White Paper on the Trial of Intellectual Property Cases by Shanghai Courts in 2018
Shanghai High People’s Court
April 22, 2019
II. Strengthening Judicial Protection of Intellectual Property Rights Achieved Remarkable Results
1. A regulation was promulgated to strengthen intellectual property rights protection and civil compensation was increased. In 2018, after a practical and theoretical research on the problems of “difficulty in collecting proof, low compensation and long period” in civil litigation involving intellectual property rights, Shanghai High People’s Court issued Several Opinions on Strengthening Judicial Protection of Intellectual Property Rights, with emphasis on actively creating new measures of judicial services and safeguard for intellectual property rights in line with international standards, and making great efforts to build an evidence examination mechanism conducive to the identification of infringement facts, a damage compensation mechanism conducive to the realization of the value of intellectual property rights, and a case adjudication mechanism conducive to the timely and effective resolution of disputes. Over the past year, Shanghai courts strengthened the protection of intellectual property rights. For example, in the two cases concluded by Shanghai Intellectual Property Court, in which Dassault Systems S.A. sued TJ Innova Engineering & Technology Co., Ltd. and Shanghai Zhidou Electric Vehicle Technology Co., Ltd. respectively for computer software copyright infringement, the defendants were respectively ordered to pay a compensation of RMB 15.05 million and 9 million. In the cases of Metso Company and others v. Shenyang Sanland Mining Equipment Manufacture Co., Ltd. and others over trademark infringement dispute and unfair competition dispute concluded by Pudong Court during China International Import Expo (CIIE), the plaintiff was awarded a total compensation of RMB 6.2 million, the full amount claimed thereby, to cover its economic losses and reasonable expenses. The efforts of Shanghai courts in strengthening the judicial protection of intellectual property rights achieved remarkable results and have been fully recognized by all sectors of society.
2. Criminal justice protection was strengthened, and intellectual property rights crimes were severely punished. In 2018, the judgments of 205 criminal IP cases in the courts of the city came into effect, involving a total of 353 people, up 46.42% and 68.90% respectively from 2017. Among the penalties, 33 people were sentenced to a fixed-term imprisonment of 3 to 7 years, up 73.68% YoY. Therefore, whether in terms of the number of cases concluded, the number of defendants, or the severity of punishment, the criminal justice protection of intellectual property rights in 2018 was significantly improved compared with that in 2017. In 2018, Shanghai courts tried and concluded a large number of criminal IP cases, and took many measures simultaneously to crack down on intellectual property rights crimes. For example, in the case in which Kuayue Biological Technology (Chuzhou) Co., Ltd. and Tong Xuanjun committed the crime of counterfeiting the registered trademark “MAXAM”of Shanghai Jahwa United Co., Ltd, the defendant Kuayue Company was sentenced to a fine of RMB 100,000 and the defendant Tong Xuanjun was sentenced to a fixed-term imprisonment of one year and eight months and a fine of RMB 50,000. In the case in which the defendant Wang Hong committed the crime of selling goods with counterfeit registered trademarks, the defendant counterfeited MCM-branded bags with an amount of attempted crime of RMB 2.96 million. He was sentenced to a fixed-term imprisonment of three years and six months and a fine of RMB 500,000. Another example is the case of the defendant Liu Qian who committed the crime of selling goods with counterfeit registered trademark “Xijiu”. He was sentenced to a fixed-term imprisonment of three years and an injunction to prohibit him from engaging in alcohol production, sales and related activities during the probation period.
3. The judicial review of specific administrative acts was strengthened, and the administrative enforcement of intellectual property rights was supervised in accordance with the laws. Shanghai courts gave full play to the leading role of justice in the trial of administrative IP cases, and supervised and supported the enforcement of intellectual property rights by administrative organs in accordance with the laws. For example, in the cases in which plaintiffs Chen Xiaolong, Chen Liliang and Wang Huagui refused to accept the administrative punishment decisions for trademark infringement imposed by Shanghai Pudong New Area Intellectual Property Bureau, Pudong New Area People’s Court first decided that the acts of the three plaintiffs constituted trademark infringement as stipulated in Paragraph (2) of Article 57 of the Trademark Law and then determine if the unlawful acts involved in the cases met three conditions “minor illegal act,”“timely correction” and “no harmful consequences” according to Paragraph 2 of Article 27 of the Administrative Punishment Law at the same time. Given the principle of “matching offense with punishment” prescribed by the Administrative Punishment Law, it was finally determined that in this administrative case the laws were correctly applied, the procedure was legal, and the punishment was appropriate. This case is the first administrative IP case filed against Pudong Intellectual Property Bureau since it explored the “three-in-one” administrative enforcement reform of patent, trademark and copyright. The trial of this case reflected that the people’s courts’ function of giving full play to the leading role of justice, supporting administrative organs to actively fulfill their duties in accordance with the laws, fully maintaining the order of intellectual property administration, and effectively promoting the administrative protection of intellectual property.
photo from: Shanghai High People's Court
