On the occasion of the 10th anniversary for the BRI put forward by General Secretary Xi Jinping, the China National Intellectual Property Administration (CNIPA) has recently released A Patent Statistics Report of 10 Years (2013-2022) Covering China and the Participating Countries of the "Belt and Road Initiative".

The report reveals that:

China has shared two-way patenting growth with the participating countries. In the past 10 years, Chinese applicants filed patent applications in 50 participating countries, which published 67,000 applications from China and granted 35,000 patents with average annual growth rates of 25.8% and 23.8% respectively. 115 participating countries filed patent applications in China, scoring 253,000 patent applications and 112,000 granted patents with average annual growth rates of 5.4% and 9.8% respectively, which are 2.9 and 5.6 percentage points higher than the overall growth rate of the number of foreign patent applications and grants in China during the same period respectively.

(Source: website of the CNIPA)

In order to thoroughly and earnestly implement the tasks and deployment of the National Intellectual Property Protection and Use Plan for the 14th Five-Year Plan Period on strengthening the source protection of intellectual property, intensifying the quality supervision of intellectual property application for registration, guiding the innovation subjects to accurately understand the boundaries of the object of utility model patent protection, promoting the improvement of the qualities of the drafting and replying of the patent applications for utility model, and pushing forward the high-quality development of the utility model patent system, the CNIPA has organized compilation of the Guidelines for Judging the Object of Utility Model Patent Protection for the reference of relevant innovation subjects.

Attached: Guidelines for Judging the Object of Utility Model Patent Protection

(Source: CNIPA Official WeChat Account)

In order to thoroughly and earnestly implement the tasks and deployment of the National Intellectual Property Protection and Use Plan for the 14th Five-Year Plan Period on strengthening the source protection of intellectual property, intensifying the quality supervision of intellectual property application for registration, helping the innovation subjects efficiently and reasonably use the Hague System to carry out the global product layout, and promoting the enhancement of the innovation capability of designs, the CNIPA has organized compilation of the Guidelines on the Application for International Registration of Designs for the reference of relevant innovation subjects.

Attached: Guidelines on the Application for International Registration of Designs

(Source: CNIPA Official WeChat Account)

Chinese patent applicants will continue to have the option to select the EPO as their ISA

Nationals and residents of the People's Republic of China will continue to have the option to select the EPO as their ISA for international applications filed in English under the PCT until November 30, 2026. This follows the success of the pilot program first started in December 2020, which is being extended for a further three years as mutually agreed between the CNIPA and the EPO.

(Source: website of the CNIPA)

The CNIPA and the JPO have jointly decided to extend their PPH pilot program for another five years from November 1, 2023 to October 31, 2028. The requirements for and procedures of participating in the present pilot program shall continue to follow the CNIPA-JPO PPH Guidelines.

(Source: website of the CNIPA)

The CNIPA and the SAIP have jointly decided to extend their PPH pilot program for an infinite period of time from November 1, 2023. The requirements for and procedures of participating in the present pilot program shall continue to follow the CNIPA-SAIP Guidelines.

(Source: website of the CNIPA)

Fidlock GmbH, headquartered in Germany, is a major supplier of fastening system products worldwide. Recently, with the efforts of FIDLOCK and the Unitalen Litigation Team consisting of partner and attorney WU Shuchen, patent attorneys WEN Huaqing and ZHENG Haiyang, Fidlock won again in the lawsuit against the defendant, a garment accessory company for infringement over a patent for invention, at the Shenzhen Intermediate People's Court. Prior to this, Unitalen had successfully represented Fidlock and won the case in an associated case against the defendant at the Shenzhen Intermediate People's Court and the Supreme People's Court. By now, Unitalen's representation of Fidlock in the judicial and administrative IP rights defense actions in China has maintained a complete victory.

Case Brief

Fidlock provides an original and user-friendly fastening system using a globally exclusive technology, which has completely changed the market and traditional solutions, combining the advantages of magnetic fasteners and that of mechanical locking. To protect the above-mentioned technological innovation, Fidlock has acquired a series of patents for the related technology in many countries including China. In order to protect its legitimate rights and interests and stop the imitation behavior, Fidlock has carried out a series of actions to protect its rights.

The defendant in this case is a well-known garment accessory company in Fujian, mainly engaged in the design and development, and production and sales of garment accessories, owns large-scale mold production and processing centers as well as hardware zipper production bases to produce tens of thousands of kinds of series products, widely used in clothing, shoes, hats, bags, home textiles and other light industrial products. Its products are exported to Europe, America, Southeast Asia, the Middle East and other more than sixty countries and regions. At the same time, there are nearly one hundred sales outlets in the domestic large and medium-sized cities.

In the first half of 2021, FIDLOCK entrusted the Unitalen Litigation Team, consisting of partner and attorney WU Shuchen and patent attorneys WEN Huaqing and ZHENG Haiyang, to file several patent infringement lawsuits with the Shenzhen Intermediate People's Court against various infringing products manufactured by the garment accessory company.

Case Analysis

The main issue in this case is how to obtain a relatively high amount of compensation within the scope of legal compensation. Unitalen's litigation team comprehensively studied the defendant's sales pattern and cooperative partners, and submitted several sets of evidence to prove that the defendant's sales of the sued infringing products cover an extremely wide scope and large quantity, in spite of a low unit price. In the end, the People's Court took into account the fact that the patent involved is a patent for invention and the rights are stable, and the infringing behavior of the defendant included manufacture and sales, as well as the factors such as the situation of the defendant's distributors, the sale situation of the sued infringing products and the associated products by the retailers on the internet platforms, and the like, and held that the above information indicated the nature and situation of the infringing behaviors that the defendant's sale of the sued infringing products covered a wide range, and that the minimum quantity was relatively high when the sued infringing products were sold by the retailers of the defendant, in spite of a low unit price of the sued infringing products. It was appropriately judged that the defendant should compensate the plaintiff for economic losses and reasonable expenses totaling 1 million Yuan.

Case Brief

(I) The plaintiff Transtek Medical and main requests

Guangdong Transtek Medical Electronics Co., Ltd. (hereinafter referred to as "Transtek Medical"), the plaintiff, was established in 2002. In 2011, the Transtek Medical started to create its own brand "Lifesense (乐心)" and formally entered the domestic smart health field, mainly engaging in health scales, sphygmomanometers, smart bracelets, and smart watches. In the fourth quarter of 2015, Lifesense for the first time surpassed Apple and became the second largest brand of wearable devices in China next only to Xiaomi, and was listed on the Shenzhen Stock Exchange in November 2016.

Transtek Medical has been using the trademark "乐心(LIFESENSE)" on health scales and sphygmomanometers since August 2011, but applied for registration of the trademark later: applied for the trademark "乐心(LIFESENSE)" on "scales" and other goods in Class 9 in April 2011 and gained the approval for registration in May 2012; applied for the trademark "乐心(LIFESENSE)" "sphygmomanometers" and other goods in Class 10 in March 2014 and gained the approval for registration in September 2016. Transtek Medical launched the "Lifesense" smart bracelet in August 2013 and the "Lifesense" smart watch in June 2014, and rapidly had a share in China's wearable device market. However, in Group 0901, Class 9, where smart wearable products are usually registered, the plaintiff's registered trademark "乐心(LIFESENSE)" designates only smart rings, smart glasses, wristband smart phones and other smart terminals, and does not include "smart bracelets" or "smart watches". In the first trial, Transtek Medical requested that the registered trademark "乐心(LIFESENSE)" shall be recognized as well-known in Class 9 scales and Class 10 sphygmomanometers and be protected across classes. At the same time, Transtek Medical claimed that "乐心(LIFESENSE)" constituted an unregistered well-known trademark on smart bracelet goods.

(II) The defendant Yanyan Trading and main defenses

Zhengzhou Yanyan Trading Co., Ltd. (hereinafter referred to as "Yanyan Trading"), the defendant, was established in 2008, filed application in October 2010, and was approved for registration of the trademark "乐心HIIN" in October 2011, on goods in Class 14 of wristwatches, alarm clocks, Jewelry and other goods.

In October 2019, the plaintiff, from the defendant's Tmall online store and business sites purchased with notarization a variety of "乐心HIIN" smart watches and smart bracelet products. The defendant argued that the defendant applied for registration and used the registered trademark priorly, used its own registered trademark legally, and smart watches and smart bracelets belong to the protection scope of its own registered trademark, which do not constitute trademark infringement.

Court Judgment

In March 2022, the Shenzhen Intermediate People's Court held in the first instance that, although the sued infringing product was designed in the form of a watch, by seeing the essence of the product and from the perspective of the product's actual function, performance and use effect, it belongs to the class of hand-held smart wearable products rather than a watch that only provides time function, and the defendant's defense of using its own registered trademark was thus not established. The plaintiff's unregistered trademark "乐心(LIFESENSE)" on the smart bracelet goods has been known to the relevant public, and should be recognized as unregistered well-known trademark. The sued infringing goods are essentially the same as the smart bracelet, and the trademarks are similar, infringing the plaintiff's unregistered well-known trademark. In the case that the unregistered well-known trademark is recognized in this case, there is no need to determine whether the registered trademark is well-known or not, and the cross-class protection.

In September 2023, the Guangdong High Court ruled in the second instance to uphold the Shenzhen Intermediate People's Court's judgment on the nature of the infringement, and ruled that the amount of compensations should be reduced where appropriate. The key points of the second instance judgment are as follows:

1. Regarding the question whether the defendant's use of its own registered trademark "乐心(LIFESENSE)" in Class 14 of "watches" was standard or exceeded the scope of the approved goods, the Guangdong High Court held that: the sued smart watch was not the same watch in class of goods that the defendant's trademark was approved for. The evidence on record was insufficient to prove the fact of the defendant's prior use on the goods of the sued smart watch, and there was no evidence to show that the defendant's registered trademark had certain reputation, so the protection scope of the defendant's registered trademark was insufficient to extend to smart watches and smart bracelets. The defendant's argument that smart bracelets and smart watches are covered by the protection scope of its registered trademark lacks factual and legal basis.

2. Regarding the question whether grounds for "乐心(LIFESENSE)" being the unregistered well-known trademark on the goods of "smart bracelet" were sufficient, the Guangdong High Court held there exists sufficient basis for the fact that Guangdong Lifesense and Shenzhen Lifesense's use of the unregistered trademark "乐心(LIFESENSE)" on the goods of "smart bracelet" before October 2019 had been known to the relevant public, had a high degree of market awareness, and had formed a good reputation.

3. Regarding the attributes of the sued infringing goods, the Guangdong High Court held that: based on the product specification and the situation of inspection in court, the main functions of the sued infringing goods were data processing and health monitoring, and it was necessary to download the APP in order to use all the functions. There was a clear distinction between the sued infringing goods and the goods in Class 14 of precious metals, jewelry, watches and other goods in terms of actual functions and use effects, and that it was not improper to determine that the sued infringing goods belonged to the same class of goods as the smart bracelets in the first instance.

Typical Significance

This case is a typical case of protecting "non-standard goods" excluded in the Classification Tables through an unregistered well-known trademark. The case determines the class and attributes of the sued infringing goods in the sense of trademark law through the specification and on-site inspection of the sued infringing goods, and analysis of the structure and function of the products, which provides a valuable reference for more future adjudication of trademark infringement involving manufactured goods of multi-functional combination and new composite material products.

Recently, the Beijing Federation of Industry & Commerce held a news conference on the 2023 Beijing Top 100 Private Enterprises, and released the 2023 Beijing Top 100 Private Enterprises "1+4" List , i.e., "Beijing Top 100 Private Enterprises", "Beijing Top 100 Private Enterprises in Science and Technology Innovation", "Beijing Top 100 Private Enterprises in Cultural Industry", "Beijing Top 100 Private Small and Medium-sized Enterprises" and "Beijing Top 100 Private Enterprises in Social Responsibility".

Unitalen Attorneys At Law ranked in the list of "Beijing Top 100 Private Enterprises in Cultural Industry" this year, which is the first time for Unitalen to be selected in the list of Beijing Top 100 Private Enterprises.