July 2011  

A Fruitful Year for the IP Team at Fangda Partners

In late April 2011, the Supreme People’s Court and the Beijing High People’s Court each announced a number of high profile and influential IP cases concluded by the Chinese courts at various levels in the year of 2010 as a reflection of the latest achievement of Chinese courts on the protection of IPR.  We are pleased to see that several IP cases involving trade secret, copyright, patent and trademark handled by the IP team of Fangda Partners have been selected by the Supreme People's Court and the Beijing High People's Court as leading IP cases.

One trade secret case handled by Fangda was named one of the "Top 10 IP Cases in 2010" by the Supreme People's Court.  In this case, we represented Pepsi China and Pepsi Chongqing in defending a civil case initiated by Pepsi's former joint venture partner, alleging that Pepsi infringed its trade secrets through the joint venture.  We successfully argued that, the defendant’s silence with regard to Pepsi’s alleged use of the trade secrets amount to implied license and consent.  Chongqing No. 5 Intermediate People’s Court supported our non-infringement argument in its decision. The Supreme People’s Court praised the judgment for both maintaining a fair and ideal environment for foreign investment and assisting the survival and development of a local brand. 

Three cases (including Bandai vs. Shantou Hongli Toys Industrial Co., Ltd copyright infringement case, Hubei Wushi vs. Ao Nuo patent infringement case and The North Face vs. John Meichao trademark infringement case) handled by Fangda were selected as the “50 Model IP Cases in 2010” by the Supreme People’s Court. 

In the Bandai case, we represented Bandai in 41 copyright cases before the Beijing No. 1 Intermediate People's Court against Shantou Hongli Toys Industrial Co., Ltd, a company in Guangdong Province and its distributor in Beijing for copyright infringement.  The court ruled in favor of Bandai and awarded more than RMB850,000 in damages plus interest.  This judgment was affirmed on appeal.  The Beijing High People's Court commented in its press release that "Bandai is one of the largest toys manufacturers in the world.  Its GUNDAM model kits toys are widely acclaimed around the world.  However, the acts of pirating its products are rampant from time to time.  The court confirms copyright infringement in each of the 41 cases and awarded damages in total amount of around RMB850,000 in favour of Bandai.  The case is an example of how PRC courts have been strengthening the judicial protection of IPR".  Moreover, the court successfully executed the judgment for the 41 cases and recovered full amount of the awarded damages for Bandai.

In The North Face vs. John Meichao, we represented The North Face Apparel Corp to file a case before the Shanghai No. 2 Intermediate People's Court against four local defendants for their joint infringement upon The North Face's trademark.  One of the defendants forged a license agreement, arguing that its sale of the infringing goods was authorized by a third party.  Upon our request, the court organized forensic judicial authentication and found that the license agreement was made up by the defendant.  The defendant was ordered to cease infringement and pay damages of RMB800,000.  The judgment was affirmed on appeal.  Full amount of the awarded damages have been recovered through court’s mandatory execution of the judgment.

Two cases (including the Bandai case and Yi Jianlian vs. Fujian Yi Jianlian Sport Goods Co., Ltd trademark cancellation case) handled by Fangda IP team were selected as the "Top 10 IP Cases in 2010 in Beijing" by the Beijing High People's Court.

In the Yi Jianlian case, we acted for Yi Jianlian, a NBA star and a Chinese basketball national team member, as a third party in a trademark registration dispute before the Beijing No.1 Intermediate People’s Court which confirmed “Yi Jianlian” as a “highly renowned trademark”.  The case is groundbreaking in that it is one of the few cases where the court has held that the name of a celebrity can become a “highly renowned trademark”. The court chose to issue its judgment on April 26, 2010, the World’s Intellectual Property Day, to mark the significance of this matter and broadcast its decision live online.  The judgment was affirmed on appeal.

In the press release of the court, the court commented that “Individual’s name right” should be recognized as a prior right as defined under Article 31 of PRC Trademark law.  The case is a typical case involving the damages to others’ name rights due to a trademark filing.  The significance of the case is that the fame of an individual’s name should be considered when evaluating whether a trademark filing has infringed the person’s right to his or her name.  The threshold for determining such fame does not require that the name is familiar to all the general public, but requires that the name enjoys certain fame in the relevant area.”  

These cases demonstrate our extensive experience and expertise in the area of IP litigation on a wide spectrum of IP issues and our continued effort to deliver premium services to our clients.  In each of these cases, we help our clients protect their IP rights as well as realize the value of their IP rights in a legal environment favourable to IP protection.  We appreciate the support and trust that we receive from the firm’s clients.  We would be very pleased to hear from you on any queries you may have. 

This publication is intended merely to highlight issues and not to provide legal advice.  Should you have any inquiry on specific issues, please contact your regular contacts at Fangda Partners or send an email to email@fangdalaw.com.