Guangdong-Hong Kong-Macao Greater Bay Area Intellectual Property Creation and Application Conference - Classic Cases of Intellectual Property Protection

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"The Guangdong-Hong Kong-Macao Greater Bay Area Intellectual Property Creation and Application Conference has set up a special area for sharing and promoting classic intellectual property cases and experiences, and this article will showcase the classic cases of intellectual property protection shared in the event. ”

From March 26th to 27th, the Guangdong-Hong Kong-Macao Greater Bay Area Intellectual Property Creation and Application Conference and a series of activities were held in Guangzhou, in order to help innovative subjects enhance their awareness and ability of intellectual property rights, the conference specially set up a special area for intellectual property classic cases and experience sharing and publicity, and divided into two sections: classic cases of intellectual property protection and classic cases of intellectual property creation and application, and invited a number of experts and scholars to share and comment on a series of cases. This article will showcase the classic cases of intellectual property protection shared at the event.

The Guangdong Higher People's Court and the WIPO Arbitration and Mediation Center have established a cooperative relationship

On December 9, 2023, the Guangdong Higher People's Court and the WIPO Arbitration and Mediation Center signed the Agreement on Strengthening Exchange and Cooperation on Alternative Dispute Resolution in the Field of Intellectual Property to further strengthen exchanges and cooperation between the two parties in the settlement of intellectual property disputes, and establish a working mechanism for docking litigation and mediation. According to the agreement, the Guangdong High Court and seven courts in the Guangdong-Hong Kong-Macao Greater Bay Area may entrust or appoint the WIPO Shanghai Center for Arbitration and Mediation to mediate certain foreign-related, Hong Kong-Macao and Macao intellectual property cases. The Guangdong High People's Court has transferred six mediation cases to the WIPO Arbitration and Mediation Center in the first batch, and one case has been successfully mediated so far.

The Guangdong Higher People's Court, in conjunction with multiple departments, has established the country's first joint credit supervision mechanism for serious untrustworthy conduct in all fields of intellectual property rights

On December 8, 2023, led by the Guangdong Higher People's Court, and jointly signed the "Memorandum of Cooperation on Strengthening Credit Supervision of Seriously Untrustworthy Acts of Infringement of Intellectual Property Rights" with 14 units, including the Provincial Development and Reform Commission, the Department of Science and Technology, the Department of Industry and Information Technology, the Municipal Supervision Bureau, and the Intellectual Property Protection Center, taking the lead in establishing a joint judicial and administrative credit supervision mechanism for seriously untrustworthy acts of intellectual property rights in the country, and strengthening credit supervision of seriously untrustworthy acts of infringement of intellectual property rights.

"Seriously untrustworthy conduct for infringement of intellectual property rights" included in joint supervision includes: individuals sentenced to 3 years or more imprisonment for crimes of infringement of intellectual property rights, units sentenced to a fine of 150,000 yuan or more for crimes of intellectual property rights violations, and managers or other directly responsible personnel in charge of unit crimes sentenced to 3 years or more imprisonment.

Credit regulation measures include: must not participate in all types of commendations and awards, and must not apply for all levels of government financial funding projects. The implementation period of the regulatory measures is 3 years, and the regulatory measures will be automatically lifted upon the expiration of the period.

The units participating in the joint supervision also include: the Provincial Procuratorate, the Public Security Department, the Department of Finance, the Department of Human Resources and Social Security, the Department of Agriculture and Rural Affairs, the Department of Commerce, the Department of Guangzhou and Tourism, the Copyright Bureau, and the Guangdong Branch of the General Administration of Customs.

The Guangzhou Intellectual Property Court has created a new model of "law popularization + mediation" for intellectual property rights

Guangzhou Intellectual Property Court "creates a new model of intellectual property 'law popularization + mediation'", adheres to the concept of "popularization of law in mediation and mediation in popularization of law", takes Guangdong Intellectual Property Dispute Mediation Center and excellent judges' studio as the starting point, provides one-stop service of "law popularization + mediation" of intellectual property, innovates the work measures of diversified and substantive resolution of intellectual property rights, and continuously creates a cultural atmosphere of intellectual property rule of law of "respecting knowledge, advocating innovation, integrity and law-abiding, and fair competition". In the past two years, 6,788 pre-litigation cases have been successfully mediated, more than 60 legal popularization lectures have been carried out, more than 100 circuit trials have been conducted, more than 4,000 consulting services have been provided, and more than 200 typical articles have been reported by Nanfang Daily, People's Court Daily and other media.

The Shenzhen Municipal Administration for Market Regulation investigated and dealt with the case of infringement of the exclusive right to use the registered trademark "Xiaomi".

On August 4, 2021, the Shenzhen Municipal Market Supervision Bureau received a complaint from the right holder, Xiaomi Technology Co., Ltd., alleging that Shenzhen Hengzheng E-commerce Co., Ltd., Shenzhen Lefuer Trading Co., Ltd., and Shenzhen Yufeng Trading Co., Ltd. infringed its exclusive right to use the trademark. The case was filed on August 10, 2021, and after investigation, it was found that the three parties contained the word "Xiaomi pie" in the titles of the tablet products sold in the Tmall store they operated, which was an act of using a trademark similar to its registered trademark on similar goods, in violation of Article 57 (2) of the Trademark Law of the People's Republic of China.

On October 8, 2022, the State Intellectual Property Office issued a reply, determining that the act was a trademark infringement under Article 57(2) of the Trademark Law, and the illegal business revenue was equal to the sales revenue.

On May 16, 2023, the Shenzhen Municipal Market Supervision Bureau imposed administrative penalties on the three parties, imposing a total fine of 30 million yuan and revoking their business licenses.

The Jiangmen Municipal Administration for Market Regulation investigated and dealt with the administrative punishment case of unauthorized use of the special sign of "Xinhui Chenpi" geographical indication

In 2023, the Jiangmen Municipal Administration for Market Regulation investigated and dealt with the case of a Jiangmen tangerine peel Co., Ltd. using the special sign of "Xinhui Chenpi" geographical indication without authorization in accordance with the law, and directly applied the first local regulation on the protection of geographical indications in the country, the "Regulations of Guangdong Province on Geographical Indications", to impose administrative penalties on the parties, achieving a breakthrough in the previous lack of direct legal basis for the punishment of illegal acts of geographical indication products. The investigation and handling of this case is the result of the joint efforts of the market supervision departments of Guangzhou, Beijing and Jiangmen on the basis of the establishment of protection cooperation mechanisms in relevant provinces and cities, which reflects the further improvement of the efficiency of cross-regional cooperation in the administrative protection of intellectual property rights, and also meets the requirements of integrated online and offline protection of intellectual property rights and the protection of the whole chain.

The experience of vehicle lidar chip companies in responding to the US 337 investigation

Shenzhen Suteng Juchuang Technology Co., Ltd., as a leading company in lidar and perception solutions, was subject to a Section 337 investigation filed by Bell Semiconductor in the United States ITC in April 2022 and October 2022, facing patent infringement charges. Bell Semiconductor alleges that Suteng Juchuang sold M1 lidar products to the United States using chips produced with the patented technology in question. In the face of challenges, Suteng Juchuang sought guidance from the Shenzhen Protection Center on dealing with overseas intellectual property disputes.

The Shenzhen Protection Center responded quickly and cooperated with relevant departments to jointly guide Suteng Juchuang to respond to the investigation. The experts gave detailed guidance on the basic situation of the 337 investigation, the plaintiff's background, the comparison of the patents involved in the case, and the strategic analysis, and discussed the protection of the privilege of lawyers and clients. The ITC finally terminated the investigation of Suteng Juchuang based on the applicant's motion to withdraw the lawsuit. The company avoided huge losses and provided an example for similar enterprises to handle overseas IP disputes.

Formed a response alliance to efficiently resolve NPE lawsuits in the United States

In December 2022, Longhorn HD LLC, an active U.S.-based NPE company, filed a patent infringement lawsuit against three technology companies in Shenzhen, China, involving basic patents in the field of computer storage device technology, demanding that the Chinese companies stop selling the products involved in the case, compensate for losses, and pay the plaintiff's rights protection costs and attorney's fees. According to previous cases, the amount of compensation for each company is at least $50,000.

After the Shenzhen Protection Center monitored the case, it immediately activated the early warning mechanism, cooperated with the Shenzhen Association for the Promotion of Small and Medium-sized Enterprises to provide risk analysis and recommend relevant experts for the three enterprises, and set up a rights protection assistance service team with the participation of Shenzhen overseas intellectual property dispute response experts to conduct in-depth analysis and judgment of the case, formulate response strategies, guide the rights holder to actively respond, and hold multiple rounds of negotiations with the US side, and finally reached a settlement and withdrew the lawsuit. The settlement + license fee of the three companies involved in the lawsuit has been reduced from the initial $150,000 to $25,000, a decrease of 83.4%, and the company has obtained full global licensing, and the related products of the subsequent companies involved in the lawsuit can still continue to be produced and sold worldwide, which has been highly praised by the company.

Guangdong Province Automobile Emergency Starting Power Supply Enterprise Successfully Responded to the US 337 Investigation

In January 2021, Company N filed a Section 337 investigation application with the U.S. International Trade Commission (ITC) for its automotive emergency starter power supply products, requesting priority to issue a general exclusion order, and the defendants involved a number of Guangdong enterprises, one of which was Shenzhen Huasixu Technology Co., Ltd. The Guangdong Provincial Intellectual Property Protection Center and the Guangdong Overseas Intellectual Property Protection Promotion Association responded quickly, set up a special working group, promoted the establishment of a response alliance between the enterprises involved in the case, and guided Huasixu to carry out the invalidation of the patent involved in the case and defend it against non-infringement and non-meeting the requirements of the domestic industry in the United States. On August 29, 2022, the ITC of the United States issued a final judgment, and Hua Sixu won the 337 investigation, recovering economic losses of 300 million yuan.

A drone company in Guangdong Province successfully responded to an NPE patent infringement lawsuit

In March 2022, Company S sued EHang's U.S. branch in court on the grounds that Guangzhou EHang's drone products infringed its U.S. invention patent. The Guangdong Provincial Intellectual Property Protection Center and the Guangdong Overseas Intellectual Property Protection Promotion Association dug deep into the relevant information of the case, assisted EHang in conducting technical comparisons, and guided it to adopt the strategy of exempting the plaintiff from the obligation to serve in exchange for a longer response period to extend the negotiation time. During the negotiation stage, EHang adhered to the non-infringement defense position and demanded unconditional withdrawal of the lawsuit. The plaintiff unconditionally withdrew the lawsuit in September 2022 due to EHang's sufficient defense, and EHang successfully solved the dilemma of NPE's unreasonable claim with "0 settlement".

Guangzhou cross-border e-commerce company successfully responded to a design patent lawsuit in the United States

Relying on the "1+2+N" service structure (1 national protection center; 2 sub-centers in Nansha and Knowledge City; intellectual property service workstations in N industrial clusters in the fields of new materials, exhibitions, furniture, cosmetics, and e-commerce), the Guangzhou Intellectual Property Protection Center quickly responds to the needs of cross-border e-commerce enterprises, and plays a five-step combination of "retrieving litigation cases, analyzing patent stability, comparing patented technologies, researching and analyzing U.S. litigation response strategies, responding to litigation and settlement negotiations", and helps enterprises manage litigation cases. The patent involved in the case, grasped the bargaining chips in response to the lawsuit, strategically and actively defended, and finally led to the settlement between Guangzhou Wanwei Technology Co., Ltd. and the plaintiff, the cross-border e-commerce store was unfrozen, and the sales of the accused products were resumed, helping the enterprise save 40,000 yuan in litigation costs, recover 500,000 yuan in economic losses, and successfully resolve the U.S. patent litigation dispute.

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