Wanhuida Intellectual Property

Wanhuida Intellectual Property is a leading IP service provider in China. It integrates resources for serving client needs in China’s vibrant market. The firm is known for its mix of legal expertise and result-oriented approach, cumulative experiences in ground-breaking cases and multilingual and interdisciplinary skills. Its active involvement in policy and law developments gives it good sense on the direction of laws and equips its professionals with insights that is critical for protecting clients’ interests.

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

Trademark
Ren Haiyan (Ms)
renhaiyan@wanhuida.com

Recent case highlights:

• Advising a leading Chinese pharmaceutical company in prevailing in both instances of court proceeding, where the Suzhou Intermediate Court and the Jiangsu High Court unanimously ruled against a rival Chinese insulin maker and an ex- shareholder of the client that preemptively registered and used similar trademarks, adopting similar trade names and trade dress. The court found trademark infringement and unfair competition could be established, recognized the well-known trademark status of the client’s prior marks, ordered cessation, and awarded damages of RMB 60.8162388 million (inclusive of reasonable costs). The case was included in the SPC’s 2024 Annual Report on the Application of Law in IP Cases by Courts Nationwide.

   

• Representing Huya, a leading Chinese game livestreaming platform in reversing the unfavorable non-use cancellation decision against its iconic device mark on service of “sales promotion for others” in class 35 through administrative suit. The court of appeal affirmed that by leveraging its traffic and user base, Huya promoted in live commerce the sale of various products in exchange for promotional fees and received a proportionate share of revenue from the third-party game developer and provider for promoting their games through livestreaming, offering downloading and organizing promotional events to increase game downloading and top-ups. Such act constitutes offering planning and promotion to facilitate the sale of other’s goods or services, thus falls under the “sales promotion for others” service in class 35. The case was included in the SPC’s 2024 Annual Report on the Application of Law in IP Cases by Courts Nationwide.

   

• 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. The case has been selected as SPC’s Top 10 IP Cases in 2023.

   

• 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. This case has been selected by the SPC for its Annual 50 Exemplary IP Cases of 2023.

   

• 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. The case has been selected as one of the Top 10 QBPC IP Protection Cases of 2023 – 2024.

   

• 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. The case has been selected as one of the Top 10 QBPC IP Protection Cases of 2023 – 2024.

   

• 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.

   

• 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 client in fending off the patent linkage litigation initiated by the innovative drug maker in the first and second instance, with the SPC rejecting the adverse party’s appeal. The SPC held that where a drug marketing authorization holder (“MAH”) properly registers patent information within the statutory timeframe, but a generic drug applicant has submitted a Type I declaration (certifying no relevant patents are listed) prior to the patent information registration, the MAH should be allowed to request the generic drug applicant to promptly apply for an amendment to its declaration type within a reasonable period of time. In case the generic drug applicant applies to change its Type I declaration to a Type IV declaration (certifying invalidity or non-infringement of listed patents) or refuses to apply for such a change within the aforesaid reasonable period of time or seeks to amend its declaration to another erroneous type, the court shall accept the patent linkage litigation initiated by the patentee and adjudicate the substantial matters. The case has been selected to be included in the Abbreviature of Adjudication of the Intellectual Property Court of the Supreme People's Court in 2024.
  
  
• 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. The case has been selected as SPC’s 10 Exemplary Anti-monopoly and Unfair Competition Cases of 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. The case has been selected to be included in the Abbreviature of Adjudication of the Intellectual Property Court of the Supreme People's Court in 2023.
  
  
• 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, Shanghai, Shenzhen, Suzhou, Tianjin