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Can Van Cleef & Arpels' “Four-Leaf Clover” be Registered as a Three-dimensional Trademark?

ZLWD Commentary:

The focus of the dispute is whether the three-dimensional figure composed of four-leaf clover has distinctiveness and whether it can be registered as a three-dimensional trademark.

Article 9 of the Rules of the Supreme People's Court on Issues Relating to the Hearing of Administrative Cases Involving Granting or Affirming Trademark Rights provided that, “For an application for registering the shape or part of the shape of the commodity itself as a trademark of three-dimensional sign, as it is hard for relevant public to identify the trademark as a sign indicating the source of the designated commodity in general circumstances, such three-dimensional sign is not of distinctiveness as a trademark. The unique creation or earliest use of the shape by the applicant cannot be definitely identified as of distinctiveness as a trademark. If the sign mentioned in the preceding paragraph has been used widely or for a long time and relevant public can identify the source of commodities via the sign, the sign may be determined as of distinctiveness. Where a registered trademark is applied for only a part of the shape of the commodity itself or its own shape as a three-dimensional mark, it is generally difficult for the relevant public to identify it as a sign indicating the origin of the commodity, and the three-dimensional mark does not have a distinctive feature as a trademark. The original or earliest use of the shape by the applicant does not of course lead to its distinctive characteristics as a trademark ." Therefore, according to the current laws and regulations, the registration of three-dimensional trademark is still based on distinctiveness. In this case, the trademark is a three-dimensional figure composed of four-leaf clover. Although it has certain characteristics, it is used in approved class of commodities such as "jewelry". The consumers are prone to recognize it as the shape of commodities, which is lack of distinctiveness.

A lot of three-dimensional trademark disputes have emerged in recent years, such as Dior j'adior perfume , ZIPPO lighter, Nestle square bottle and so on, which have attracted wide attention of the society. At present, the law does not specify the standard of trademark distinctiveness for three-dimensional mark. The court's current attitude towards the three-dimensional mark is tend to tighten the situation. From the point of view of judicial practice, there are three perspectives to be considered; first, the originality of the commodity itself; second, the public's cognitive habit of the shape or packaging of the commodity; and third, whether the relevant public will regard its three-dimensional graphic cognition as the basis of judgment.

Claim for RMB 10 Billion! i Robot Sued Apple

ZLWD Commentary:

A core reason for invalidation of the i Robot patent administrative dispute case is whether the patent document conforms to the provisions of Article 26(3) of the Patent Law, which provided that “the manual shall provide a clear and complete explanation of the invention or utility model to the extent which can be materialised by technical personnel in the relevant technological field; diagrams shall be attached where necessary. The summary shall include a brief explanation of the technical features of the invention or utility model.” 

Unlike the court of second instance, the Supreme Court held that there was no need for the manual to give clear and specific guidance, provided that the technical personnel in the field can be informed of all available technologies and is able to apply conventional experimental means so that the personnel can reach the existing technologies. Meanwhile, features distinguished from existing technologies should be subject to objective criteria rather than self-admission by the patent applicant or patentee.

The case also alarms the patentee that whether the patent can maintain validity, in addition to the technical scheme itself, the quality of patent application documents also plays a crucial role.

The Amendment to the PRC Copyright Law (Draft) was Submitted for Review

ZLWD Commentary:

The Draft amended "film works and works created by similar means of film production" to "film works, TV series works and other audio-visual works", which is of great significance in overcoming the difficulties of judicial practice caused by rigidly using "film and film production methods" to define audio-visual works. At the same time, with the rapid development of the Internet video industry, the works of short video are not limited to individual production, but may be completed by investors, actual producers and other parties. The Draft has certain positive significance for clarifying the copyright ownership of "other audio-visual works" other than movies and TV dramas.

What is the Protection Scale for Well-known Trademarks?

ZLWD Commentary:

The focus of the dispute in this case is whether well-known trademarks can enjoy cross-class protection? What is the scope of cross-class protection? In accordance with Article 13 of the PRC Trademark Law, an application for registration of a trademark which is a replication, imitation or translation of other's well-known trademark not registered in China for use on identical or similar commodities which is easily misleading shall not be registered and the use of such a mark shall be prohibited. Generally, in practice, well-known trademarks are protected to a greater extent than ordinary trademarks, however, the scope of protection is limited to a certain extent, that is, the basis of granting cross-class protection is to obtain a certain degree of protection subject to the PRC Trademark law, and to grant protection in closely-related classes which can be easily misleading to the public and may harm the interests of the obligee. This does not mean that well-known trademarks will obtain full-class protection. For instance, although “六福” trademark is a well-known trademark in this case, there are huge difference regarding the function, purpose and sales places between the classes of disputed trademark and referred trademark. The registration and use of the disputed trademark will not mislead the public, hence the appeal request of Liufu Group was rejected.

The recognition of well-known trademarks is limited to individual cases. Certainly it may not be effective for the cases in the future, nor can it take effect outside the case. Therefore, even if well-known trademarks can obtain greater protection than ordinary trademarks under specific conditions, enterprises shall not overly rely on the passive protection of well-known trademarks, and shall take initiative to register trademarks as early as possible.

Broadcast Chinese Super League without Authorization, Zhejiang Telecom was Found for Infringement

ZLWD Commentary:

Watching sports game has become an favourable entertainment event for the public. Live sports events can only be protected by the Copyright Law if they meet the requirements for the object of rights, meaning the requirements for constitution of work. However, there are different conclusions in practice as to whether sports events constitute works in the sense of copyright law.

According to Article 2 of the PRC Implementation Regulations for the Copyright Law, the term "works" as stated in the Copyright Law shall include original works of literature, arts and sciences with intellectual results which can be reproduced in a tangible form. Whether the live picture of sports events is the qualitative nature of the work is controversial. The focus of the dispute is mainly on the recognition of the original standard and the interpretation of "fixed". However, different trial courts have different judgment criteria on originality. In practice, there are two kinds of standards, “whether there is originality” and “whether the originality is high". The first standard refers to that the sports event fully reflects the creators’ choice, editing and processing of the continuous picture under their will. The second standard holds that the live broadcast of sports events has the constraints and requirements of the production. Staff must follow the guidance of the manual to select the material and play the certain pictures.

Whether live sports can be regarded as a work shall be judged case by case.

Negotiation for License Failed, How Can Xiaomi Breakthrough?

ZLWD Commentary:

In order to preventing holders of standard essential patents from improperly exploiting their advantages, standard-setting organizations generally require that the holders shall permit the use of their standard-necessary patents in accordance with the principles of FRAND (fairness, reasonableness and non-discrimination) in their intellectual property policies. As more and more enterprises go abroad, it is inevitable for domestic enterprises to encounter patent encirclement and suppression in the process of overseas market expansion. Xiaomi is not the only oversea mobile phone manufacturer sued by InterDigital. Samsung, Apple, Huawei and other companies have also been sued by InterDigital.

One of the key points to avoid the patentee obtaining excessively high license rate in the overseas market is that the enterprise should improve its patent quantity and quality, as well as carry out the patent portfolio.

The First Game Monopoly Case in China was Upheld in the Final Instance

ZLWD Commentary:

This case is the first game monopoly dispute case in China. One of the main issues on the case is that whether the game is similar to film works and NetEase enjoys copyright of the game. The Guangdong High People's Court held that although the game can only fully displayed after players’ operations, the composition elements such as pattern colors, character images, effect tools, language music, story scenes, and the entire game process are pre-set by the developer. Therefore, the overall picture of the game involved in the case is in line with the the core feature of film works that “composition of a series of pictures with or without sound". The production process is complicated, and the final audiovisual expression enjoys high creativity. Thus, it is deemed to be a film-like work. NetEase, as the copyright owner, shall be protected by the copyright law.

Game streaming is an new industry emerging from technological advancement. With the internet traffic and fan economic effect, huge market benefits have been generated. The market order of free competition needs to be based on the protection of intellectual property rights. The game streamer shall respect the exclusive right of the game copyright owner to control the dissemination of the copyright work .

This Newsletter is produced by Economic and Legal Development Research Centre for Guangdong-Hong Kong-Macao Greater Bay Area 

For Your Reference Only.

Editorial Board: Wei LIN, 

Simon TANG，Lisi ZHOU,

Yu DENG, Yuming LI, Shell WU, 

Oyagi, Gong CHEN, Ning NING

All Information published in this Newsletter is from open source.

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