With reference to new protein inventions, applicants always define biological sequences by the combination of homology and function, so as to obtain a broader scope of protection. However, considering that the association between the primary structure and the function of a protein is highly unpredictable, thus defined protein claim is always considered as not supported by the description and not conforming to Article 26.4 of the Chinese Patent Law. Therefore, discussions in this filed focuses on a proper manner to define a new protein patent and subsequently obtained protection scope. This is the first case for successful enforcement of biological patent in China, which clarifies a feasible definition of new protein patent, i.e. defining homology, origin (species), and function simultaneously. Furthermore, this case provides directions to judgment of future invalidation and infringement cases of new protein patents.

The patentee, HU Xiaoquan, owns a patent for invention No. ZL 200410024515.1, titled “Process for the Preparation of an Injection of Adenosine Disodium Triphosphate and Magnesium Chloride,” wherein claim 2 recites the additional technical features, “a freeze-dried powder injection of adenosine disodium triphosphate and magnesium chloride for injection, consisting of adenosine disodium triphosphate and magnesium chloride at the ratio by weight of 100 mg to 32 mg.”

On December 22, 2014, Mr. Anman QIU, former Deputy Director General of the National Copyright Administration of China joined Beijing East IP Ltd./Beijing East IP Law Firm (Beijing East IP) as a senior advisor.

An equivalent feature is a feature that, as compared to the feature described in a claim, performs substantially the same function by substantially the same means, produces substantially the same effect, and can be associated by an ordinary person skilled in the art without any inventive work. While determining whether a prosecuted product falls within equivalent infringement, the means, function, effect, and inventive work should be determined in the above order. Only when all four elements of a feature meet the above conditions, the feature can be determined as an equivalent feature.

On August 15, 2014, Manager of the Electric Department patent attorney Qiang LIN was invited to JETRO’s Beijing representative office to give a presentation on “The Best Practice of Software Patent in China.” Based on his comparative research on various country’s patent law, Attorney Lin presented a detailed introduction for software patent protection history, current practices, latest case reviews, and heated debated topics based on his own experiences on representing multinationals’ cases. All of JETRO’s Beijing representative office’s patent professionals attended this seminar, occupied the entire conference room. JETRO’s members from their Shanghai and Guangzhou offices also attended this seminar through live web camera. After the presentation, Attorney Lin answered questions in general practice, and discussed heated questions with attendees.

Both parties believe such in-depth, professional share and exchange should be held more often.

On August 15, 2014, Manager of the Electric Department patent attorney Qiang LIN was invited to JETRO’s Beijing representative office to give a presentation on “The Best Practice of Software Patent in China.” Based on his comparative research on various country’s patent law, Attorney Lin presented a detailed introduction for software patent protection history, current practices, latest case reviews, and heated debated topics based on his own experiences on representing multinationals’ cases. All of JETRO’s Beijing representative office’s patent professionals attended this seminar, occupied the entire conference room.

In December, 2013, the Supreme People’s Court issued a ruling favorable to a domestic mechanical equipment company (the “Company” hereinafter) represented by Beijing East IP Ltd., rejecting a re-trial application filed by a competitor of the Company.

Weekly China Brand Protection News

June 20, 2024

1. RMB 640 million Compensation Sets Record! Final Verdict in Favor of Geely’s Against WM Motor for Trade Secret Infringement

The appellants, Zhejiang Geely Holding Group Co., Ltd. and Zhejiang Geely Automobile Research Institute Co., Ltd. (“Geely”), along with the appellant, WM Motor Manufacturing Wenzhou Co., Ltd. (“WM Wenzhou”), and the appellees, WM Motor Technology Group Co., Ltd. (“WM Group”), WM Smart Mobility Technology (Shanghai) Co., Ltd. (“WM Smart Mobility”), and WM New Energy Vehicle Sales (Shanghai) Co., Ltd. (“WM”), were involved in a trade secret infringement dispute. Dissatisfied with the civil judgment made by the Shanghai High Court (“First Instance Court”) on September 5, 2022 (“First Instance Judgment)”, they appealed to the Supreme People’s Court (“SPC”).

On April 25, the SPC rendered a final verdict that overturned the First Instance Judgment, ordering WM to immediately cease disclosing, using, or allowing others to use Geely’s new energy vehicle chassis application technology and the related twelve sets of automotive chassis component drawings and digital model trade secrets. WM was also ordered to compensate Geely for economic losses amounting to RMB 6.4 billion (USD 896 million) and reasonable expenses of RMB 5 million (USD 700,000) incurred to prevent the infringement.

Since 2016, nearly 40 senior executives and technical personnel from Geely’s affiliated automobile companies have resigned and subsequently joined WM and its associated companies. Among them, 30 people left in 2016 and immediately joined WM. In 2018, Geely discovered that WM, with the aforementioned former employees as inventors or co-inventors, applied for 12 utility model patents involving the new energy vehicle chassis application technology and the related twelve sets of automotive chassis component drawings and digital model technology secrets (“Disputed Trade Secrets”), which they had accessed and mastered at Geely. Moreover, WM’s and its affiliated companies, without legitimate technological sources, quickly manufactured and launched the WM EX series electric vehicles, suspected of infringing Geely’s involved technical secrets. Geely filed a lawsuit with the Shanghai High Court, requesting that WM be ordered to stop infringing the involved trade secrets and to compensate for economic losses and reasonable expenses for rights protection, totaling RMB 2.1 billion (USD 294 million).

The SPC’s second instance judgment found that the trade secrets involved in this case possess substantial commercial value and that Geely had taken reasonable measures to maintain the confidentiality of these secrets, their acts warrant legal protection.

Regarding whether WM Motor infringed on Geely’s trade secrets, the second instance judgement found, based on the available evidence, that WM not only obtained all of Geely’s involved trade secrets through improper means but also illegally disclosed some of these secrets by applying for patents. Additionally, WM used all of the trade secrets to manufacture the chassis and chassis components for the WM EX series electric vehicles (including EX5, EX6, and E5). WM’s acts constitute an infringement on Geely’s trade secrets.

Regarding the determination of damages, the SPC stated:

Before the revised Anti-Unfair Competition Law came into effect in April 2019, punitive damages could not be applied, only compensatory damages. For the period prior to the revised 2019 Anti-Unfair Competition Law, the infringing profit, which is the compensatory damage amount, was calculated to be RMB 24.9 million (average price of EX series RMB 175,200/vehicle × sales from 2018 to April 2019 of 8,873 vehicles × profit margin of 20% × contribution rate of Geely’s involved trade secrets to the vehicle sales profit of 8%).

For the infringing profit from May 2019 onward (which is both the compensatory damage amount and the base for calculating punitive damages), the amount was calculated to be RMB 204 million (average price of EX series RMB 175,200/vehicle × sales from May 2019 to the first quarter of 2022 of 72,860 vehicles × profit margin of 20% × contribution rate of Geely’s involved trade secrets to the vehicle sales profit of 8%). Double the said amount equal to punitive damages (RMB 204 million × 2 = RMB 408 million), and adding the compensatory damages for the same period, the total is RMB 612 million (RMB 408 million + RMB 204 million ).

The combined total of these amounts results in WM Motor being ordered to compensate Geely for economic losses of RMB 604 million.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Weekly China Brand Protection News

June 13, 2024

1. RMB 8 million in damages against infringers of the “Martian in Chinese” mark that is recognized as well-known

Recently, the Guangdong High Court made a second-instance judgment on the trademark infringement and unfair competition dispute case between Martian Kitchenware Co., Ltd. (“Martian”) and Zhongshan Jiamei Electric Technology Co., Ltd. (“Jiamei”), an individual Zhou, Guangzhou Shuaifeng Kitchen Appliance Co., Ltd. (“Shuaifeng”), Shenzhen Leman Kitchen Appliance Co., Ltd. (“Shenzhen Huoxingren”), and Beijing Siyuan Bio Technology Development Co., Ltd. (“Siyuan”). The court found that the defendants’ acts constitute trademark infringement and were ordered to immediately stop infringing on Martian’s Cited Marks. Zhou, Shuaifeng, Shenzhen Huoxingren, and Siyuan were ordered to compensate Martian a total of RMB 8 million (USD1.10 million), and Jiamei shall bear joint and several liability for compensation within RMB 5 million (USD689,000).

Cited Marks

Disputed Marks

The court found that first, since 2015, Martian’s “Martian in Chinese” mark has been recognized as a famous brand product in Zhejiang Province and a famous trademark in Zhejiang Province. From revenue to profits, advertising investment, honorary awards, various media reports, etc., it reflects the popularity and influence of the “Martian in Chinese” mark on integrated stove among consumers, which is enough to prove that when the “Martian Pioneer in Chinese” mark was filed, the “Martian in Chinese” mark had reached a well-known status in kitchen appliances, especially integrated stoves.

Second, the defendants argued that the “Martian Pioneer in Chinese” was a registered trademark and did not constitute infringement. The court held that, based on good faith and business morals, even if the defendants use a registered mark, considering well-known mark status provide better, stronger, and wider protection scope, the court can determine whether to recognize the Cited mark as well-known based on the circumstance of this case. The court found that it is necessary to recognize the Cited Mark as well-known mark in order to stop the defendants’ infringement activities.

Third, the “Martian Pioneer in Chinese” mark and the distinctive part of other “Martian Pioneer in Chinese” marks constitute a copy of the well-known trademark “Martian in Chinese.” Moreover, when comparing the disputed mark with the Martian’s Cited Marks, it contains an “M” figure with a circular background that is similar to Martian’s trademark and completely contains Martian’s trademark. The use of the disputed marks constitutes trademark infringement.

2. Unauthorized modified Casio watch constitutes trademark infringement

Recently, the Liaoning High Court concluded a second-instance trademark infringement and unfair competition dispute between CASIO Computer Co., Ltd. (“Casio”) and an individual Chen and an individual Han. The court found that Chen and Han infringed Casio’s trademark rights and ordered them to immediately stop their infringement of Casio’s Cited Marks and compensate or economic losses and reasonable expenses of RMB 600,000 (USD82,800).

Cited Marks

The court found that: First, Chen and Han sold non-original watch cases and watch straps (including watch buckles), as well as finished watches modified with non-original watch cases and watch straps (including watch buckles). However, when it promoted, offered to sell, and sold the allegedly infringing goods on platforms such as WeChat Moments, Bilibili, Little Red Book, Dewu, Xianyu, and online stores, it did not clearly inform the relevant consumers of the fact that the accessories used for modification were not original nor authentic.

Second, Chen and Han directly stated in some product names such as “Casio G-SHOCK Black Gold GA110/700/400/5600/GMA Ice Tough Glacier Transparent Case Strap,” which did not contain the word “modification.” In the “Purchase Instructions” of some product sales pages, it clearly stated that “Our store is all original and authentic,” and pasted a label with the words “Steady G-SHOCK” on the back of the finished watches sold. Even some of the accessories sold (including the modified finished watch accessories) directly carried the trademark in question, misleading the relevant public regarding the source of the products. Chen and Han’s acts constitute trademark infringement.

Third, Chen and Han promoted, offered to sell, and sold Casio high-end products that are modified from low-end Casio models, or modified Casio product styles into third-party product styles, or attached third-party logos, which damaged the goodwill of Casio’s cited marks. These acts constituted trademark infringement.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Weekly China Brand Protection News

June 5, 2024

1. Selling goods during webcasting infringed the “BELLE in Chinese” trademark. The court applied punitive damages and ordered RMB 22 million in compensation

Fuyang Co., Ltd. (“Fuyang”) is the owner of the “BELLE” mark with reg. no. 1815147, the “BELLE in Chinese” mark with reg. no. 3086374, and the “BELLE” mark with reg. no. 37518850 (collectively as “Cited Marks”). The Cited Marks are all approved for “shoes” related goods in Class 25.  Xinbaili Shoes (Shenzhen) Co., Ltd. (“Xinbaili”) and Lirong Shoes (Shenzhen) Co., Ltd. (“Lirong”) are legally authorized by Fuyang to file a lawsuit in their own name for infringement of the Cited Marks and unfair competition, and to pursue relevant infringement liabilities.

Xinbaili and Lirong found through investigation that in February 2021, a Wenzhou e-commerce company (“Wenzhou Company”) used the “BELLE” and “BELLE in Chinese” marks on their Douyin account named “Australian Belle Official Flagship Store” without authorization. In July 2021, Liu obtained the “” mark with reg. no. 5925271 that was approved for use on goods such as “shoes” in Class 25. From April 15, 2021 to May 26, 2022, Liu registered several individual business names, including “Wezhou City Lucheng District Huibu Shoes” and used them to register and operate multiple accounts on Douyin, including “Australian Belle Official Flagship Store” and “Abao’s Strictly Selected Women’s Shoes.” Liu sold shoes bearing “” and “AOZHOUBELLE” on these accounts.  Xinbaili and Lirong sued Wenzhou Company and Liu to the Wenzhou Intermediate Court based on trademark infringement and unfair competition with a request to order the Wenzhou Company, Liu to immediately stop infringement and eliminate any impacts, Liu to compensate their loss of RMB 44.8 million (USD 6.19 million), punitive damages of RMB 89.6 million (USD 12.37 million), and reasonable expenses of RMB 189,960 (USD 26,233).

The Wenzhou Intermediate Court held that: Wenzhou Company and Liu used the logo similar to the Cited Marks without authorization, which constituted trademark infringement. In view of the fact that the alleged infringement constituted trademark infringement, it is no longer necessary to repeat the analysis on whether the same behavior constituted unfair competition. Regarding Liu’s claim that he was the owner of the “” mark and that it was legitimate to use the alleged infringing logo because the said mark was a combination of “Australia Belle in Chinese” and “AOZHOUBAILI”. However, “AOZHOUBAILI” was replaced with “AOZHOUBELLE” in actual use, it showed that Liu had a strong subjective intention to infringe, which was difficult to be justified. Therefore, the court did not accept this defense. Because the online store in question had stopped selling the alleged infringing goods, the plaintiff’s request to stop the infringement was not supported. The request for Wenzhou Company and Liu to eliminate the impact and Liu to compensate for the loss in the form of one-time punitive damages was supported. In summary, the Wenzhou Intermediate Court ruled that Liu should compensate for economic losses (including reasonable expenses) of RMB 22.1 million, the Wenzhou Company and Liu should publish a statement to eliminate any impact.

Liu appealed to the Zhejiang High Court, but the appeal was dismissed and the lower court’s judgement was affirmed.

2. Bad faith filing of “Bently Lu Zhi in Chinese” should not be approved for registration

Plaintiff Bin Li He Zong (Xiamen) Supply Chain Management Co., Ltd. (“Bin Li”) appealed the CNIPA’s decision to refuse the registration of the “Bently Lu Zhi in Chinese” mark with No. 41562537 designated in Class 33 for wine related goods to the Beijing IP Court. The Beijing IP Court dismissed Bin Li’s appeal.

The issue was whether the application for registration of the disputed trademark violated Article 44(1) of the Trademark Law (trademark obtained through deceit or other unfair means). The Court held that the plaintiff had applied for the registration of 51 trademarks, including several trademarks containing the words “Bentley” and “Bentley in Chinese”, and including marks containing the wing design. “Bentley”, “Bentley in Chinese” and the wing design are marks that enjoy certain degree of fame owned by Bentley Motors Ltd., the third party in the automobile goods. The plaintiff applied for the registration of a number of trademarks that were highly similar to the third party’s Chinese, English and graphic marks, which was obviously in bad faith. The plaintiff squatted the third party’s prior trademark applications with a large number of applications, which has seriously disrupted the order of trademark registration management, damaged the public interest, and these marks should not be approved for registration. Although the disputed mark has not yet been approved for registration, the CNIPA correctly refused the registration by applying Article 44(1).

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China