I. Patent Infringement Cases

1        Sony Co. Ltd. vs. Guangzhou Top Power Electronics Co. Ltd. for patent infringement

In September 1995, Sony applied to China Patent Office for invention patent of “Battery devices and devices for batteries′ installation”, and was granted in September 2002. On April 16th, 2004, Sony’s staff, as an ordinary consumer, bought two batteries of QM71D model and other types of batteries from Guangzhou Top Power Electronic Co. Ltd. and got the company’s commercial invoice, and the entire process thereof has been notarized .On July 13th, 2004, according to Sony’s application, the court of first instance ordered to preserve the evidence possessed by Guangzhou Top Power Electronic Co. Ltd.. The court selected one battery shell of QM71D model, sealed up 174 battery shells of QM71D model and 367 bottom shells that can be used by both QM71D model and other models.  The company’s office entrance, products show box, product packaging chest and production matrix were also photographed.

Guangzhou Intermediate Court held that the technical features of the infringing products included all necessary technical features in patent's claim 1, forming equivalent infringement; and the way of acquiring the evidence by Sony was in line with law, thus the company was charged with manufacturing and selling infringing products. The courts made judgment that Top Power Electronic Co. Ltd. should stop manufacturing, selling infringing products, and destroy stockpiles and specific production matrix immediately; pay damages of RMB l00,000 to Sony. The defendant appealed and Guangdong Higher Court upheld the original verdict.

2.  Deng Guoshun vs. Beijing Huaqi Company for patent infringement

On November 14th, 1999, the plaintiff applied to the State Intellectual Property Office (SIPO) for “The method and device for flash electronic external storage of data processing system” as an invention patent. It was granted on July 24th, 2002 and proclaimed on the same day. On July 26th, 2002, Deng Guoshun, Chengxiaohua and Netac Technology Co. Ltd signed an exclusive licensing contract. Later, the plaintiff found the defendants --- Beijing Huaqi Information Digital Technology Co. Ltd, Shenzhen Fuguanghui Electronics Co. Ltd., and Shenzhen Star Trading Co. Ltd. were producing and selling “Patriot" mini-flash memory using its patented technology. The plaintiff considered products produced and sold by defendants were within the scope of plaintiff ′s patent and constituted infringement, and requested the Court to order an immediate halt to such violations.

Shenzhen Intermediate Court made the first instance judgment that the defendants stop infringement immediately, and compensated plaintiff RMB 500, 000. Both sides appealed. In trial of the second instance, Huaqi Company applied to the Patent Re-examination Board of SIPO for patent’s invalidity. Since the dispute concerning the development of IT industry and can bring great influence to the whole mobile storage industry, infringement or not concerns the interests of many enterprises. Under the joint efforts of all parties, Guangdong Higher Court got the plaintiff and the defendant to reach mediation and the two sides achieve a win-win result.

II. Trademark Infringement Cases

3. Louis Vuitton Malletier vs. Shanghai Lianjia Supermarket for trademark infringement

In first half year 2006, Louis Vuitton Malletier (France) discovered that Carrefour’s Wuning shop controlled by Shanghai Lianjia Supermarket used five trademarks exactly the same as or similar to its registered trademarks while promoting three kinds of women bags at a favorable price. The plaintiff lodged a complaint on the basis of evidence acquired by itself (one bag) and conservation of evidence through notary (three bags), claiming for a total of RMB 500,000 compensation calculated according to the statute damages.

Shanghai No.2 Intermediate Court held the view that defendant fail to fulfill its obligation of reasonable notice as an operator of the same business. As a big supermarket engaging in retail trade, it should know that women′ s bags bearing trademarks the same as or similar to the plaintiffs′ s registered trademarks are products infringing plaintiff ′ s legitimate right of the registered trademarks. Its business operation has constituted trademark infringement and should bear the liability thereof.  So the court ruled that defendant should stop infringement immediately and compensate plaintiff RMB 300, 000 for economic loss including reasonable expenditure.

4. Starbucks Corporation vs. Shanghai Starbucks Cafe Co. Ltd. for trademark infringement and unfair competition

Starbucks Corporation registered in China “STARBUCKS”, characters and figures of “STARBUCKS” and “星巴克” ( “STARBUCKS” in Chinese) from 1996 to 2003. It authorized Shanghai Unified Starbucks Corporation to use the trademark. Shanghai Starbucks Cafe CO.Ltd. was set up in Shanghai in 2000 and was named as “星巴克” and used the trademark the same as or similar to the registered trademarks above . Starbucks Corporation and Shanghai Unified Starbucks Corporation considered Shanghai Starbucks Cafe Co. Ltd.’s conduct as infringement of their trademarks and unfair competition and sue the Company to court.

Shanghai No.2 Intermediate Court held the view that “STARBUCKS”, as a series of trademarks are internationally well-known and the company has used and propagandized the trademarks in Chinese-spoken regions. Trademarks such as “STARBUCKS”、“星巴克” spread rapidly and has been well-known by the public in the mainland, and they ( “STARBUCKS” and “星巴克”) should be regarded as well-known trademarks. Shanghai Starbucks Cafe Co. Ltd. registered character “星巴克” as the appellation in the company's name was in a bad faith. Shanghai Starbucks Cafe Co. Ltd. 's conduct above as well as using trademarks the same as and similar to the registered trademarks have infringed Starbucks Corporation legitimate right of the registered well-known trademarks and at the same time pose an unfair competition to the Starbucks Corporation. So the court made the judgment requiring Shanghai Starbucks Cafe Co. Ltd. and its subsidiaries to stop trademark infringement and unfair competition, change companies' name within 30 days since the judgment come into effect (The companies ' name should not include character “星巴克” after the changes), and compensate Plaintiffs RMB 500, 000 for economic loss jointly.

Shanghai Higher Court maintained the original judgment after defendant’s appeal. The court held the view that the essence of the case lies in the determination whether Shanghai Starbucks Cafe Co. Ltd. had the legitimate civil right, but not whether the time of company's preliminary name registration is before that of Starbucks Corporation's trademark registrations. Shanghai Starbucks Cafe Co. Ltd. had malice while registering company's name and it can not be entitled to the prior legitimate rights of company's name containing the characters of “星巴克”.

5. Chanel Company vs. Silk Market for trademark infringement

In April, 2005, Chanel Co. Ltd. (France) bought two purses with “CHANEL” trademark from Huang Shanwang's stall in Silk Market in Beijing. Chanel Co. Ltd. then sent an attorney letter to Beijing Xiushui Haosen Clothes Market Co. Ltd which is operating the Silk Market. and required it to take measures to prohibit the trademark infringements. On June 3, Chanel Co. Ltd. bought purses with “CHANEL” trademark from Huang Shanwang's stall again. On September 15, Chanel Co. Ltd. brought an accusation against Xiushui Company. On October 31, Chanel Co. Ltd. bought fake “CHANEL” purse from Silk Market for the third time.

Beijing No.2 Intermediate Court held that portfolios and handbags sold by Huang Shanwang are neither granted with legitimate authorization nor through legitimate source, his conduct has infringed plaintiff's registered trademark. Xiushui Company, as the operator and manager of the Silk Market has the obligations to prohibit the infringement of registered trademarks in the market. Although it did take some measures to prevent infringements, it was not in time and has provided convenience for others' infringements of the registered trademark, so it should bear the joint liabilities for the infringements. Finally, the court made the judgment that Huang Shanwang and Xiushui Company should stop infringement immediately and compensate plaintiff RMB 10, 000 for economic loss and RMB 10,000 for reasonable expenditure in the litigation. The Beijing Higher Court upheld the original judgment after Xiushui Company's appeal

Together with this case, the courts also made judgments on four other similar cases including trademarks of “LV”, “GUCCI”, “BURBERRY ”, “ PRADA”, respectively.

III. Copyright Infringement Cases

6. New Line Productions, Inc. vs. Beijing Sohu Information and Internet Communication Co. Ltd. for infringement of the right of communication through information network

In March, 2005 , New Line Productions, Inc. discovered that Beijing Sohu Information and Internet Communication Co. Ltd., through its website without plaintiff 's permission, provided as many as 100 American movies (including New Line Productions, Inc. 's movie ---“Lord of Ring ”) for its consumers in the form of payment by month. New Line Productions, Inc. thus claimed the the copyright of the movies above are protected by the Chinese laws, according to Berne Convention and the PRC Copyright Law, Sohu’s conduct of spreading plaintiff′ s movie works to public through internet without getting plaintiff’s permission caused material economic damage to the plaintiff.

Beijing No.1 Intermediate Court held that the authorization document shown by Sohu which rendered by Jinhudong Company was evidence formed outside China, apart from lacking original document, it wasn't notarized or attested. So the court refused to admit this evidence and declined defendant's claim of legitimate authorization. The defendant's conduct has infringed plaintiff′s right of communication through information network. The court made the judgment that defendant should stop its infringement immediately, make statement on the entertainment section of Sohu’s website for 3 days so as to eliminate the negative effect caused by its infringement and compensate plaintiff RMB 140,500 for its economic loss.

Four other similar judgments involving other famous American movie companies (FOX, Times Warner Inc., Columbia Pictures, Universal Studio) charging against Sohu were also made at the same time. The five cases covered ten hot American films such as Harry Pot 3 and Lord of Ring, etc..

7.  Cui Jian vs. China Recording Shenzhen Company for copyright infringement

With the permission of China Recording Company in 2002, China Recording Shenzhen Company, after paying RMB 2,800 to the Chinese Music Copyright Association for copyright royalty, commissioned HuaYun Film Laser Discs Co. Ltd. (HuaYun for short) to collect and copy the 12-songed CD album “CuiJian 1985 Memory”, and then issued the album. Shanghai Kedu Supermarket Chain Zhongwei Branch (ZhongWei for short) put the copies on sale. Thereafter, Cui Jian brought China Recording Shenzhen Company, HuaYun and Zhongwei to court.

Zhongwei Intermediate Court of NingXia Autonomous Region tried the case and made the judgment as follows: Cui Jian is the singer of the album. HuaYun and China Recording ShenZhen Company should bear civil liabilities for copyright infringement. China Recording is just the maker of the album. The permission of China Recording means only the permission of the right of production, rather than the permission from the performer. The payment to the Chinese Music Copyright Association only covers the payment for the writers of the song and lyrics, not the payment for the performer. The judgment followed thereby as this: China Recording Shenzhen Company and HuaYun should pay Cui Jian compensation RMB 19,200 for his economic losses and RMB 28,300 for the reasonable expenditures used to stop the infringement. The total payment amounts to RMB 47,500.

8. Zhu Zhiqiang vs. NIKE，INC. and Suzhou NIKE Sports Co. Ltd. for copyright infringement

Zhu Zhiqiang is the author of computer network movies 《独孤求败》、《小小特警》and so on, the characters in the works above are all images of “match stick homunculi”. In October ,2003, NIKE，INC. and Suzhou NIKE Sports Co. Ltd. promulgated images of “black stick homunculi” on its own websites, Sina Company's website and televisions so as to promote its new product named “NIKE SHOX STATUS TB”. Zhu Zhiqiang brought an accusation against the NIKE Company. and and others related and requested to compensate for RMB 2,000, 000 jointly.

Beijing No.1 Intermediate Court held the view that image of “black stick homunculi” are a copy and plagiary of  images of “match stick homunculi”, and made the judgment that the defendants should stop infringement, make apology and statement of eliminating negative influence and compensate Zhu Zhiqiang RMB 300,000 for economic loss jointly. Two of the defendants appealed, and the Beijing Higher Court held the view that the method of using rotundity denoting a person's head and beeline as other parts of a person's body has entered the public domain and any person can create images on the basis of this method. On the other hand, the original creation degree of images of “match stick homunculi” does not deserve exorbitant protection, and portion fall within the public domains should be excluded from scope of protection. Making comparison of the two works, the same portions have entered into public domain and do not deserve protection of Copyright Law; while the different portions are perfect embodiment of original creation of respective authors. So, the court rejected Zhu Zhiqiang's claim and refused to admit that images of “black stick homunculi” make use of images of “match stick homunculi”.

Ⅳ. Unfair Competition Cases

9. New Balance Sports Shoes Company vs. Qiuzhi Shoes Company for trademark infringement and unfair competition

In 2004, the New Balance Sports Shoes Company found that many sports shoes with the similar trademark to its trademarks appeared in major cities of China. These shoes are produced by Qiuzhi Shoes Company in Jinjiang, Fujian province, and the company was commercially licensed by the United States Niubalun International Holdings Limited, which is registered in Hong Kong. The New Balance Company also found the two commodities brochure abused “纽巴伦”(similar pronunciation in Chinese of "new balance") and imitated its style. So the New Balance Company sued Qiuzhi Company for trademark infringement and unfair competition.

Hangzhou Intermediate Court in Zhejiang province considered that the two trademarks are neither same nor similar after comparing the New Balance Company's registered trademarks with the logo Qiuzhi company used. The New Balance Company as a world-renowned manufacturer of sports shoes, their company′ s name and registered trademark of the first letter "N" are prominently used on their products. By the plaintiff repeated, long-term publication, the continual use of the logo and other reasons, "N" as a commercial logo, though without any inherent or natural distinction, has acquired the unique meaning through persistent use. The letter "N" of the new balance become the plaintiff company’s unique product logo and product names. As competitors, Qiuzhi company should be aware of the information about the New Balance Company 's trademark and logo. But in production, sales of sports shoes and packaging products, Qiuzhi company used the "N" logo prominently and repeatedly, even claimed that it is a brand from the United States which would easily confuse relevant customers. This, it has constituted unfair competition. The court so ordered that Qiuzhi company immediately stop their violations, and stop using logo "N" and the words "United States Niubalun International Holdings Limited", compensate New Balance Company RMB 300,000 for its economic loss, The court dismissed the claim for trademark infringement.

10. Nippon Paint Co. Ltd. vs. Keban Paint for unfair competition

In December, 1992, the plaintiff Nippon Paint (China) Co. Ltd. incorporated. In May, 2004, the defendant Keban Paint Company registered "来士威KEBAN" trademark. Then the Keban Company licensed Japanese Leppon（立邦） Paint International Group (Hong Kong) Co. Ltd. uses that trademark. And Japanese Leppon（立邦）Paint International Group (Hong Kong) Co. Ltd. commissioned for Keban Paint Company to be designated manufacturers and make "来士威" series of products for OEM production, sales. On the package of "来士威" paint that the court had sealed off, many places were marked the words "Japan Leppon （立邦） Paint International Group (Hong Kong) Co. Ltd. ", while without any name or address of the defendant’s company on it.

Both the first instance judgment made by the Intermediate Court of Longyan, Fujian Province and the second judgment made by the Fujian Higher Court regarded that Keban Paint Company prominently used the words "Japan Leppon Paint International Group (Hong Kong) Co. Ltd." on the package of "来士威" paints productions. Such act would arise the consumers' concern of the word "Leppon立邦" and thus the relevant consumers would easily mistake the appellant's enterprise to respondent's enterprise or the two enterprises are affiliated enterprises. Therefore, the act of using the name of "Leppon（立邦）” within the name of Japanese Leppon（立邦）Paint International Group (Hong Kong) Co. Ltd. in order to share plaintiff credit had constituted an unfair competition. The defendant's bad faith is very obvious here. The Longyan Intermediate Court made judgment that the Keban Paint Company should stop producing, selling, and destroy the infringing products and apologize to the plaintiff on the Economic Daily. The court of second instance maintained the original judgment.