Outstanding Trademark Agency Case in Shanghai.
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