The S&F law blog

Shanghai software pirates arrested
June 22, 2009, 1:53 pm
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shanghai1Sentences for nine gang members involved in an international software counterfeiting scheme were upheld by the Shanghai High People’s Court.

The nine, who sold millions of dollars in pirated software, had previously received sentences of two to nine years by the Shanghai No 1 Intermediate People’s Court.

From 2003 to 2007, the gang, led by Shanghai native Ma Jingyi, sold 677,000 copies of pirated computer software to US companies and individuals for $10.48 million. The gang’s profit was more than 80 million yuan.

The illegally copied and distributed software was mostly an anti-virus program from Symantec.

Ma’s gang, which oversaw the production of 442,000 copies of the pirated program, was convicted of infringing copyright.

Gang members were arrested in July 2007 following a joint investigation launched in 2005 by China’s public security ministry and the US Federal Bureau of Investigation.

In 2003 Ma set up companies in Shanghai, selling software, most of it pirated, to US buyers. To avoid being detected, Ma kept most of his business on the Internet.

He hired workers in Shanghai to advertise his cheap software online and to look for customers and others in the US to process payments and deliver products. His primary customers were firms selling computer hardware and software.

Ma sold the pirated version for $15. The authorized version costs about $39. Last month, Symantec filed a lawsuit against Ma’s three companies, demanding compensation of 10 million yuan.

Following investigations, officers conducted raids in both Shenzhen and Shanghai in July 2007, while at the same time US police in Los Angeles conducted 24 searches at illegal distributors.
Source: China Daily


Chivas Regal tastes success in China securing special trademark status

The Chivas and Chivas Regal names have been recognized as well known trademarks

The Chivas and Chivas Regal names have been recognized as well known trademarks

A Scotch whisky distiller yesterday claimed a victory in the battle to protect its flagship brand in China.

The names Chivas and Chivas Regal – in English and Chinese characters – have been recognised by the Chinese Trade Marks Office (CTMO) as “well-known” trademarks.

Being granted that status elevates Chivas protection above that of ordinary registered trademarks, the firm said.

The ruling means that third parties will no longer be able to use the names or similar words to market other goods which “may cause confusion in China”.

Recognition for the brand comes after the Scotch Whisky Association (SWA) convinced the CTMO last August to recognize the phrase “Scotch whisky” as a “collective trademark”.

At the time, patent attorneys warned companies to register their own trademarks as well in order to protect their brands.

Figures from the SWA show that direct whisky exports to China grew by 5 per cent last year to £44 million.

Scotch now accounts for a fifth of all Scottish manufactured exports to the country.

Christian Porta, chairman and chief executive of Chivas Brothers, said: “This formal recognition of Chivas as a well-known trademark will strengthen protection of the Chivas brand in China.

“It prevents third parties from taking advantage of the reputation and goodwill that has been generated by the Chivas brand.”

He added: “This is an important result for Chivas Brothers as China is the largest market for Chivas Regal Scotch whisky and a significant investment is made to promote the brand throughout China every year.”

Chivas Regal is one of owner Pernod Ricard’s 15 “strategic brands”, which means it receives wide global distribution. The drinks giant’s other whisky brands include Ballantine’s, the Glenlivet, Aberlour and Scapa.

Porta added: “We are also extremely grateful to both the UK Embassy in Beijing and the SWA, which actively supported our efforts to achieve this well-known trademark recognition.”

Last year, the value of Scotch whisky exports topped £3 billion for the first time, with the equivalent of more than a billion bottles shipped abroad. A spokesman for the SWA said: “China is an important emerging market for Scotch and we’re working closely with distillers to ensure that there is a strong legal framework in place to protect their intellectual property rights.”

In its recent brands report, patent attorney firm Marks & Clerk highlighted steps China was taking to combat its reputation for counterfeiting.

Last year, a Chinese court awarded $182,000 to Diageo after a Shanghai firm was found to be copying the design of Johnnie Walker Black Label whisky.

Source: Shanghai Daily

Kaneka files suit against Pacific Rainbow
June 11, 2009, 1:49 pm
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LOS ANGELES—Kaneka Corp., Osaka, Japan, filed a lawsuit in U.S. District Court, Central District of California, Western Division, against Xiamen, China-based Xiamen Kingdomway Vitamin Inc. and City of Industry, Calif.-based Pacific Rainbow International, alleging patent infringement of Kankea’s U.S. patent (No. 7,145,044) related to the production of reduced coenzyme Q10 (CoQ10), also known as ubiquinol. Kaneka’s U.S. subsidiary, Pasadena, Texas-based Kaneka Nutrients L.P., supplies reduced CoQ10 as Kankea QH™.

The lawsuit alleges Pacific Rainbow and Xiamen Kingdomway are directly infringing and/or actively inducing infringement of the Kaneka patent through sale of ubiquinol. Kaneka is requesting a preliminary and permanent injunction from infringement, as well as regular and treble damages due to “the willful and deliberate nature” of the infringement.

In response to INSIDER’s request for comment, Pacific Rainbow issued a statement: “Kingdomway has filed its own patent application on the reduced CoQ10 in China in early 2009. In addition, Kingdomway is using an entirely different processing method to produce the reduced CoQ10. Accordingly, there has never been and will not be any infringement of the Kaneka patent. There is also no grounds for or merit to the patent infringement suit … [and we] intend to vigorously defend all claims brought in this litigation, and are confident we will prevail.”

Source: China Daily

Appeals court halts Epistar import ban
June 8, 2009, 2:41 pm
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Phillips and Epistar are in a legal battle over lumiled technology

Phillips and Epistar are in a legal battle over lumiled technology

Epistar and Philips Lumileds both claim victory after the latest US Appeals Court ruling, with the Taiwanese firm released from a US import ban.

Rival LED makers Epistar and Philips Lumileds each claim to have won victory in the latest round of their intellectual property saga.

On May 22, the US Court of Appeals for the Federal Circuit ruled partly in favor of both companies in a set of disputes surrounding Lumileds’ US patent 5,008,718 (‘718) patent.

That patent details an LED structure with an electrically conductive, transparent window layer that results in better current-spreading and a brighter emission out of the device.

While neither chip manufacturer could claim a complete victory, the US International Trade Commission (ITC) was found to have made two key errors in its previous investigation of the case.

One was that the ITC did not allow Epistar to challenge the validity of the Lumileds patent, while it also made a mistake by extending the “limited exclusion order” (LEO), which barred US imports of Epistar products, to other products made by third parties that feature Epistar’s AlGaInP chips.

Responding to the decisions, San Jose-based Lumileds picked out the court’s confirmation of the ITC’s original ruling – that Epistar had infringed the ‘718 patent – as a positive result.

And although the appeals court also overturned the ITC’s previous ruling that Epistar could not contest the validity of that patent, Lumileds remains confident that any such challenges brought by Epistar will be rejected.

Perhaps more worrying for Lumileds is the ruling that the LEO covering third-party products that contain Epistar devices should be scrapped, and referred back to the ITC for further investigation – the result of a change in the law made after the ITC’s original decision.

Epistar highlighted this aspect of the case in its own response, pointing out that the Lumileds patent would expire later this year, on December 18.

“The ITC erred in extending the LEO to Epistar’s customers, when none were named as respondents in the case,” noted the Taiwanese firm.

“Epistar has notified the US Customs and Border Protection of the decision.”

The Taiwan company will now proceed with its action against Lumileds in the US District Court of Northern California, in which it accused Lumileds of breaching a 2004 settlement between the two firms.

Meanwhile Lumileds is confident that it will now win a pending infringement suit against Epistar in the US District Court over three patents, including ‘718. It believes that the confirmation of Epistar’s initial infringement will pave the way for a ruling in its favor.

Source: Compoundsemiconductor

L’OREAL wins against L’OIYIR
June 2, 2009, 10:09 am
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The Nantong Intermediate People’s Court entered into the first-instance judgment on the trademark dispute over L’OREAL and 欧莱雅 (L’OREAL’s Chinese version), ordering defendants Hangzhou L’OIYIR Cosmetics and Shanghai Meilianni Cosmetics to cease infringement and jointly indemnify RMB 400,000 in damages to the French firm L’OREAL. In addition, the Hangzhou shall cease use of 欧莱雅 in its trade name and pay RMB 100,000 in damages to L’OREAL for unfair competition.

From 1981 to 2001, L’OREAL registered several series of trademarks of L’OREAL, 莱雅 and 欧莱雅, which are certified to be used on Class 3 goods, i.e. cosmetics, beauty products and perfumes. Co-defendant Hangzhou L’OIYIR was established in June 2004 and engaged in manufactory and distribution of cosmetics with Shanghai Meilianni. In January 2005, Shanghai Meilianni used a logo combining both English and Chinese, L’OIYIR 莱雅 on the packaging of its cosmetics. Hangzhou L’OIYIR advertised and recommended the L’OIYIR line of cosmetics and claimed that the products are from French L’OREAL.

The Court held that the joint distribution of L’OIYIR products by the co-defendants constituted trademark infringement and using 欧莱雅 in its trade name constituted unfair competition.

Source: China Daily

Siano denies infringement of TiMi Tech CMMB patents
June 1, 2009, 9:30 am
Filed under: Uncategorized

Israel-based digital mobile TV chipmaker, Siano Mobile Silicon, has rebuked a claim that it infringed the china mobile (CMMB) patents held by the standard’s developer, TiMi Technologies Co. Ltd.

Speaking to Interfax on May 26, Siano’s general manager, Wang Wei, responded to a recent Web announcement by TiMi Tech accusing Siano of infringing its CMMB-related patents. In the announcement, TiMi said it was considering taking legal action against Siano. As of May 26, the announcement had been removed from Timi Tech’s Web site.

Wang said that Siano had obtained all the necessary permission it needed to develop CMMB technology from the CMMB working group, which consists of CMMB-related companies and is governed by China’s State Administration of Radio, Film and Technology (SARFT). Siano is also a member of the CMMB working group.

According to Wang, the CMMB working group holds the patents relating to the use of the CMMB standard, whereas TiMi Tech, which itself is owned by SARFT, holds patents over its own self-developed methods of implementing the standard.

“As such, Siano did not infringe TiMi Tech’s patent, as it obtained permission from the CMMB working group and developed CMMB mobile TV chips using its methods,” Wang said.

Despite the claim that Siano had infringed TiMi’s CMMB patents appearing on the latter’s Web site, Siano’s CEO, Alon Ironi, said in a statement sent to Interfax that the “rumor” had been started by a third-party competitor.

“As the CMMB market ramps up, one of Siano’s competitors in the CMMB market has initiated a false rumor […] that supposedly there is a legal conflict between TiMi Technologies […] and Siano, regarding CMMB intellectual property (IP) rights,” Ironi said in the statement.

“This letter is to assure you that this rumor is completely false. The relationship between Siano and TiMi Tech is as good as it has always been, and no legal complaint has been submitted by either of the two companies against the other one,” he continued.

Ironi also expanded on the CMMB working group’s position on CMMB patents.

“SARFT has mandated that all patents associated with CMMB are put into a patent pool under the management of the CMMB working group,” he said. “No IP holder has any right to demand royalties associated with CMMB. At some point in the future (not in the near future), the CMMB working group may or may not request some nominal royalty from terminal makers that will go into the patent pool and be distributed by SARFT to any IP holders as appropriate. We must stress that they also may not request this.”