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No.205 August 28, 2023
In this issue
Trademark Office of CNIPA Releases the Correspondence Table of Codes for China-Japan-South Korea Similar Groups of Goods and Services in the Nice Classification NCL12-2025
CNIPA and HIPO Launch Focal Point Mechanism Pilot Project
WIPO: China Ranked First in the World in the Total Volume of PCT Patent Applications in 2024
Cases in Spotlight
Unitalen Representing SRAM Prevailed in the First-instance Trial of the Position Mark Case of "Bicycle Freewheel", Reinforcing the Registrability of "A Single-color Trademark Applied to a Specific Position"
The Supreme People's Court Places Special Oversight over a Cross-Enforcement Case Involving the Infringement of Know-how
Unitalen News
Empowering Enterprises' Global Strategic Upgrades: A Special Salon on European Intellectual Property Layout and Dispute Countermeasure Was Successfully Held
Attorney LI Bing, A Partner of Unitalen, Was Invited to Attend the "Seminar on Trademark & Copyright Protection Practices in 2025" Hosted by the Korean Intellectual Property Protection Association (KOIPA) and the Korean Copyright Commission (KCC)
In this issue
Trademark Office of CNIPA Releases the Correspondence Table of Codes for China-Japan-South Korea Similar Groups of Goods and Services in the Nice Classification NCL12-2025

According to the cooperation arrangement in the field of trademarks among China, Japan, and South Korea, in order to further streamline procedures for applicants, a correspondence table of codes for China-Japan-South Korea similar groups of goods and services in the Nice Classification NCL12-2025 has now been released.

Attachment: Correspondence Table of Codes for China-Japan-South Korea Similar Groups of Goods and Services in the Nice Classification NCL12-2025

(Source: Trademark Office of CNIPA)

CNIPA and HIPO Launch Focal Point Mechanism Pilot Project

CNIPA and the Hungarian Intellectual Property Office (HIPO) have, after consultations, decided to jointly launch the HIPO-CNIPA Focal Point Mechanism pilot project. The pilot project will last for one year, from April 1, 2025 to March 31, 2026.

During the project period, Chinese enterprises may consult the CNIPA intellectual property liaison officer about issues related to intellectual property, with the contact information described as follows:

Liaison Officer: ZHAO Qing

Email: ip_support@cnipa.gov.cn

Hungarian enterprises may consult the HIPO intellectual property liaison officer about issues related to intellectual property, with the contact information described as follows:

Liaison Officer: Ms. Zsuzsanna Várfalviné Tari

Email: zsuzsanna.tari@hipo.gov.hu

(Source: website of CNIPA)

WIPO: China Ranked First in the World in the Total Volume of PCT Patent Applications in 2024

Recently, the World Intellectual Property Organization (WIPO) released the data on volume of PCT patent applications in December 2024 and throughout the same year.

According to statistics, in 2024, the total volume of PCT applications reached 273,900, increasing by 0.5% compared to 2023. China remained the largest source country, submitting 70,160 applications.

Huawei Technologies Co., Ltd. was the top PCT applicant in 2024, with 6,600 published applications, followed by Samsung Electronics (Republic of Korea, 4,640 applications), Qualcomm (United States, 3,848 applications), LG Electronics (Republic of Korea, 2,083 applications), and Contemporary Amperex Technology Co., Limited (China, 1,993 applications). Japan, China, and the United States had the highest number of applicants among the top 100 application entities, with 35, 21, and 19 applicants, respectively.

In the education field, the University of California (United States) continued to top the list in 2024 with 519 PCT applications. The University of Texas System (United States) ranked second with 216 applications, followed by Tsinghua University (China, 188 applications), Zhejiang University (China, 175 applications), and Seoul National University (Republic of Korea, 170 applications).

In 2024, digital communication became the most significant field for published PCT applications, accounting for 10.5% of the total, surpassing computer technology, which had held the top position since 2019. Other major fields included computer technology (9.7%), electrical machinery (8.6%), medical technology (6.5%), and measurement (4.4%). These five fields together accounted for approximately 40% of the total published PCT applications, an increase of 5 percentage points compared to 2019. Among the top ten technology fields, digital communication (+9.9%) and electrical machinery (+7.9%) exhibited the fastest growth rates in 2024.

(Source: WIPO China)

Cases in Spotlight
Unitalen Representing SRAM Prevailed in the First-instance Trial of the Position Mark Case of "Bicycle Freewheel", Reinforcing the Registrability of "A Single-color Trademark Applied to a Specific Position"

Recently, Unitalen, representing SRAM, LLC, a world-famous manufacturer of bicycle drivetrain systems and components, prevailed in the case of an administrative dispute against the CNIPA over the review of the refused No. G1729330 "Position Mark of Bicycle Freewheel". The Beijing Intellectual Property Court made a first instance judgment, revoking the decision of review on refusal and ordering the CNIPA to make a new decision. After the well-known "Red Sole" case, the judicial authorities reinforced in this case the registrability rules of the non-traditional "single-color trademark applied to a specific position".

Case Brief

SRAM, LLC was founded in the United States in 1987, specializing in producing bicycle components and developing mountain and road drivetrain systems. It has become one of the world's largest premium bicycle component brands. SRAM, LLC has pioneered the use of a distinctive color with an annular red element and continues to use it as a brand trademark embedded between the sixth and seventh sprockets. The company has also applied to register the "annular red element (Pantone 186) positioned between the sixth and seventh sprockets (gears)" as a trademark in multiple countries and regions worldwide to protect its brand identity.

                            

The design of the disputed trademark                 The photo of the product

[Note] Description of the disputed trademark: "The trademark claims protection for an annular red element positioned between the sixth and seventh sprockets (gears). The figure shows the position of the red element from different perspectives. Please note that the dotted line in the figure is only used to indicate the position of the element and does not constitute a part of the claimed position mark."

On October 19, 2022, SRAM, LLC applied to the German Patent and Trade Mark Office for Trademark No. 302022116933 ("annular red element positioned between the sixth and seventh sprockets (gears)"), and the trademark was approved for registration in Germany on February 22, 2023. On May 11, 2023, SRAM, LLC, using this trademark as the base trademark, applied to the WIPO for territorial extension to countries and regions such as the European Union and China. On June 19, 2024, the trademark was approved for registration in the European Union. The application and registration processes for the trademark in Germany and the European Union were represented by the well-known German law firm Weickmann & Weickmann Patent und Rechtsanw?lte PartmbB, which also provided legal support, such as evidence collection in the case.

On March 26, 2024, the CNIPA determined that the trademark was "a sprocket pattern displayed in three directions, with a red circle positioned between the sixth and seventh sprockets” and rejected the application for territorial extension protection of SRAM, LLC on the grounds of the lack of distinctiveness of the trademark. Dissatisfied with the decision, SRAM, LLC filed an administrative lawsuit with the Beijing Intellectual Property Court.

Court Judgment

The Beijing Intellectual Property Court determined through trial that the examination of an international trademark registration application for territorial extension protection in China should be determined based on the announcement on the trademark by the WIPO. Therefore, the disputed trademark pertained to "a single-color trademark applied to a specific position" and the sprocket pattern represented by the dotted line should not be included in the scope of examination as a constituent element of the disputed trademark. The CNIPA determined that the disputed trademark was "a sprocket pattern displayed in three directions, with a red circle positioned between the sixth and seventh sprockets", which was an incorrect determination of the sign and constituent elements of the disputed trademark. The decision made on this basis lacked an appropriate factual basis and should be revoked in accordance with the law. The CNIPA should make a new determination of whether the disputed trademark has distinctive features based on a correct determination of the sign and constituent elements of the disputed trademark.

Typical Significance

After the "Red Sole" case, the Chinese courts have explicitly reinforced in this case the registrability of "a single-color trademark applied to a specific position" which can be protected as a registered trademark in China. The present case is a new judicial example of the protection of position marks in China. Additionally, through this case, the court has further clarified that, the CNIPA should first accurately determine the sign and constituent elements of the trademark under application and base its determination on whether it has distinctive features on that accurate determination.

The Supreme People's Court Places Special Oversight over a Cross-Enforcement Case Involving the Infringement of Know-how

——selected as one of the "2024 Top Ten Cases Advancing the Rule of Law in the New Era"

Case Brief

The case involved the enforcement of a dispute over the infringement of know-how between the enforcement applicant, Sichuan X Rui Chemical Industry Co., Ltd. (hereinafter referred to as X Rui Company) and the enforcement respondent, Shandong X Sheng Chemical Industry Co., Ltd. (hereinafter referred to as X Sheng Company). On December 26, 2022, the Supreme People's Court issued a legally effective judgment, ordering X Sheng Company to immediately cease the sales of melamine products produced using the know-how involved of X Rui Company, destroy the equipment related to the know-how involved in its Melamine Project with Annual Production Capacity of 100k Tons (Phase I), and pay the damages of RMB 98 million.

On February 6, 2023, the People's Court of Tianfu New Area, Chengdu City, Sichuan Province initiated enforcement proceedings for the case and oversaw the enforcement of the monetary payment obligation by X Sheng Company. However, X Sheng Company had not voluntarily fulfilled its obligations of conduct, including the destruction of equipment as determined in the legally effective judgment. With the need for high specialization means and the potential risks, the dismantlement and destruction of the equipment involved in the case would render enormous costs and cast significant impacts on staff employment, business operations, financial stability, and economic development. The execution process might be entangled in a deadlock.

The Supreme People's Court thus placed special oversight over the case under supervision, making coordinated efforts to develop synergy among the nine courts involved in the case across the three provinces of Sichuan, Guangdong, and Shandong to advance progress in the case. Later, the Chengdu Intermediate People's Court of Sichuan Province escalated the enforcement of the case, with the president of the court serving as the chief judge. The court intensified enforcement efforts by various means, including providing judicial recommendations, legally summoning the legal representative of the enforcement respondent, and publicly issuing an invitation to bid for dismantlement. Meanwhile, higher courts and relevant government departments strengthened communication and collaboration to facilitate the parties in reaching an enforcement settlement. On January 28, 2024, after multiple rounds of negotiations organized by courts at three levels, both parties reached an enforcement settlement and signed an agreement, establishing a full range of solutions to the enforcement of the case and a patent infringement case handled by the Guangzhou Intermediate People's Court of Guangdong Province, and to the promotion of the resolution of another two related litigation cases. On August 5, 2024, X Rui Company submitted a case closure application, confirming the full performance of the settlement agreement.

Significance of Selection

As one of the intellectual property cases with the largest enforcement targets nationwide, the case provides a replicable and promotable template for solving conduct-based enforcement cases based on the cross enforcement mechanism, and typically exemplifies the roles of the people's courts in the new era in comprehensively promoting cross enforcement, deepening the reform of separating trial from enforcement, and helping "effectively solve enforcement challenges".

(Source: the Supreme People's Court of the People's Republic of China)

Unitalen News
Empowering Enterprises' Global Strategic Upgrades: A Special Salon on European Intellectual Property Layout and Dispute Countermeasure Was Successfully Held

As the undertaking organization of the Overseas Intellectual Property Dispute Countermeasure Guidance Workstation, Chongqing Branch of Unitalen Attorneys at Law collaborated with Chongqing Baodi Industrial Co., Ltd. to hold a salon themed on "European Intellectual Property Layout and Dispute Countermeasure" on the 13th day of March.

The guests of this salon included Ms. YE Chunmei, a second-level researcher from the Intellectual Property Protection Department of Chongqing Intellectual Property Bureau, Mr. WANG Wenyu, General Manager of Chongqing Baodi Industrial Co., Ltd., and Ms. WU Chengjun and Ms. WANG Shiwei, Deputy General Managers of Chongqing Branch of Unitalen Attorneys at Law. As distinguished guests invited to the event, Attorney PAN Wei, a partner of Unitalen Attorneys at Law, as well as Attorney Max von Vopelius and Dr. YANG Cheng, partners of Germany's top intellectual property law firm Eisenführ Speiser, shared their insights into European intellectual property practices.

Attorney LI Bing, A Partner of Unitalen, Was Invited to Attend the "Seminar on Trademark & Copyright Protection Practices in 2025" Hosted by the Korean Intellectual Property Protection Association (KOIPA) and the Korean Copyright Commission (KCC)

On March 26, 2025, Attorney LI Bing, a partner of Unitalen, was invited to attend the "Seminar on Trademark & Copyright Protection Practices in 2025" hosted by the KOIPA and the KCC, and delivered a themed speech about strategies on administrative protection of trademarks.

The event was supported by the Embassy of South Korea in China, and the guests present at the meeting included Mr. KANG Tackjung, IP Counselor at the Embassy of South Korea in China; Mr. CHUN Jung-min, Director of the Beijing Representative Office of the KCC; Ms. HAN Chunhwa, Representative of the Beijing Representative Office of the KOIPA; and representatives from the Chinese and Korean business communities.

UNITALEN Monthly Newsletter ?Copyright 2007
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