Issue Date: 2021-06-08
Effective Date: 2021-07-15
On 8 June 2021, the Shanghai Intellectual Property Office issued the "Opinions on the Protection of Intellectual Property Rights in E-Commerce in Shanghai (for Trial Implementation)" (the “Opinions”) in order to enhance the ability of e-commerce platforms in preventing intellectual property risks and handling disputes.
The Opinions proposes that e-commerce platform operators should establish a platform user access management system that informs users that they shall not sell or release information on goods and services that infringe on the intellectual property rights of others. E-commerce platform operators should also establish a mechanism for handling intellectual property complaints.
If the right-holder believes that the goods sold or services offered on the e-commerce platform are suspected to infringe their intellectual property rights, they may notify the operator of the e-commerce platform. After receiving the notice from the right-holder, the operator of e-commerce platform should take timely reasonable and necessary measures.
On 18 May 2021, the “Online Litigation Rules of the People’s Court” (the “Rules”) was adopted at the 1838th Meeting of the Judicial Committee of the Supreme People’s Court and will come into force on 1 August 2021. The Rules contains 39 articles that cover the legal effect, basic principles, applicable conditions and scope, along with online procedural rules such as filing and execution.
Chinese courts have made great achievements in the field of internet law and justice, which is reflected in the integration of digital technology and trial and enforcement. From 1 January 2020 to 31 May 2021, 28.3% of the total number of cases were filed online. Online litigation rules have gradually matured and the level of judicial governance in cyberspace is continuously improving. The introduction of the Rules can effectively meet the judicial needs of the Internet era, strengthen judicial governance in cyberspace and promote digital justice.
On 16 June 2021, with the approval of the Supreme People’s Court and Chongqing Municipal Party Committee, the Chongqing Intellectual Property Tribunal was officially established in the Chongqing No. 1 Intermediate People’s Court.
According to the Supreme People’s Court, the Chongqing Intellectual Property Tribunal will mainly focus on the following types of intellectual property cases:
Douluo Dalu (Soul Land) is a web animation adapted from the novel of the same name by Tang Jia San Shao (唐家三少). Tencent currently holds the broadcast rights for this animation and the animation is exclusively broadcasted on Tencent Video. During the animation broadcast period, however, a large amount of its content was directly taken or cut and pasted onto short video platforms such as Douyin. Tencent applied to the court for preservation measures on the grounds of unauthorised broadcast infringement of its content.
The Chongqing No. 1 Intermediate People’s Court held that firstly, the applicant's request had a factual basis and legal basis. According to Article 1195 of the Civil Code, "Where network users use network services to commit infringements, right holders have the right to notify network service providers to take necessary measures such as deleting, blocking, and disconnecting links." Secondly, failure to take preservation measures will cause irreparable damage to the applicant's legitimate rights and interests. Douluo Dalu is a popular animation work that can bring higher advertising traffic and VIP membership revenue to Tencent. The "Douluo Dalu Topic" on the Douyin app has a maximum of 21.47 billion views, with a large number of followers and a wide range of dissemination. If the alleged infringement is not stopped in time, it will lead to the loss of Tencent's market opportunities, resulting in reduced traffic and revenue, weakening its competitive advantage. Therefore, it was held that Douyin should be prohibited from broadcasting the animation and should remove the illegal videos.
On 20 September 2017, Huawei applied for registration of a graphic trade mark designating goods for use as smart watches, computer programs, network communication devices, etc. The CNIPA decided that the application for registration of the trade mark designated for use on smartphones and network communication equipment should be preliminarily examined and approved, while the application for registration on the remaining goods should be rejected. Huawei later filed an administrative lawsuit to the court to revoke the decision of the CNIPA. The Beijing Intellectual Property Court held that the trade mark at issue and the cited trade mark (owned by Under Armour) were both purely graphic trade marks with similar design styles and overall visuals. Therefore, the trade mark at issue and the cited trade mark are constituted as similar and Huawei's claim was not supported.
In its second instance, the Beijing Higher People’s Court held that, firstly, Huawei is mainly engaged in the business of communication, computer, mobile wearable devices, artificial intelligence while the cited trade mark owner, Under Armour, is mainly engaged in the business of sports equipment. The outer part of the disputed trade mark is a circle, and inside is the letter "H" spelled by "two" U's, which represents the initials "HUAWEI"; while the graphic design of the cited trade mark is based on the English name of the registrant "Under Armour". The graphic design of the cited trade mark is based on the intersection of the letters U and A of the registrant’s English name "Under Armour".
The graphic lines of the trade mark at issue are identical in thickness, while the graphic lines of the cited trade mark are different in thickness. In terms of the composition elements and appearance of the trade mark, the disputed trade mark and the cited trade mark have different composition concepts, design styles, overall appearance and the recognition of the relevant public vary. If there is a possibility of confusion in the market with others' prior trade marks, others can claim it through opposition or invalidation procedures. Therefore, the Beijing Higher People’s Court held that the trade mark at issue and the cited trade mark did not constitute as similar trade marks, and that the original judgment and the decision of the CNIPA were improper and should be corrected. It was held that the relevant grounds of appeal of Huawei are valid and should be supported.
Disputed trade mark
Cited trade mark