The S&F law blog


Yekalon, Unilin locked in patent case
November 23, 2009, 5:53 pm
Filed under: Uncategorized | Tags: , , , , , , , , ,

Yekalon and Unilin are engaged in a patent dispute

Chinese building materials provider Yekalon Industry Inc says it will take legal action “at any cost” to defend its self-developed locking technology for laminate and wood floorings.

The private company, based in the southern boom city of Shenzhen adjacent to Hong Kong, was charged by its much stronger competitor Unilin, a subsidiary of the US-listed Mohawk and located in Belgium, with patent infringement at a world fair in Germany in January.

“We have hired top-notch lawyers in Germany and will appear at the court of Hamburg on Wednesday,” said Wilson He Yixin, chairman of Yekalon. “We will never surrender to these groundless allegations.”

The focus of the case lies in a glueless locking technology for laminate and wood floorings. Unilin has owned patents since 1996 for the method and duopolized the market with another European company, Valinge.

However, the Chinese company invented a new locking method in 2005 which can connect the flooring by vertically tapping in the edges of the planks instead of the established technique of angling and snapping horizontally, according to He.

“Our locking technology is completely self-developed. It works theoretically different from that of Unilin. How can we infringe its patents?” he asked, adding that Yekalon has applied for international patents for the invention under the Patent Cooperation Treaty (PCT) and will soon complete the process.

It is the second big clash between Yekalon and Unilin.

In July 2006, 18 Chinese flooring exporters, including Yekalon, were put under a Section 337 investigation by the US International Trade Commission (USITC) for patent infringement by Unilin and its subsidiaries.

Yekalon was the only company in the group that was not condemned by the investigation because the USITC found that its locking technology did not infringe the patent claims asserted.

The other Chinese companies who were using Unilin’s locking technology were ordered to pay $100,000 to $120,000 in royalties and $0.65 in royalties per cubic meter to the patent owner, or they would not be allowed to export their glueless laminate flooring panels to the US market.

It’s estimated that both Unilin and Valinge could earn more than $1 billion in royalties and licensing fees from flooring companies around the world.

Source: China Daily

Advertisements


CHINA CLOSES 20 ILLEGAL LITERARY WEBSITES

China’s National Working Group of Eliminating Pornography and Illegal Publications has announced achievements that it has made since campaigns were launched earlier this year against illegal online and mobile phone publications. NWGEPIP stated on October 20 that since the special campaigns were launched to crack down on vulgar online and mobile phone content, China had seized 1414 illegal online literary works, closed 20 websites that were found spreading pornographic information, and deleted a total of more than 30,000 links to illegal web pages. Meanwhile, NWGEPIP has also issued a special circular which asks each region around China to make efforts to stop the spread of vulgar novels online and remove unhealthy content from websites. In addition, NWGEPIP also states operators of websites publishing pornographic publications will be severely punished. A representative from General Administration of Press and Publication stated that in the first nine months of this year, various measures were taken to monitor online publications and up to 50,000 literary works of more than 4000 websites were monitored. GAPP will continue to focus on four areas: making relevant regulations, speeding up the construction of online publication monitoring system, establishing a GAPP online publication monitoring center, and promoting the construction of Chinese online literary publication platform. News about these closures comes days after Chinese authors rallied online against Google’s plans to start a digital Chinese library service. Chinawriter.com.cn has posted a message allegedly from Google which states that the American search engine will compensate Chinese writers USD60 for each book of each writer who agrees to allow Google to use the book online. The search engine stated in the announcement that it would pay at least USD60 to each writer for each book if the writer agrees to reconcile with Google, and the writer can receive 63% of the revenue from readers’ online downloading of the book in the future. Many writers have refused to accept the reconciliation agreement and have spurned Google’s take-it-or-leave-it attitude. The authors state they plan to continue to fight Google’s plans.

Source:Shanghai Daily



Lawsuit over font goes to court
August 10, 2009, 3:35 pm
Filed under: Uncategorized | Tags: , , , , ,

696C5F459DB3C2B482F84612821FF8E1

Beijing Founder Electronics Co Ltd has accused P&G of copyright infringement.

China’s No 1 provider of Chinese font products, Beijing Founder Electronics Co Ltd, has brought consumer goods producer P&G Guangzhou Ltd to court for alleged copyright infringement.

Founder Electronics is asking for 1.34 million yuan in compensation.

The company claims that P&G Guangzhou for the past two years has used a font developed by Founder Electronics on P&G packages, logos, trademarks and advertisements without permission.

The font has been used on 63 P&G products, according to Founder Electronics.

The involved font, or typeface, is called qianti, which means slim due to its resemblance to a slim lady.

Founder Electronics sued P&G Guangzhou and international retailer Carrefour in August 2008 for selling products with the qianti font.

The case reached a Beijing court in late June. A ruling has not yet been issued.

Going to court

“We have no other choice but to turn to the court since P&G Guangzhou turned a blind eye to our continuous efforts to negotiate the issue,” Huang Xuejun, director of the Matrix Development Department of Founder Electronics, was quoted by China Times as saying.

P&G Guangzhou declined to discuss the lawsuit.

“It is not convenient to comment on a case under judicial proceedings, but we hope the case will be decided as soon as possible,” Zhang Qunxiang, a spokesman for P&G Guangzhou, said.

“The Chinese characters are a tool for public communications, and no government entitles the monopoly rights of fonts to a certain company or an individual,” Zhou Lin, an agent of P&G Guangzhou, said after the June court trial.

“Founder Electronics just adjusted the shapes of the characters but not the original structure. It can only claim rights to the digitalized database, rather than all the characters,” Zhou said.

The 63 brands described as bearing the qianti font include the high-recognition P&G names of Rejoice, Crest, Sassoon, Safeguard and Whisper.

“If P&G Guangzhzou loses the suit, it will cost a lot for the company to design the logos, package the products and reprint the advertisements. The money which has been invested in marketing is hard to get back,” Zhang Bingwu, a senior brand marketing expert, told China Business Weekly.

“What’s more, changing the package of the involved products will lower consumers’ loyalty to these brands. Otherwise, the company has to pay Founder Electronics to use the font legally,” Zhang Bingwu said.

Founder Electronics charges P&G Guangzhou 10,000 yuan for a font, which contains more than 6,000 characters.

“In fact, with our fonts, 90 percent can be used free. Only special fonts developed by Founder Electronics should incur charges when they are used for commercial purposes,” Huang of Founder Electronics said.

Founder Electronics bought the copyright of the qianti font from creator Qi Li and then developed and digitalized the font in 1998.

Last April, the company registered the qianti font with the National Copyright Administration and received a copyright certificate from the government agency.

In addition to P&G Guangzhzou, Founder Electronics has taken two online game companies Blizzard Entertainment and the9 to court for alleged copyright infringement of its font.

Huang said companies such as Sony, Samsung and Panasonic have all paid Founder Electronics for the rights to use their fonts legally.

Public awareness

“People’s awareness of font copyright is weak. For example, we just sold about 2,000 sets of the newly developed ‘Xu Jinglei’ font when there have been millions of sets of pirated fonts,” Huang said.

Zhang Bingwu said a lawsuit against a well-known brand increases public awareness.

“Suing the famous brand P&G can raise people’s awareness about protecting the font copyright,” Zhang Bingwu said.

Jiang Yuhong with the Intellectual Property Affairs Center of the Ministry of Science and Technology said fonts should fall into the scope of copyright protection when the national Copyright Act is amended next time.

“The lawsuit may not be a bad thing, since it shows the determination of Founder Electronics to protect its copyrights of fonts,” Xu Xinming, a lawyer with http://www.ciplawyer.com, told China Business Weekly.

Xu said that a stronger enforcement mechanism for font copyrights protection is expected to grow out of the court cases.

He used karaoke music as an example.

“Things are changing. People were used to enjoying the songs free of charge, but after a series of trials on this issue, the public started realizing that it is reasonable to pay to use the songs in karaoke,” Xu said.

In the long run, the best resolution to font copyright suits will rely on proper charges for font use, as well as development of font copyrights management, You Yunting, a senior intellectual property lawyer with Shanghai’s JoinWay Law Firm, was quoted by China Times as saying.

P&G Guangzhou is the first joint venture in China of US-based Procter & Gamble, the world’s No 1 consumer products company.

Founder Electronics is a subsidiary of the Founder Group, a Chinese IT company established by Peking University in 1986.

Source: China Daily



China battles against counterfeiting, copyright violations

China was recently named one of the world’s worst offenders in counterfeiting and copyright violations. But the country’s progress in protecting intellectual property (IP) rights has also been widely acknowledged.

The Silk Street Market in Beijing is popular with both locals and tourists. It is famous, or infamous, for its wide selection of fake branded goods, ranging from jeans and scarves to wallets and handbags.

Despite years of crackdown, counterfeit goods can still be bought, either openly or beneath the counter. When the market shut down 29 stalls earlier this year for selling counterfeit goods, vendors not only fought back, but also filed a countersuit.

An intellectual property rights expert said authorities could have taken tougher measures.

Edouard Schmitt zur Hohe, intellectual property expert, said: “In Shenzhen for example, there is an identical market Luohu and when Wu Yi (former Chinese politician) went down, she wasn’t happy with it and within 24 hours all counterfeits were gone. So if the Chinese government really wants to make a move, it will.”

It is estimated that piracy has cost American movie, music and software companies over US$2 billion a year in lost revenue.

Mr Schmitt zur Hohe said: “IP infringement is stealing, it is theft. Somebody spent time, money, investment to create an intellectual property, a movie. It is expensive to make a movie. The average wage in China is 2,000 RMB. An 80 RMB movie is not going to break the bank.”

Over the years, China has put in place comprehensive laws to protect intellectual property rights, including patents, trademarks and copyrights.

A newly-revised patents law, which will come into effect in October, will strengthen intellectual property protection for foreign investors, and encourage the import of advanced technologies.

This is a clear sign that Beijing realises that protecting intellectual property rights is an important step in promoting innovation and spurring economic growth.

Mr Schmitt zur Hohe said: “In the 19th century, America is a huge infringer of IP, but once they started on their own IP, they became much better – same with Japan and Taiwan. I think in China, once they get their own trademarks going, we will see much more protection of IP involved.”

Experts say longer prison sentences for violators and greater damages for copyright infringers may help in the fight against counterfeit and piracy. But what is also essential is a more rigorous and more consistent enforcement of existing laws and regulations.

Source: Channel News Asia



SOUTHWEST PHARMA AND ROCHE’S DISPUTE ENDS
July 9, 2009, 10:13 am
Filed under: Uncategorized | Tags: , , , , , ,

www.sflaw.cnFollowing a ten year dispute between Shouthwest Pharma Co. and F. Hoffmann-La Roche AG, as well as both an intermediate and high court hearings, the Supreme People’s Court affirmed Southwest Pharma’s trademark right to Sanlietong.

In 1992, after the end of a five-year partnership between the two firms in which Southwest Pharma was allowed to manufacture Roche’s Saridon painkillers, Southwest Pharma filed a trademark registration for Sanlietong to the Trademark Office. Sanlietong, however, bears the same Chinese characters as Roche’s Saridon trademark, and consequently, Roche opposed Southwest Pharma’s trademark registration.

The Supreme Court confirmed even though Sanlietong and Saridon have the same Chinese characters, Sanlietong trademark was not registered prior to Southwest Pharma’s registration. Consequently, Southwest Pharma properly registered Sanlietong and Roche has no ability to challenge the trademark right.

Source: China IP News



Shanghai software pirates arrested
June 22, 2009, 1:53 pm
Filed under: Uncategorized | Tags: , , , , , ,

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