HFG Law& Intellectual Property

HFG Law& Intellectual Property HFG is a Chinese Law Firm and IP Practice integrated and co-managed by international professionals

HFG is a leading China focused Law Firm and
IP Practice uniquely integrated and co-managed by a team of multinational professionals based in Shanghai and Beijing. Since 2003 HFG is proud to deliver the highest
standard quality service rendered with uncompromised understanding of clients business interests from a range of industries
all over the world.

The intersection of trademark law and cultural heritage presents a complex legal landscape, where the protection of comm...
12/09/2024

The intersection of trademark law and cultural heritage presents a complex legal landscape, where the protection of commercial interests through trademarks can sometimes conflict with the preservation and respect of cultural heritage.

This interplay involves balancing the rights of businesses to protect their brand identities with the need to safeguard the collective identity and cultural expressions of communities.

Names which belong to humanity's cultural heritage and are rooted in mythology or folklore, present unique challenges when it comes to trademark law. While these names can sometimes be trademarked, there are important considerations and limitations.

When businesses use culturally significant symbols, motifs, or phrases as trademarks without proper authorization or respect for their cultural significance, it can lead to cultural appropriation. This often results in the commercialization of cultural elements in ways that may strip them of their original meaning or reduce their significance to mere commodities.

The unauthorized use of cultural heritage in trademarks can lead to the exploitation of indigenous or local communities, who may see their cultural symbols used for profit without receiving any benefit or recognition. This can cause harm to the cultural community by diminishing the symbolic value of their heritage.

Read more on this topic here: https://www.hfgip.com/news/intersection-trademark-law-and-cultural-heritage

This is the story of a legal battle between a small bookshop called Hermes in Izmir, Turkey, and the luxury French fashi...
11/09/2024

This is the story of a legal battle between a small bookshop called Hermes in Izmir, Turkey, and the luxury French fashion house Hermès: another case that highlights the complexities of trademark law and the clash between global brands and local businesses.

The Hermes Sahaf bookshop, owned by Umit Nar, has been operating for 15 years in the seaside town of Izmir, Turkey. It is named after the Greek god Hermes, who is historically linked to the region, given that Izmir was once known as Smyrna, a place steeped in ancient Greek mythology.

Hermès, the iconic French luxury brand, also extends into other areas, including publishing its magazine. This broad scope of operations forms part of their argument in protecting the trademark.

The conflict began in 2021 when Umit Nar sought to register a trademark for his bookshop. Hermès Paris opposed this registration, claiming that there was a "similarity and risk of confusion".
The fashion house's legal team argued that the name "Hermes" is strongly associated with their brand, and any other use could cause confusion, particularly given their diverse business interests, including publishing.

The bookshop owner argued that in 15 years, no one had ever confused his store with the luxury brand. He also invoked the cultural and historical significance of the name Hermes, associated with the ancient history of Izmir, making the name part of the local heritage rather than a mere brand identifier.

Turkey’s intellectual property authority, TurkPatent, initially sided with Hermès Paris, preventing any other brand from using the name "Hermes" in Turkey.

The case escalated to the Ankara court: On August 16, 2024, the court partially voided TurkPatent's decision, allowing the bookshop to continue using the name "Hermes." This ruling signifies a win for the small business owner against the giant luxury brand,
The court recognized the cultural and historical significance of the name "Hermes" in the context of the bookshop's location in Izmir, Turkey.

More on this case here: https://www.hfgip.com/news/hermes-vs-hermes-books-win-over-fashion
📷: AFP

The 2024 Forum on China-Africa Cooperation (FOCAC) Summit took place in Beijing from September 4 to 6. This summit serve...
10/09/2024

The 2024 Forum on China-Africa Cooperation (FOCAC) Summit took place in Beijing from September 4 to 6. This summit served as a key platform for strengthening diplomatic and economic ties between China and African nations.

Discussions focused on a variety of issues, including infrastructure development, trade relations, and debt sustainability, which have been central to China-Africa relations for years.

China has played a significant role in financing and developing infrastructure projects across Africa, but this has also led to concerns about rising debt levels in several African countries. As a result, the summit likely addressed the need for more balanced trade arrangements and sustainable economic partnerships.

In addition to economic cooperation, the FOCAC summit also likely highlighted China's growing diplomatic influence in Africa, as Beijing continues to seek stronger ties with African nations to counter Western influence on the continent.

China and Africa account for about one-third of the world's population, and their modernization is seen as crucial for global progress. During the 2024 Forum on China-Africa Cooperation (FOCAC) Summit, Chinese President Xi Jinping emphasized that without the modernization of China and Africa, global modernization efforts would be incomplete.

He proposed ten partnership actions to be undertaken over the next three years to deepen cooperation between China and Africa. These actions are aimed at promoting modernization across the Global South and contributing to a fairer and more stable world order.

The focus of these partnership actions will likely include areas such as industrialization, agricultural development, infrastructure building, digital economy, and green development, all of which are crucial for the economic growth and modernization of African nations.

This initiative reflects China's broader strategy to strengthen ties with Africa and support its development as part of a global effort to reduce inequalities and enhance stability.

In its decision in June, 2024, the General Court of the EU upheld the decision made by the EUIPO regarding the trademark...
03/09/2024

In its decision in June, 2024, the General Court of the EU upheld the decision made by the EUIPO regarding the trademark dispute between the German fitness chain FitX Beteiligungs GmbH (FitX) and Société du Tour de France, the organizer of the famous Tour de France competition.

The Court concluded that the phrase “TOUR DE” had very limited distinctive character and did not play a dominant role in the overall impression of the marks, therefore, the registration and use the disputed mark was unlikely to cause confusion.

Furthermore, the Court also considered that the use of “TOUR DE X” would not take unfair advantage or harm the reputation of the “TOUR DE FRANCE” marks.

The case started in May, 2017: When FitX filed an application for an EU figurative Trademark, TOUR DE X, covering goods and services in Classes 25, 28, and 41, Société du Tour de France filed an opposition before the EUIPO on the grounds of the likelihood of confusion as well as the high reputation of the earlier marks.

By citing various prior trademarks including “TOUR DE FRANCE” and “LE TOUR DE FRANCE” marks, the opposer argued that the disputed marks were designated to similar goods and services, the use of “TOUR DE X” by the trademark applicant would benefit from or harm the distinctiveness of the “TOUR DE FRANCE” marks.

The opposition was rejected by the EUIPO’s Opposition Division and later the Second Board of Appeal, as they found that there was no likelihood of confusion between “TOUR DE X” and “TOUR DE FRANCE”. They deemed that the common element of the two parties’ marks was “TOUR DE”, which had very little distinctiveness, so the use of “TOUR DE X” mark would not take unfair advantage of the “TOUR DE FRANCE” marks.

Société du Tour de France then brought the case before the General Court and requested to overturn the decision.

In the recently-issued decision, the General Court upheld the EUIPO’s decision, confirming that “TOUR DE X” does not infringe the right of the “TOUR DE FRANCE” marks.

Comments on this case here: https://www.hfgip.com/news/tour-de-x-does-not-infringe-tour-de-france-trademarks

While personal rights and portrait rights are related, they serve different purposes. Personal rights provide broad prot...
29/08/2024

While personal rights and portrait rights are related, they serve different purposes. Personal rights provide broad protection for an individual’s overall dignity, privacy, and autonomy. Portrait rights, on the other hand, are specifically concerned with the use and control of a person’s image or likeness.

Understanding both is essential for comprehensively protecting an individual's rights in both private and public life. In fact, the distinction between these two findings is nuanced and reflects specific legal interpretations.

Personal rights are a broad category of rights that protect an individual's personal autonomy, dignity, and integrity. These rights are fundamental and are concerned with aspects that are intrinsic to a person's identity and personal life.

The scopes of the personal rights are mainly 4: Right to Privacy, Right to Reputation,
Right to Integrity, Right to Personal Data Protection.

Personal rights are invoked in a wide range of situations, from protecting an individual's privacy from media intrusion to safeguarding against the unauthorized use of personal data.

When discussing the concept of portrait rights, it is essential first to understand what constitutes a portrait.

The concept of a portrait is broad and encompasses various forms of visual representation, not just facial images. Understanding the wide-ranging scope of what constitutes a portrait is crucial in discussing portrait rights, which protect individuals' control over the use of their likeness and image.

Portrait rights ensure that people have a say in how their image is used, particularly in commercial or public contexts, while also balancing these rights against other legal principles, such as freedom of expression and public interest.

The notion of a portrait extends beyond just an image of a person's face; it includes any visual representation that can be used to recognize a person, even if it involves parts of the body other than the face.

The legal definitions and interpretations of a portrait are broad and not strictly limited to facial images.

More on this topic here: https://www.hfgip.com/news/distinction-between-portrait-rights-and-personal-rights

On June 20, 2024, the Beijing Internet Court issued a significant first-instance judgment in case involving the unauthor...
27/08/2024

On June 20, 2024, the Beijing Internet Court issued a significant first-instance judgment in case involving the unauthorized use of "AI face-swapping" technology.

The defendant in this case was an operator of an AI face-swapping app that allow users to create customized videos by swapping their faces with those of others. The defendant had used videos of the plaintiffs to create face-swapping templates without their consent. These templates were then offered as part of a paid service within the app, enabling users to generate face-swapped content for a fee.

The plaintiffs argued that the defendant's actions violated their rights to their portraits and personal information. The unauthorized use of their images for commercial purposes not only infringed on their personal dignity and privacy but also harmed their professional and commercial interests.

The Beijing Internet Court found that there was no infringement of the plaintiffs' portrait rights, but the defendant's use of the plaintiffs' images without authorization constituted a clear infringement on their personal information rights.

The court emphasized that personal images and likenesses are protected under Chinese law, and the unauthorized commercial exploitation of these images violates individuals' rights to control the use of their personal information.

The defendant attempted to mitigate its liability by arguing that it had outsourced the face-swapping services to a third-party company. However, the court rejected this defense, stating that the defendant remained fully responsible for the actions of the third party. The court ruled that outsourcing did not absolve the defendant of its obligations to respect the plaintiffs' rights.

Furthermore, the commercial exploitation, done without the plaintiffs' consent, further exacerbated the infringement, leading to a ruling in favor of the plaintiffs.

The court ordered the defendant to issue a public apology to the plaintiffs and awarded the plaintiffs monetary compensation.

More on this case here: https://www.hfgip.com/news/chinese-face-swapping-app-infringed-personal-information-rights

In July 2017, Xiaomi, a major Chinese electronics company, introduced a smart speaker featuring a voice-activated comman...
20/08/2024

In July 2017, Xiaomi, a major Chinese electronics company, introduced a smart speaker featuring a voice-activated command prompt called "小爱同学" (Xiao Ai Tong Xue). This name quickly became synonymous with Xiaomi's AI-powered voice interaction technology, gaining significant recognition and becoming a key part of Xiaomi's product ecosystem.

In August 2017, just a month after Xiaomi's launch, Chen Xiong, an individual with no prior connection to Xiaomi, registered the name "小爱同学" as a trademark.

Over the next few years, Chen aggressively expanded his trademark filings, registering 66 marks across 21 different classes.

This is a typical example of trademark squatting. In fact, trademark squatting involves registering well-known or popular trademarks with the intent of profiting from them, often by demanding payment from the legitimate brand owner or by selling the trademark rights.

After obtaining the trademark registration, Chen sent a cease-and-desist letter to Xiaomi, demanding that the company stop using the "小爱同学" name. Chen also began using the trademark on his own products, including watches and clocks, to establish a claim of legitimate use.

Xiaomi filed a lawsuit against Chen Xiong and the licensee of the copycat trademarks in the Intermediate People’s Court of Wenzhou. Xiaomi argued that Chen's actions constituted unfair competition and were a clear case of trademark squatting.

On December 14, 2023, the Wenzhou Court issued a first-instance civil judgment in favor of Xiaomi. The court ruled that the name "小爱同学" was indeed associated with Xiaomi's products and had gained considerable recognition and goodwill in the market.

The court found that Chen's actions violated the good-faith principle, which is a cornerstone of the Anti-Unfair Competition Law in China, and
ordered Chen to pay Xiaomi 1.2 million yuan (around 168,000 US$) in compensation for commercial losses and reasonable legal expenses.

More on this case here: https://www.hfgip.com/news/trademark-squatting-case-xiaomis-ai-powered-voice-prompt

More than 89 million US$: that's the highest compensation ever ordered in China for IP infringement, in a case that high...
13/08/2024

More than 89 million US$: that's the highest compensation ever ordered in China for IP infringement, in a case that highlights issues related to employee mobility, trade secrets, and the legal implications of intellectual property misappropriation in highly competitive industries.

The dispute between Geely and WM Motor is rooted in a series of events that began in 2016, when a significant number of Geely's senior management and technical personnel resigned and subsequently joined WM Motor Technology Group Co., Ltd., a newer competitor in the Chinese automotive industry.

In fact, nearly 40 senior management and technical personnel from a Geely subsidiary left the company. Out of these, around 30 individuals immediately joined WM Motor.

In 2018, Geely discovered that WM Motor and its affiliated companies had filed applications for 12 utility model patents. These patents listed some of the former Geely employees as inventors or co-inventors. The patents were related to chassis technology for new energy vehicles (NEVs), which was an area where Geely had been actively developing proprietary technology.

Based on the above findings, Geely initiated legal proceedings against WM Motor, accusing them of misappropriating trade secrets and infringing on its intellectual property. The lawsuit focused on the alleged unauthorized use of proprietary chassis technology, which Geely claimed had been crucial to the development of WM Motor's EVs.

The Supreme People’s Court (SPC) sided with Geely. The court found that WM Motor had indeed engaged in the misappropriation of trade secrets.

The SPC imposed double punitive damages, a relatively new and stringent measure in Chinese IP law designed to serve as a deterrent against such infringements.

The ruling marks the highest compensation ever awarded in an IP infringement lawsuit in China, reflecting the seriousness with which the court views the protection of trade secrets.

Full story and comments here: https://www.hfgip.com/news/geely-carmakers-trade-secrets-worth-640-million-rmb

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