CHINA INTELLECTUAL PROPERTY LAW NEWSLETTER
Vol. 5 , No.1 - March 9, 2004
TOPICS THIS ISSUE:
- VISIT LLX AT INTA
- LEHMAN, LEE & XU China Law Teleseminars
- China Businessman Applies To Trademark George W. Bush Name To Market Nappies
- Company's Bid For "Valentine's Day" Sparks Disputes
- Warner Music Sues Shanghai Internet Firm For Alleged Copyright Infringement
- Starbucks Coffee Chain Sues Shanghai Competitor Over Use Of Chinese Name
- Dbtel Sues Motorola In China Over Design Rights
- TV Makers Fight Trademark Dispute
- Chang'an Department Store Faces Music Copyright Lawsuit
VISIT LLX AT INTA INTA 126th Annual Meeting 2004
May 1-5 - Atlanta, Georgia Lehman, Lee & Xu welcomes you to participate in the following: 3rd ANNUAL CHINA BRAND OWNERS BRUNCH - May 2, 10:00am at the Atlanta Marriott Marquis, Ballroom. Start the 126th Annual Meeting by experiencing Chinese hospitality at its finest. Hosted by Lehman, Lee & Xu and Tsingtao Beer, we hope that this year's brunch will once again provide for a relaxing forum to learn more about China brand owners and discuss changes in China's IP sector, including changes to China's IP laws. If you would like to attend, please send email to inta@lehmanlaw.com or faxes to +8610 8532-1999. LEHMAN, LEE & XU BOOTH - Exhibit Area. Visit with representatives of Lehman, Lee & Xu and Chinese brand owners. On display will be general literature on China trademark law, Q&As on China trademark registration, IP enforcement strategies and more. Atlanta Marriott Marquis
265 Peachtree Center Avenue, N.E.
Atlanta, GA 30303 USA |
LEHMAN, LEE & XU China Law Teleseminars |
China Businessman Applies To Trademark George W. Bush Name To Market Nappies
A Beijing businessman has filed an application to trademark the Chinese name of US President George W. Bush to help market his disposable nappies, state media announced recently.
The applicant, surnamed Guo, filed an application with the General Administration for Industry and Commerce of China, stating he wants to use the two-character phrase "Bushi" as a trademark, reported the Beijing News.
"I hit upon the idea by chance," said Guo. "Back in my hometown in Henan province, the pronunciation of 'Bushi' sounds exactly like 'not wet'."
To this, the Government officials are not amused.
One official from the State Trademark Bureau, surnamed Liu, said the application would very likely be rejected "because it may bring about bad social impact if a leader's name is registered as a trademark".
Liu said it could take up to 16 months for a final decision to be made.
China's Trademark Law bans words or patterns that can cause "harmful effects on ethics or society" to be used as trademarks.
Liu said the authority had recently turned down an application by a costume company which applied to use the Chinese translation of "Lewinsky" as a fashion brand, referring to Monica Lewinsky who had an affair with former US president Bill Clinton.
(Source: Agence France Presse)
Company's Bid For "Valentine's Day" Sparks Disputes
Last Saturday was Valentine's Day - a day where people all over the world celebrate love. In China, a company tried to own "Valentine's Day" by filing a trademark application for it. This move has sparked some debate in China since the application to register the name of the romantic day as a trademark was made on February 3, just 11 days before the festival.
Yang Shoubin, general manager of the applicant Leesa New Life Technology Development Co. Ltd., said the trademark "Valentine's Day" would be used on the company's shower equipment, which was designed to create a romantic ambiance in the bathroom.
If the application to the Trademark Office of the State Administration of Industry and Commerce (SAIC) succeeds, the name of the festival, said experts, could not be used as a trademark in some commercial places as the company applied for registration in the category of service areas, which include public bathhouses, beauty salons and health care units.
The registration, theoretically speaking, could be approved, experts acknowledged, since the name "Valentine's Day" does not violate the eight articles prohibiting the registration of certain trademarks in accordance with China's Trademark Law, which forbids the registration of names the same or similar to the nation's name, of ethnic discrimination or harmful for social morals.
SAIC's officials decline to comment on the company's move, saying the decision has not been made yet.
But most people have voiced their objection to the trademark application.
According to a legal practitioner here, Valentine's Day being a popular event now in China, its name "Valentine's Day" should be regarded as a public asset. It would be unfair for the public and other businesses if it belonged to one company.
If the registration succeeds, he said, many more companies might follow suit to put more holidays in their pockets.
"It should be a holiday's name, not a trademark," he said.
(Source: Xinhua News)
Warner Music Sues Shanghai Internet Firm For Alleged Copyright Infringement
Taiwan Warner Music, a subsidiary of Warner Music Group, is seeking RMB250,000 in compensation from Rongshuxia, an Internet content provider in Shanghai, for alleged copyright infringement, as reported in the China Daily.
Warner claims Rongshuxia provided a free music downloading service for 10 songs by Chinese pop singer Na Ying in early 2003, which had been released by Warner in 2001. It was reported that such illegal spread of music on the Internet has brought heavy damages to the sales of albums in traditional markets, which are shrinking at an annual rate of 7%.
Rongshuxia denies it infringed Warner's copyright and said the downloading service was part of a co-operative project with a local radio station.
Warner is suing Rongshuxia in the Shanghai No. 2 Intermediate People's Court and is seeking RMB50,000 compensation towards investigation fees and RMB200,000 compensation for lost sales, the paper reported. It was also reported that the latter was calculated on the basis of a charge standard set by a US website www.apple.com.
Warner estimates that each of the songs in question was downloaded 2,500 times.
(Source: AFX News)
Starbucks Coffee Chain Sues Shanghai Competitor Over Use Of Chinese Name
In the land of tea, the world's best-known coffee chain is going to court to protect its name.
The U.S. coffee chain Starbucks is suing a competitor in Shanghai over use of their shared Chinese name, the company said.
Starbucks said it filed the lawsuit in December last year against the Shanghai Xingbake coffee shop chain for trademark infringement after it was unable to settle out of court.
Both companies use the same three Chinese characters in their names - "Xingbake." In Chinese, "xing" means "star" and "bake" (bah-kuh) is a phonetic rendition of "bucks."
The non-Starbucks company, Shanghai Xingbake, claims the name was registered as its company name, rather than as a trademark, making Starbucks' complaint invalid.
"We were disappointed that we were not able to come to an amicable agreement regarding this issue," Starbucks said in an e-mailed statement. "However, we will take legal steps to protect the value of our trademark, and protect the public from confusion and deception."
Starbucks has 37 stores in Shanghai and close to 100 in China, where it has hooked legions of middle-class customers after entering the market in 1999 with virtually no competition. It even has an outlet inside the grounds of the Forbidden City in Beijing.
Xingbake is among the many smaller competitors hoping to give the global coffee giant a run for its money. General Manager Mao Yubo said his two-store chain had registered the name as its company title on March 9, 2000, before Starbucks had even applied.
He said Starbucks' suit was invalid because it alleged infringement of trademark rather than company name.
"We came first," Mao said. "We can't lose the case."
Foreign companies operating in China have increasingly turned to the law to protect their brands from rampant copyright piracy.
Hollywood films are available everywhere here on pirated DVDs - sometimes just days after their debuts on big screens in the West. Bogus clothing and bags bearing labels from Dior to Dockers fill market stalls, and medicines, cigarettes, even entire car designs have been illegally copied by Chinese producers.
Chinese companies have also been turning to the courts to protect their names, something unheard of in the past.
Shanghai drinks maker Yaqing Industry and Trade has sued Coca Cola and its local bottler, claiming the characters for Coke's Qoo fruit drink - labeled "Ku-er" in Chinese - too closely resembled that of Yaqing's Kuhai drink.
(Source: Associated Press Worldstream)
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Dbtel Sues Motorola In China Over Design Rights
Shanghai DBTEL Industry, a unit of Taiwan-based DBTEL, has gone to court in a lawsuit against Motorola China Branch, saying the Motorola unit infringed on its design copyright for a handset printed-circuit- board. Shanghai DBTEL is demanding RMB198 million in compensation.
It is part of the recent series of conflicts between these two partners.
Shanghai No. 2 Intermediate People's Court has accepted two cases from DBTEL since June 2002.
The first hearing was held this month on February 5.
DBTEL's allegations focused on the printed-circuit-board, a key component of mobile handsets.
A second case, relating to the appearance of the design, has been suspended, the plaintiff said.
Motorola and DBTEL began working together in 1998 to improve Motorola's Shark, a handset that was too big in size and was not suited for the Chinese market.
"Yet Motorola asked to end the project called Shrink Shark, and picked up a plan put forward by DBTEL to get a printed-circuit-board re-layout," disclosed the attorney for DBTEL. He stressed DBTEL designed the part.
In April 2001 Motorola launched the Motorola T189. In April of 2002, Motorola launched another product, the C289, and DBTEL found that the circuit board in the C289 was the same one as in the T189.
However, Motorola denied the charge. "The design is not under the protection of China's Copyright Law," said the lawyer for Motorola.
According to Motorola's attorney, the printed circuit board cannot function on its own but provides a circuit link for different components. "Without the components, the design of the printed circuit board is meaningless," she said. "Therefore, a printed circuit board is not an independent design."
Motorola representatives have also pointed out that among the circuit designs, only integrated circuits are protected by copyright law.
Since September 2002, DBTEL has made numerous claims against Motorola in Taiwan.
With the first claim, DBTEL filed a criminal complaint alleging that the Motorola C289 mobile phone infringed upon DBTEL's copyright on its printed-circuit-board drawings.
DBTEL also claimed that the Motorola C289 infringed upon DBTEL's design patent for the Motorola T189 mobile phone. The model was produced by DBTEL for Motorola under an original equipment manufacturer (OEM) contract, which reserved technology rights to Motorola.
In October 2002, as a response to DBTEL's filing, Motorola filed an invalidation action against DBTEL with the Intellectual Property Office of the Taiwan Ministry of Economic Affairs. In the filing, Motorola asked the Intellectual Property Office to invalidate DBTEL's registered design patent on the T189 phone.
(Source: SinoCast)
TV Makers Fight Trademark Dispute
Shanghai's No. 2 Intermediate People's Court held its first hearing earlier this month on February 3 on the first tort case in China's colour television field, which was filed by the Xiamen Overseas Chinese Electronic Co Ltd (XOCECO) against the Sichuan Changhong Electric Co Ltd. The plaintiff, based in East China's Fujian Province, is seeking compensation valued at RMB500,000 (US $ 60,450) along with an apology.
The company said that it obtained approval for registration of its trademark of the CHDTV (China Harva Developing Towards Victory) name for its television products on February 21, 2001, which was valid for 10 years.
XOCECO is known in China as Xiahua in Chinese pinyin, and the word Harva is the pronunciation of Xiahua in the Minnan dialect, which is widely used in Xiamen. The company claimed that Changhong used a similar pattern also with the letters of CHDTV on its packaging, promotional materials and televisions as of last year. "In addition, they still use CHD, which is the main part of our trademark," said the attorney for XOCECO.
Changhong, a leader in China's television market, insisted that it only used HDTV, but not CHDTV. "Our pattern is made up of an arc followed by HDTV and an English word for Ready," countered the lawyer for the company and its Shanghai branch.
Changhong stressed that such a pattern was not a trademark but an indicator of a television's function. "A document by the State Bureau of Technical Supervision stipulates that HDTV is a technical term meaning High Definition Television," the lawyer for Changhong explained. "HDTV Ready is also widely recognized by TV producers, which means that the television cannot receive the signal if it is without a top-set box."
XOCECO has filed suits on the matter in four cities including Xiamen, Guangzhou, Beijing and Shanghai last August, and it also urged industrial and commercial authorities in many cities to handle the matter.
The Shanghai Agriculture Industry Commerce Supermarket Co Ltd, which was presented in court as the co-defendant, said that it suspended the selling of the Changhong television on August 26 last year. It resumed the business in September, after getting a letter by the State Administration for Industry and Commerce. According to Changhong, the administration endorsed the explanation of the company.
(Source: Business Daily)
Chang'an Department Store Faces Music Copyright Lawsuit
Chang'an Department Store, a major retail outlet in Beijing, has been charged for copyright infringement by the Music Copyright Society of China.
This case, the first of its kind since the country's Copyright Law was amended in 2001, is drawing attention nationwide.
Proceedings in China's first-ever lawsuit over copyright infringement for background music allegedly being played for profit-making purposes began on February 4 in the Beijing No. 1 Intermediate People's Court.
In its indictment, the plaintiff is seeking a compensation of RMB228,100 (US$27,600) for the accused store's use of background music, whose copyright is managed by the society, without being authorized and paying fees to the society. No judgment was made on February 4 in the case, and an announcement for the next session is yet to be made public.
The Music Copyright Society of China is the country's only officially recognized organization for music copyright administration.
Background music played at department stores or hotels, also called 'muzak', received legal protection in 2001 under revisions to the Copyright Law. The law states that both live and mechanical performances enjoy the same rights. In the original version of the law, which was adopted in 1990, the rights in performance were only related with live performances by way of displaying musical works through the performances of the musicians or technical equipment.
At February 4's hearing, the plaintiffs in the case said they had recorded three hours worth of background music for the store in September of last year as evidence. The music was broadcast during the store's business hours. "Only in three hours, 21 songs were played whose rights had been entrusted to the society for administrative purposes," said the lawyer representing the plaintiff. The lawyer added that this is only a small part of the works played by the accused without authorization.
The association has now administered copyrights for over 14 million musical works by 2,500 members. "But the evidence could fully support the fact that the accused has been using the musical works illegally for a rather long time, in large amounts, with the purpose of making profits," opined the lawyer. The evidence has been preserved and notarized, according to the lawyer.
The society issued an attorney's letter to the store last April, pointing out that the store is violating the plaintiff's rights. "But the accused paid no heed to our legal appeal and continued as before," said the lawyer.
Up to now, 23 department stores in Beijing, including the Oriental Plaza and the Pacific Department Store, have paid fees to the society for using the songs under their administration, according to sources. Department stores with different size are charged with different standards by the society. The usual fee is 254 fen (31 US cents) per square metre per year for a department store of 10,000-20,000 square metres to use the music, the society said.
The plaintiffs expressed their willingness to accept the conciliation initiated by the court, but Chang'an Department Store refused the settlement on February 4. "The society is only a non-governmental organization, not a governmental authority, so it has no right to collect mandatory fees," said Zhang Guoying, the general manager of the store. He is of the view that the decision to charge the fees should be decided by the State Council. And there is no legal proof now on the issue. "Meanwhile, the broadcasting of background music in our store is aimed at creating a good shopping environment for consumers, but not to make profits," Zhang said. "In fact, the copyright owners of the songs benefit from this as their works were made more widely known through us." The defendant also denied the existence of the plaintiff's letter as it was reported that they have never had any form of communications with the plaintiff before the court session. Further it was reported that most of the stores in Beijing which paid fees for background music are foreign ones, as "State-owned units still need some time to get familiar with this. The defendant said that after ceasing playing of the background music in January, sales have not been influenced at all.
(Source: Business Daily Update)
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The China Intellectual Property Law Newsletter is intended to be used for news purposes only. It should not be taken as comprehensive legal advice, and Lehman, Lee & Xu will not be held responsible for any such reliance on its contents.
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