Wanhuida Intellectual Property

A selected list of the firm’s recent notable cases includes:

• SPC Top 10 Cases: Representing Xiaomi in winning the unfair competition suit against the infringers that pre-emptively registered its voice activation command prompt, brazenly sent cease and desist letter to Xiaomi and sold infringing products. The court found unfair competition, ordered cessation and awarded Xiaomi damages of RMB 1.2 million.
• SPC Top 50 Cases: Representing Michelin in winning the civil suit against Shanghai Mi Zhi Lian Catering Management Ltd. et al., which used the Chinese transliteration of the Cantonese pronunciation of Michelin in business operation and as registered trade name. The Wuhan Intermediate court and the Hubei High Court affirmed trademark infringement and unfair competition, ordered cessation and awarded damages of RMB 10 million.
• Abbreviature of Adjudication of the SPC Intellectual Property Court in 2023: Representing Carlsberg in successfully invalidating the design patent, which infringes on its V8 registered trademark filed in prior to the design at issue. The case went through invalidation action at the CNIPA and two instances of court proceedings. The Supreme People’s Court, which serves as the court of appeal in the administrative proceeding, ruled in favor of Carlsberg.
• QBPC Top 10 Cases: Representing New Balance in obtaining a permanent court injunction and landmark damages of RMB 30.04 million (inclusive of reasonable costs) in the second instance of a trademark infringement and unfair competition suit against the infringers using a slavish copycat of the client’s iconic slanting “N” logo and its Chinese trade name, which has acquired certain influence.
• QBPC Top 10 Cases: Representing Lacoste in obtaining favorable court decision in a trademark infringement lawsuit against Nanji E-Commerce, owner of Cartelo brand. The Beijing IP Court affirmed trademark infringement, ordered cessation and awarded damages of RMB 15 million. The infringers appealed before Beijing High Court, which upheld the first instance decision on December 29, 2023.
• SPC IP Report Cases: Representing Mr. Manolo Blahnik in successfully invalidating through retrial proceeding the registration of trademark “MANOLO&BLAHNIK马诺罗贝丽嘉” filed by a Chinese squatter in class 25 in 1999, based on the designer’s name right and bad faith of the registrant. The client went through opposition, review of opposition, invalidation and the ensuing administrative suits, but to no avail. The retrial decision turned the table for the client in a decades-long battle against the copycat mark.
• Ningbo Courts Top 10 Cases: Representing Ningbo Dechang in successfully fending off the unfair competition suit brought by JOHNSON ELECTRIC INDUSTRIAL MANUFACTORY, LIMITED. The Ningbo Intermediate Court dismissed all the requests of the plaintiff including immediate cessation of using the litigious trade name “德昌” (Dechang in Chinese) and jointly and severally indemnify damages and reasonable expenses of RMB 100 million. The plaintiff appealed before the Zhejiang High Court and lowered the claim of damages to RMB 30 million. The Court of Appeal upheld the decision of the trial court and ruled in favor of the client.
• SPC Top 50 Cases: Representing a major player in wedding photograph shooting business in reversing unfavourable CNIPA and court decision invalidating its registered trademark “米兰” (Chinese transliteration of “Milan”) in class 41. The court of appeal found that the trademark had acquired secondary meaning through extensive use and is unlikely to cause confusion, thus ruled to maintain the registration.
• SPC Top 10 Cases: Representing Wyeth in securing a favorable decision in a civil appeal proceeding against a long-term infringer Guangzhou Wyeth Baby Products Ltd. et al. The Zhejiang High Court upheld the decision rendered by the Hangzhou Intermediate Court, which found trademark infringement and unfair competition, ordered cessation and granted punitive damages of RMB 30 million and reasonable legal expenditure of RMB 550,000.
• Shanghai Courts Top 10 Cases: Representing Fendi in prevailing in the appeal and re-adjudication of a trademark infringement and unfair competition proceeding against an unaffiliated retailer selling grey market Fendi goods and using Fendi trademarks in business operation and on the signage. The re-adjudication decision rejecting the fair use defence is expected to help set a precedent as to how business should be promoted in the context of parallel imports.
• SPC Top 50 Cases: Advising MICHELIN in a trademark infringement suit against a Chinese infringer exhibiting and promoting toys using the "Tire man device", obtained favourable retrial decision, cessation and damages. The retrial court ascertains that using a figurative trademark as a 3D object constitutes trademark infringement.
• SPC Top 50 Cases: Advising ABB in a private criminal prosecution against a fake seller before the trial court and court of appeal, which found exporter Teaton and its owner Zhang guilty of selling counterfeits, sentencing Zhang to 3.5-year imprisonment and imposing fines RMB 800,000 to Zhang and RMB 850,000 to Teaton.
• High Damages: Representing New Balance in prevailing in the first and second instance of a trademark civil infringement lawsuit against the manufacturer, distributor and a local dealer of infringing New Bairin sneakers, which is a slavish copycat of New Balance’s iconic slanting “N” logo and peculiar trade dress. The Court of Appeal, Jiangsu High Court upheld the decision rendered by the Suzhou Intermediate Court, which granted permanent injunction, damages of RMB 18.2 million and elimination of adverse effects.
• Zhejiang Procuratorate Exemplary Cases: Representing Stihl in bringing an incidental civil action during criminal proceedings against the counterfeiter before the Court of Yuyao in Zhejiang Province, which adopted all the recommendations made by the Public Prosecutor and pronounced sentences of prison from two to three years, accompanied by probation periods to take account of the attitude of the defendants. Stihl obtained an amount of RMB 500,000 as damages.
• Xi’an Court Top 10 Cases: Representing CHANEL in prevailing in the unfair competition suit against a copycat fragrance imitating the iconic trade dress of its most recognized CHANEL N°5 perfume. The Trial Court and the Court of Appeal granted protection over the unique trade dress of CHANEL N°5 perfume, ordered cessation and damages. The infringer adduced during the appeal an administrative judgment rendered by the Beijing High Court, rejecting CHANEL’s application of a 3D trademark based on the bottle of N°5 perfume to challenge the distinctiveness of the trade dress, which was dismissed by the Court of Appeal.
• SPC Exemplary Anti-monopoly and Unfair Competition Cases: Successfully defending the legitimacy pertaining to the patentee’s implementation of a valid chemical compound invention in a high-stake anti-monopoly appeal proceeding. The China Supreme People’s Court overturned the unfavourable first instance court decision, which ordered the client to pay hefty damages of RMB 90 million.
• SPC Top 50 Cases: Representing the patentee in successfully defending the validity of the client's medical use patents and obtaining favorable court decisions, cessation and damages of RMB 800,000 in the patent civil suits. This is the first parallel administrative and civil proceedings involving chiral drug medical use patents before the SPC.
• SPC Top 50 Cases: Representing Bayer in a patent administrative enforcement action against two Chinese infringers offering for sale the client’s patented drug rivaroxaban, obtaining favorable decisions from the Nanjing IP Office. The infringers appealed all the way to the SPC but to no avail. The SPC used this case to clarify several key issues, including whether offering for sale hinges on the availability of the patented drug, whether a disclaimer from the accused infringer creates exemption from infringement liability, and whether the Bolar exemption applies to the act of offering for sale.
• Zhejiang Courts Top 10 Cases: Representing the patentee of an invention patent relating to a hemostatic clamp in winning a patent infringement suit against an infringer manufactured and sold infringing disposable hemostatic clamps, obtained cessation and damages.
• Hangzhou Procuratorate Exemplary Cases: Representing a trade secret owner in the criminal prosecution proceeding against an employee seeking to misappropriate and patent the said trade secret. The defendant was sentenced to 4-year imprisonment and fined RMB 800,000. The courts affirmed that even if each constituent technique of the trade secret has been disclosed, the said trade secret shall be deemed as unknown to the public in its entirety, provided that the combination of the technique has yet been made public.
• Representing trade secret owner Soundking in securing injunction, damages of RMB 3.6572 million and reasonable expenses of RMB 220,000 from four former employees and their associated company, which were engaged in misappropriation of Soundking's trade secrets.
• CNIPA Top 10 Cases: Helping defend the validity of Bayer’s compound patent of blockbuster anticoagulant drug rivaroxaban in an invalidity proceeding. The CNIPA affirmed that the teaching of specific drug structure-activity relationship is pivotal in ascertaining technical motivation for structural modification in the prior art.
• Fending off Unreasonable Patent Assertion: Advising P&G in fending off unreasonable patent infringement suit initiated by a Chinese patentee claiming whopping damages RMB 100 million before the Shanghai IP Court by having the invention invalidated.
• First Impression Cases: Representing the client in successfully revoking an unfavourable administrative decision made by a local AMR authority by leveraging the findings of the distinguishing design features in the CNIPA decision to contradict the Patentee’s arguments in the infringement proceeding as it breaches the estoppel principle. The approach finally led to the non-infringement finding of the court of appeal. This is probably the SPC’s first administrative decision concerning infringement assessment of GUI design patent.
• Representing IP Bridge, an NPE from Japan, in launching patent infringement lawsuit against an unwilling licensee before the Chinese court and successfully defending the validity of the client’s patent in the invalidity action initiated by one of the accused infringers. The case was closed after the parties reached settlement globally.