On 15^th July 2021, the SPC issued the 28^th batch of guiding cases. All six cases concern intellectual property.

Case No. 157

CROSPLUS Ltd. v. Beijing Zhong Rong Heng Sheng Ltd.

(Copyright Infringement)

The plaintiff sued the copycats of its copyrighted furniture design for copyright infringement. The assertion was dismissed by the first instance court but upheld by the second instance court and the SPC. The SPC judgment confirms that works of applied art may be protected as works of fine arts by the Copyright Law, but protection only extends to the aesthetic appeal, rather than the functionality, of the works of applied art.

Case No. 158

WEIBOND Technology Ltd. v. Li Jianyi

(Patent ownership)

The plaintiff sued its former employee and another defendant over the ownership of an invention, which was initially filed by this former employee and later transferred to the co-defendant. The main issue is whether the patent at issue constitutes service invention accomplished by such employee during the course of fulfilling his job responsibilities assigned by the plaintiff. Courts from the first instance to retrial unanimously ruled in favor of the plaintiff.

The SPC enumerates in the retrial ruling criteria in ascertaining service invention as prescribed in Article 12.1.3 of the Implementing Regulations of the Patent Law, namely: 1) job responsibilities undertaken by the former employee or tasks assigned by the former employer while the said employee still worked for the employer; 2) the patent at issue and the correlation between the said patent and the job responsibilities and assignments; 3) whether the former employer conducted technological R&D pertaining to the patent at issue or whether the relevant technology has other legitimate source; and 4) whether the applicant or patentee of the patent at issue is capable of providing a reasonable explanation over the R&D process or source of the patented technology.

Case No. 159

Shenzhen Dun Jun Technology Ltd. v. Shenzhen Tenda Technology Ltd.

The plaintiff sued the defendants for patent infringement, requesting cessation and indemnification of damages and reasonable costs totaling RMB 5 million. Both the first instance court and the second instance court (the SPC) ruled in favor of the plaintiff.

The SPC delineated in details the parameters in ascertaining patent infringement in the network communications industry: where the accused infringer, for the purpose of manufacturing and operation, substantiates the substance of a patented solution in the accused infringing products, and the act per se or the consequences thereof plays an indispensable and substantial role in fully incorporating the technical features of the patent claims, the terminal user, during normal use of the accused infringing products, will naturally reproduce the patented method and process, which shall be ascertained to have exploited the patented method and infringed the patent at issue. Also, in contrast to the fact that the plaintiff had furnished prima facie evidence to prove the profits the infringer has yielded from infringement, the infringer refused to provide proof of infringement scale, the court dismissed the defendant’s defense on the degree of contribution of the patent at issue to its profits.

Case No. 160

Cai Xinguang v. Guangzhou Run Ping Commerce Ltd.

(New Plant Varieties)

The plaintiff sued the defendant for new plant varieties infringement. The case was dismissed by the first instance court and the second instance court (the SPC).

The SPC elaborated the boundaries of the protection scope of new plant varieties and the criteria in ascertaining infringement under different circumstances. The SPC affirmed the propagating material of a licensed variety falls under the protection scope of new plant varieties. Nevertheless, the said protection scope shall not be confined to those propagating materials acquired through specific ways utilized in applying for the variety right. Those plant materials that is different from the propagating material commonly used by a breeder during the granting of his new plant varieties, yet may still be utilized as the propagating material of the licensed variety, shall also fall under the protection scope of the new plant variety. A plant material, which is to be ascertained as the propagating material of a certain licensed variety shall meet the following condition: 1) It is a living body, and 2) it has ability to reproduce, and 3) the new individuals reproduced share identical features and characteristics with the licensed variety.

Case No. 161

Guangzhou Wang Lao Ji Health Industry Ltd v. Jia Duo Bao (China) Beverage Ltd.

(False Advertising)

The case is a tip of the iceberg of the legal feud between Wang Lao Ji and Jia Duo Bao. Wang Lao Ji sued Jia Duo Bao on the ground of false advertising for using the commercial tagline, which reads “Red-canned herbal tea with leading sales is rebranded Jia Duo Bao” (in Chinese). The SPC dismissed the plaintiff’s claims in retrial and elucidated on the criteria in ascertaining false advertising.

According to the SPC, if a party, based on the previous trademark licensing contract it entered into with another party and its contribution in terms of promoting the goodwill of the licensed trademark, by releasing the commercial taglines, informs the consumers of the fundamental facts without causing misunderstanding among the relevant public and exhibiting no intention to improperly exploit the reputation and goodwill of the said trademark, such act shall not be ascertained as false advertising, which is prescribed in the Anti-Unfair Competition Law.

Case No. 162

Chongqing Jiang Xiao Bai Distillery Ltd. v. CNIPA

(Trademark Invalidation)

Jiang Jin Winery (Group) Ltd. filed to invalidate Jiang Xiao Bai Distillery’s registered trademark “JIANG XIAO BAI in Chinese characters”, citing Article 15 of the Trademark Law. The case exhausted all viable procedures and ended with the SPC affirming the validity of the disputed trademark, finding that Jiang Jin Winery Group enjoyed no rights on the disputed trademark prior to the the application date even if it had formed distribution relationship with Jiang Xiao Bai Distillery.

Co-authored by Mary Ma, Zeqi Su and Lei Gao, first published by IAM