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On July 4, 2022, the China National Intellectual Property Administration (CNIPA) issued details of three Guiding Cases (Nos. 6-8) included in the Second Batch of Guiding Cases for Administrative Enforcement of Intellectual Property Rights. These cases provide general guiding significance for identifying and punishing repeated infringement of the same patent right, protecting registered trademarks embossed on recycled beer bottles, and enforcing mediation agreement by judicial confirmation.
In the following part, we will focus on the basic information and guiding significance of the three cases:
1. Guiding Case No. 6: Repeated infringement of the utility model patent entitled “Gearing Mechanism of Three-dimensional Packaging Machine”, handled by IP Office of Wenzhou City (Zhejiang Province, China)
(1.1) Basic information of the case:
On December 7, 2017, the company “Ruian Haoyun Machinery Co., Ltd” (hereinafter referred to as “the company Haoyun”) complained to Wenzhou IP Office that a person surnamed Guo (hereinafter referred to as “the person Guo”) infringed its utility model patent entitled “Gearing Mechanism of Three-Dimensional Packaging Machine” (Patent No.: ZL201620913636.X). On November 12, 2018, Wenzhou IP Office made an administrative adjudication, ascertaining that the infringement is established and ordering the person Guo to stop manufacturing and selling the alleged infringing products. The person Guo did not institute an administrative lawsuit. On July 1, 2019, the company Haoyun complained to Wenzhou IP Office for the second time that products of the same category manufactured and sold by the person Guo infringed the same patent right.
On September 4, 2019, Wenzhou IP Office made an administrative adjudication, ascertaining that the infringement is established and ordering the person Guo to immediately stop his infringing act and destroy the alleged infringing products. For dissatisfaction with the adjudication, the person Guo instituted an administrative lawsuit. On March 24, 2020, the Intermediate People’s Court of Ningbo City (Zhejiang Province, China) rejected the person Guo’s lawsuit. As a response, the person Guo initially appealed to the Supreme People’s Court, and later withdrew his appeal. On February 26, 2021, Wenzhou IP Office opened the case and conducted an investigation on the person Guo suspected of repeatedly infringing the same patent right. Pursuant to the relevant administrative adjudication and judicial documents, Wenzhou IP Office decided that the infringing act committed by the person Guo constituted repeated infringement.
The act of the person Guo, repeatedly infringing the patent right of the utility model entitled “Gearing Mechanism of Three-Dimensional Packaging Machine” (Patent No.: ZL201620913636.X) owned by the company Haoyun, constitutes repeated infringement as provided in Article 51 of the “Patent Regulations of Zhejiang Province”. According to Article 46 of the Regulations, the Market Supervision and Administration Bureau of Wenzhou City ordered in accordance with law that the person Guo shall stop the infringing act, and made a decision of imposing on him an administrative penalty with a fine of CNY65, 000.
This case has accurately applied local regulations, and specified criteria for identifying repeated patent infringement and procedures for imposing administrative penalties. In the case where the accused party does not stop the infringing act after an administrative adjudication or judicial judgment entered into effect, and instead continuously or repeatedly infringes the same patent right, it may be restrained by applying the provisions for repeated patent infringement. In particular, when the department in charge of patent-related work has made an administrative adjudication against the involved party for repeatedly infringing the same patent right, the department in charge of patent enforcement may impose administrative penalties for repeated patent infringement in accordance with local regulations.
2. Guiding Case No. 7: Infringement of the exclusive right to use the registered trademark “Tsingtao Beer” by the use of recycled beer bottles, investigated by Market Supervision and Administration Bureau of Weihai City (Shandong Province, China)
(2.1) Basic information of the case:
In March 2020, the company “Tsingtao Brewery (Rongcheng) Co., Ltd.” complained to the Market Supervision and Administration Bureau of Weihai City, alleging that a company in Weihai (hereinafter referred to as “the involved party”) infringed the exclusive right to use the registered trademarks “青岛啤酒” and “TSINGTAO”. After investigation, it was found that Tsingtao Brewery Co., Ltd. (hereinafter referred to as “Tsingtao Brewery”) has registered the trademark “Tsingtao Beer” (in Chinese) (No. 1304176) and the trademark “TSINGTAO” (in English) (No. 1351701) to be used on commodities such as “beer” under the category “32”. The beer bottles manufactured by Tsingtao Brewery are embossed with the letters “Tsingtao” in both English and Chinese at their bottlenecks. The involved party used recycled beer bottles as containers for holding its own beer products (in line with industry practice) for a long time during the manufacturing and sales of such products; among those bottles, the recycled bottles with a volume of 600 ml include Tsingtao beer bottles embossed with the letters “Tsingtao” in both English and Chinese at their bottlenecks. Although the involved party sold beer products with its own trademark and package in the use of those recycled bottles, it failed to effectively mask the embossed letters “Tsingtao” in both English and Chinese at the bottlenecks. As a result, it would easily render the public being confused as to the origin of the products or whether the involved party has any special association with Tsingtao Brewery, thereby damaging the exclusive right to use the registered trademarks “青岛啤酒” and “TSINGTAO”. Thus, the involved party’s act constitutes infringement of the exclusive right to use the registered trademark as provided in Article 57, item (7) of the Trademark Law. The authority in charge of this case ordered in accordance with law that the involved party shall immediately stop the infringing act, and imposed on it an administrative penalty with a fine of CNY30, 000.
This case involves the protection of the exclusive right to use registered trademarks in the field of recycling containers bearing the registered trademark of another party for reuse. According to national policies for recycling resources and industry practice, it is allowable to recycle glass containers for reuse, but the reuse should also be in compliance with laws and regulations. For products to be sold after having been placed in the recycled containers manufactured by another party, they may always be the same as or similar to the products of the rights holder. If the recycled containers bearing the signs such as embossed letters (which are difficult to remove) re-enter into the market with the signs not being effectively masked, they may easily render the public being confused as to the origin of the products or whether the manufacturer of such products has any special association with the rights holder of the registered trademark embossed on the containers, thereby infringing the legitimate rights and interests of that rights holder. Thus, such an act should be restrained and rectified.
This case affirms that sales of beer products placed in the recycled beer bottles with the original trademark not being effectively masked constitutes infringement of the trademark, and provides guidance for identifying similar cases according to the corresponding provisions.
3. Guiding Case No. 8: Enforcement of the mediation agreement reached with the assistance of the Shanghai IP Office for resolving design patent infringement disputes by judicial confirmation
(3.1) Basic information of the case:
On May 25, 2020, the company “Markor International Home Furnishings Co., Ltd.”, which had found that a company in Shanghai offered to sell multiple products suspected of infringing multiple design patents owned by it, filed a request for resolving patent infringement disputes via administrative adjudication with the Shanghai IP Office. On June 1, the Shanghai IP Office accepted the case involving said series of design patents, and presided over the mediation as per the desires of the parties to enter into mediation. On September 29, the parties signed an administrative mediation agreement for resolving the patent infringement disputes.
On October 20, the two parties applied to the Shanghai IP Court for judicial confirmation of the agreement. The Shanghai IP Court reviewed the application materials submitted by the parties, and the formalities and contents of the mediation agreement in accordance with law, and issued a civil ruling on the same date after the review had concluded, affirming that the mediation agreement reached by the two parties is valid, and if one party refuses to follow or fails to fully follow the agreement, the other party may directly apply to the people’s court for enforcement.
This case specifies that when resolving intellectual property infringement disputes, the administrative authority may, after ascertaining the facts, conduct mediation as per the desires of the parties to enter into mediation; and the parties may apply to the people’s court for affirming the validity of the mediation agreement reached for resolving the disputes. The patent administration department having government credibility and a high level of professionalism may act as the third party to preside over administrative mediation, thereby assisting the parties to reach a settlement and sign a mediation agreement. However, the mediation agreement is a civil contract in nature and lack of mandatory enforceability. If either of the parties fails to honor its commitments or refuses to implement the agreement, the agreement will be void of validity. This will not only greatly waste administrative resources and damage the credibility of administrative authority, but also incur increased costs for rights holders to seek protection, and thus may have a detrimental effect on maintaining an honest and trustworthy market environment. After going through the procedure of judicial confirmation, mandatory enforceability is given to the mediation agreement, and hence helps to avoid its difficult enforcement. Besides, judicial confirmation of the mediation agreement shall be final and binding, thereby improving the efficiency of seeking protection while enhancing organic collaboration between administrative and judicial protection departments.
https://www.cnipa.gov.cn/art/2022/7/4/art_66_176357.html;
https://www.cnipa.gov.cn/art/2022/7/4/art_66_176358.html;
https://www.cnipa.gov.cn/art/2022/7/4/art_66_176359.html.
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