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Collection of KWM Intellectual Property Litigation Cases 2013-2020 King and proved that the idea of the Jiang Xiao Bai brand originated from Tao Shiquan, the legal representative of Jiangxiaobai Companys predecessor New Blueprint Company. Characterized by personification of the brand image and combined with innovative marketing methods, the Jiang Xiao Bai trademark derived from the advertising slogan (我是江小白，生活 很简单 , in English I am Jiang Xiao Bai, my life is simple) and pattern and was registered by New Blueprint Company. On the other hand, through solid and meticulous work, the lawyers discovered the contradictions existing among the contracts, purchase orders, delivery records, transportation vouchers, invoices and other evidence submitted by Jiangjin Winery to prove prior use. In particular, the lawyers proved part of the evidence was fabricated through forensic analysis, which led the judge to reject all the evidence of Jiangjin Winery. As a result, the lawyers achieved a difficult reversal and secured the final victory in the Supreme Peoples Court, despite the failed first and second instance trials. The All Quiet in Peking authorship dispute case and many other cases in this Collection, are all good examples reflecting attorneys solid skills in investigation and attack/defense on the evidence. 3. Extreme protection by exhausting legal rights. In the game theory, there is a strategy called extreme pressure, that is, to give the opponent the maximum pressure to test the bottom line of the opponent and maximize our own interests. In IP litigation, attorneys can convert the extreme pressure to extreme protection, that is to exhaust the rights granted by law within the legal framework to achieve sufficient protection of IP within the maximum boundary of each right. For example, each case in the Collection involving the recognition of well-known trademarks reflects the application of this extreme protection strategy. In my opinion, the protection of well-known trademarks is a type of legal technique. Similar to piercing the corporate veil (disregarding corporate personality), it is a special legal technique used in situations where the usual legal means cannot solve certain problems. The problem in relation to well-known trademarks is that the exclusive right of trademark only prohibits the use of identical or similar registered trademarks on identical or similar goods or services, and thus the use of others trademarks beyond such scope even though such use is likely to cause confusion or dilution in the trademarks cannot be promptly and adequately rectified. To solve this problem, the technique of well- known trademarks is legally created to expand the scope of exclusive right protection of trademarks through the recognition of well-known trademarks in cases where necessary. Collection of KWM Intellectual Property Litigation Cases In the Land Rover trademark infringement case of this Collection, the lawyers requested that the well-known trademark be recognized and protected across all categories of goods and services because trademark counterfeiting occurred in different and dissimilar goods or services. In the John Deere trademark infringement case, trademark counterfeiting occurred on similar goods but not through the use of identical or similar trademarks, and thus the exclusive right of trademark could not stop the infringement. The lawyers invoked the provisions of the Trademark Law of the Peoples Republic of China (Trademark Law) prohibiting copying, imitating and translating of well-known trademarks, and requested recognition of well-known trademark to stop the imitation and translation of the trademark on similar goods. In the Alibaba trademark infringement case, since the exclusive right of trademark could not prevent counterfeiting of the trademark in entity names, the lawyers invoked the provisions of the well- known trademark protection which prohibited the counterfeiting of well-known trademarks in entity names, and stopped the counterfeiting of the well-known trademark in entity name registration. All these cases have a common feature, that is, if the alleged actions are not stopped, the interests of the right holders will be damaged, and the exclusive right of trademark cannot protect the right holders. Under the guidance of extreme protection strategy, the lawyers applied the technique of well-known trademark protection to fully protect the rights of the trademark holders. 4. Multi-dimensional combination of protection. One distinctive feature of IP protection is its multi-dimensional nature, which could be reflected in at least three aspects. First, multiple rights may exist on the same object, e.g., trademark rights and copyright may co-exist on one trademark pattern; the appearance of a product may be a combination of design patent, copyright of artistic works, three-dimensional trademark rights, or it may become a certain well-known commodity packaging and decoration protected by the Anti-Unfair Competition Law of the Peoples Republic of China. Therefore, for the same infringement, you can choose to invoke either the protection of a single legal right or the protection provided by a combination of multiple legal rights, including patent, trademark, copyright, and anti-unfair competition law. Second, for patent, trademark, copyright infringement and unfair competition, rights protection can be implemented in two dimensions: administrative law enforcement and civil litigation. For trademark and copyright protection, criminal laws are also available as an alternative. Third, in civil litigations involving patent and trademark infringement, the administrative procedures granting and invalidating patents and trademarks as well as the administrative litigation procedures can be used in combination with civil litigation to achieve the purposes of litigation. 5. Precise attacks focused on the essence of the regulations. Compared with the regulations in other fields, IP regulations are more complicated due to the complexity of the regulated objects. IP attorneys need to grasp the essence of the rules, so as to determine the direction and focus of the case. In most cases involving the recognition of well-known trademarks, lawyers focus on proving that a certain trademark is wellknown. However, as mentioned above, the protection of well-known trademark is only a legal technique used under special circumstances, and the essence of it is proving the necessity of invoking the protection of well- known trademark. It is for this reason that in the Tales of Kongfu Masters game case, with regard to the issue of identifying the adaptation behavior in the adaptation of the novel into a game, the lawyers precisely sorted out the similarities between the original novel and the adapted game in terms of the expression elements, especially the importance of the common expression elements in both the original and the adapted works, therefore fully proved the establishment of the adaptation behavior. Based on this, the court of second instance corrected the judgment of the court of first instance and recognized that the act of adaptation was established. In the patent infringement case Guangdong Golive Glass Machinery Co., Ltd. v. Dongguan Yalong Glass Machinery Co., Ltd et al., the lawyers grasped the essence of publication in return for protection in the Patent Law of the Peoples Republic of China. Based on the fact that utility model patents and design patents do not have the same publication procedures as invention patents, they argued that the temporary protection system from the application date to the announcement date is only applicable to invention patents but not utility model patents and design patents, thus fully demonstrating the legality of the challenged behaviors. PREFACE 6. Contribution to promoting rule innovation. The highest level of litigation is undoubtedly to promote the innovation and construction of the adjudication rules through trials. In the field of IP, new technologies and business models bring about many new problems and situations, and relevant legal rules are also going through rapid development and changes. This has created plenty of room for IP lawyers through legal representation to promote the innovation of adjudication rules by judges. This Collection presents a few such good cases. For instance, in Christian Louboutin v. Trademark Appeal Board of the State Administration for Industry and Commerce or the Red Sole Mark case, appeal of administrative dispute over trademark rejection review, the core issue is that the use of red on the bottom of the shoes as a trademark logo is actually the use of a position mark (position mark is a trademark which obtained distinctiveness through the long-term use of a certain insignificant color or pattern affixed to a specific position of the product). However, for a long period of time, position mark wasnt recognized in the practice of Trademark Law in China. In this case, the lawyers position that the specific way a single color is affixed to a position of a product can also obtain distinctiveness was accepted by the court of second instance, thereby confirming the licensability of position mark in judicial practice. Other examples include the position advocated by the lawyers in the American Esco Corporation v. Ningbo Lukun International Trade Co., Ltd. patent infringement case, that translation errors in patent claims can be corrected under certain circumstances; and the position advocated by the lawyers in the Koninklijke Philips N.V. v. Superman Group Ltd. patent infringement case, that implied limitations not written into patent claims but belong to the technical solutions can be included in the definition of patent claims. Both cases demonstrate the innovative application of patent rules in specific cases and both positions advocated by the lawyers have been recognized by the court and helped promote the innovation and improvement of the adjudication rules in patent cases. This Preface briefly introduces the highlights of some cases in this Collection and invites you to give comments and suggestions. Ding Wenlian (William) June 2020 Collection of KWM Intellectual Property Litigation Cases Pre-litigation injunction under urgent circumstances: the Voice of China trademark infringement and unfair competition dispute in Zhejiang Talent Television (2) The right to the exclusive use of Logo I (composed of the Chinese characters 中国好声音 , the English words the Voice of China and V-shaped hand-held microphone graphic) and Logo II (composed of the Chinese characters 中 国好声音 and the English words the Voice of China), both of which constituted unregistered well-known trademarks under classes 9, 38 and 41; (3) The right to the exclusive use of the names 中国好声音 and the Voice of China in the production and broadcasting of reality talent show featuring singing competition. The above names constituted unique names of well-known services. Talent Company believed that the use of the above-mentioned registered trademarks by CanXing Company and Century Liliang Company in marketing, promoting and producing the Voice of China 2016 without license constituted trademark infringement, and the use of unregistered well-known trademarks and talent show names constituted unfair competition. Due to the urgency of stopping the infringement, the court must issue an injunction to promptly stop the acts of CanXing Company and Century Liliang Company. CanXing Company argued that Zhejiang Satellite TV applied to the State Administration of Radio, Film and Television (SARFT) and got the approval to produce and broadcast the the Voice of China talent show. In addition, Zhejiang Satellite TV also applied to SARFT and got the approval to produce and broadcast the Voice of China 2016 show. Therefore, the name of the show the Voice of China should belong to Zhejiang Satellite TV and the acts of CanXing Company did not infringe upon the intellectual property rights of Talent Company and did not constitute unfair competition. Century Liliang Company echoed CanXing Companys response. Beijing Intellectual Property Court held that in considering whether to order the Respondents to stop the relevant acts it focused on the following factors: whether the Applicant was the right holder or the interested party; whether the Applicant is likely to prevail; whether there was an urgency and whether failure to take immediate measures is likely to cause irreparable damage to the legitimate rights and interests of the Applicant; the balance of the damage, namely, whether the threatened damage to the Application (if the relevant acts are not enjoined) is demonstrated to outweigh the damage the proposed injunction may cause the Respondents; whether the injunction may jeopardize the public interest; and whether the Applicant has provided the relevant security. After examining the six factors, the Beijing Intellectual Property Court held that: first, the Applicant, Talent Company, as the licensee under the exclusive license agreement concerning the intellectual property rights of Talpa Company at issue, was an interested party pursuant to Article 101 Paragraph 1 of the Civil Procedure Law of the Peoples Republic of China (Civil Procedure Law) and had the right to apply for pre-litigation of act preservation (including in the current case); Second, according to a preliminary judgment, the Respondents unauthorized use of the trademarks and constituted infringement of the right to the exclusive use of the registered trademarks G1098388 and G1089326. Meanwhile, because the names of the show 中国好声音 and the Voice of China had become well-known through long-term use, they constituted the unique names of well-known services protected by the Anti- Unfair Competition Law of the Peoples Republic of China (Anti- Unfair Competition Law). The Respondents unauthorized use of the names 中国好声音 and the Voice of China constituted unfair competition. In terms of whether the relevant logos of the show constituted unregistered well-known trademarks as claimed by the Applicant, further determination was required. Third, if the Respondents acts of infringement and unfair competition were not promptly stopped, the impacts of such acts would further expand, the Applicant would be faced with increased difficulties and costs in enjoining the infringement, and the Applicant would also experience problems in subsequent development and production of the show. Therefore, it was time sensitive to stop the Respondents acts of infringement and unfair competition. Fourth, since the damage caused by the injunction to the TRADEMARK 2 Respondents was small and predictable, whereas failure to stop the Respondents acts would cause the Applicant irreparable damage, the latter being greater than the former, it was necessary to stop the Respondents acts of infringement and unfair competition. Fifth, injunction against the Respondents would not jeopa
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