Wanhuida Intellectual Property

Wanhuida Intellectual Property is a leading IP service provider in China. It has two main legal entities, Wanhuida IP Agency and Wanhuida Law Firm, with offices covering all major IP hubs in China. Wanhuida supplies a full range of IP services, from procurement of all forms of IP rights to dispute resolution involving patents, trademarks, unfair competition and other IP-related rights, protecting and defending client’s interests and helping advancing China’s legal fronts.

• Competition/antitrust
• Corporate and M&A
• Dispute resolution
• Regulatory
• Intellectual property

CLIENT: Hermès International
TESTIMONIAL: Congratulations on this positive decision and the recognition of not only the fame and the well-known status of our house mark and its Chinese equivalent but also the recognition on the combined use of our iconic elements including orange color, “H” character, horse device, carriage patterns as well as the display of Hermes’ products constitute unfair competition. The damages obtained is also good news and a very good point. I believe this decision is one of the first concerning our orange color. I can’t wait to see you to celebrate this beautiful decision. Another reason to drink Champagne!

CLIENT: a leading company in life science industry
TESTIMONIAL: Thanks again for the great news on Wednesday! This has been a long project, and a long wait for the court decision, but it is really exciting to see that we have reached our goals to get the desired verification from the court. I would like to thank Wanhuida for the great work and in particularly yourself and your team for guiding us through the process and representing us before the Shanghai court. And I really look forward to keeping working with you on this and other cases.

CLIENT: STAUBLI TECHNOLOGY & SERVICES
TESTIMONIAL: Thank you for this good news. On behalf of myself and my colleagues of Stäubli Sargans, I would like to congratulate you on this success. You did a very good job and very professional preparation. Of course we don't get what we asked for but our rights are recognized and the infringer can no longer reject the accusation of infringement. This result strengthens our will to fight and gives us the energy to continue the fight.

Trademark
Ren Haiyan (Ms)
renhaiyan@wanhuida.com

Recent case highlights:

• 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. The case has been selected by the SPC’s Annual Report on Intellectual Property Cases 2022.
• 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. The case has been selected to be included in the Top 10 Innovative IP Judicial Protection Cases of the Ningbo Courts.
• Obtaining for the client permanent injunction and damages of RMB 30 million for the defendants’ use of the infringing “淮海” mark during the period preceding its invalidation, when the trademark was still valid. The Chongqing Court found that the exception of non-retroactivity provided by Article 47 of the Trademark Law did not apply since the owner of the invalidated trademark was the infringer itself. The court thus concluded that the business activity which retroactively has become infringing, could be sanctioned by an award of damages in favor of the plaintiff.
• 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. This case has been selected by the SPC for its Annual 50 Exemplary IP Cases of 2021.
• 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. The case has been selected as SPC’s Top 10 IP Cases in 2021.
• 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. The case has been selected to be included in the Top 10 IP Cases of Shanghai Courts in 2021.
• 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. The case is selected as one of the SPC’s 50 exemplary IP cases of 2020.
• 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. The case is selected as one of the SPC’s 50 exemplary IP cases of 2020.
• 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.
• 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. The case is selected as one of the Exemplary Cases in Intellectual Property Protection of Zhejiang Provincial People’s Procuratorate.
• 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. The judgment of 1st instance was selected as one of the 10 Exemplary IPR Cases in 2020 by Xi’an Intermediate Court.

Patent
Dr. S. Sam Li
samli@wanhuida.com

• 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. The case has been selected as SPC’s 50 Exemplary IP Cases of 2022.
• 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. The case has been selected as SPC’s 50 Exemplary IP Cases of 2022.
• 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. The case has been listed by Zhejiang High Court as one of the “Top Ten Intellectual Property Cases of Zhejiang Courts in 2021”.
• 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. The case has been selected as one of the Hangzhou Procuratorate Exemplary Cases in 2021.
• 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.
• 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. The case was selected as one of CNIPA’s Top Ten Patent Reexamination and Invalidation Cases in 2020.
• 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.
• 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.

• Consumer goods and services
• Energy
• Industrials and manufacturing
• Insurance
• Materials
• Media and entertainment
• Pharmaceuticals and life sciences
• Technology and telecommunications

Chongqing, Guangzhou, Hangzhou, Ningbo, Shanghai, Shenzhen, Suzhou, Tianjin