Key takeaways:
- In 2020, the Beijing Fourth Intermediate People’s Court ruled to recognize and enforce a trademark judgment of the Korean Supreme Court (See SD Biotechnologies Co. Ltd v. 99 Trade Co. Ltd (2019) Jing 04 Xie Wai Ren No.3 ((2019)京04协外认3号)).
- This case marks the first time that Chinese courts have recognized and enforced an intellectual property judgment, and the third time that South Korean judgments have been enforced in China.
- The application for enforcement of a foreign judgment concerned a trademark registered in China and sought the transfer of the trademark from the defendant (judgment debtor) to the plaintiff (judgment creditor).
- During the hearing, the Beijing Court granted the application for interim measures and issued an order prohibiting the Respondent from transferring, canceling, or altering the registration of its trademark registered in China and from dealing with trademark pledge registrations.
In 2020, a local court in Beijing ruled to recognize and enforce a South Korean trademark judgment, marking the first time that Chinese courts have recognized and enforced an intellectual property judgment, and the third time that South Korean judgments have been enforced in China (See SD Biotechnologies Co. Ltd v. 99 Trade Co. Ltd (2019) Jing 04 Xie Wai Ren No.3 ((2019)京04协外认3号)).
In this case, the Beijing Fourth Intermediate People’s Court (the “Beijing Court”) recognized and enforced a judgment rendered by the Supreme Court of South Korea. The asset subject to enforcement was a trademark registered in China.
On 28 Dec. 2022, this court held a press conference to introduce the aforementioned case. The theme of the press conference was “Top Ten Enforcement Cases on the Recognition and Enforcement of Foreign Arbitral Awards and Court Judgments by the Beijing Fourth Intermediate People’s Court”.
The court has accepted 332 such cases since 2018, the year when it was granted centralized jurisdiction over the cases within Beijing involving applications for the recognition and enforcement of foreign arbitral awards and court judgments. Among others, ten most representative cases were presented in this press conference, one of which is the case discussed in this article.
We have not located the original judgment. The information in this article comes mainly from the press conference of the Beijing Court, and the public notice by this Court at People's Daily (Overseas Edition) (人民日报海外版) on 24 June 2020.
Ⅰ. Case Overview
The Applicant is SD Biotechnologies Co. Ltd and the Respondent is 99 Trade Co., Ltd, two companies both domiciled in South Korea.
The Applicant applied to the Beijing Court for recognition of the civil judgment made by the Supreme Court of South Korea and enforcement of part of the judgment.
During the hearing, the Applicant requested the Beijing Court to take interim measures (i.e., property preservation) against the Respondent’s trademark registered in China.
Firstly, the Beijing Court granted the application for the interim measures and issued an order prohibiting the Respondent from transferring, canceling, or altering the registration of its trademark registered in China and from dealing with trademark pledge registrations.
Then, the Beijing Court made a ruling on the application for recognition and enforcement, recognizing the civil judgment rendered by the Supreme Court of South Korea and enforcing part of the judgment. The Respondent is obliged to transfer to the Applicant its registered trademark with the Trademark Office of China National Intellectual Property Administration (the “Trademark Office”) and complete the trademark transfer registration procedures.
Thereafter, the Beijing Court issued an enforcement assistance order to the Trademark Office, requiring the Trademark Office to register the Applicant as the trademark owner of the trademark. The Trademark Office changed the trademark owner in accordance with the enforcement order.
Ⅱ. Our Comments
1. New progress in South Korea-China judgments recognition and enforcement
This is the third time that a Chinese court has recognized and enforced a South Korean judgment (excluding divorce judgments), and the first time that a local court in Beijing has recognized and enforced a South Korean judgment.
Prior to this, China has twice recognized and enforced South Korean judgments. For details, please see our article below:
- The Second Time China Recognizes a South Korean Judgment
- Chinese Court First Recognizes a South Korean Judgment: Another Sign of Door Open for Foreign Judgments
This indicates, once again, that there are no substantial obstacles in China’s recognition and enforcement of South Korean judgments.
2. First case where foreign IP judgments have been recognized and enforced in China
The application for enforcement of a foreign judgment concerned a trademark registered in China and sought the transfer of the trademark from the defendant (judgment debtor) to the plaintiff (judgment creditor).
This is a breakthrough.
Prior to this case, it is unknown whether foreign judgments on intellectual property rights (e.g. trademarks, patents, copyrights, etc.) can be recognized and enforced in China. Even if we refer to the latest landmark judicial policy, the “Conference Summary of the Symposium on Foreign-related Commercial and Maritime Trials of Courts Nationwide” (全国法院涉外商事海事审判工作座谈会会议纪要) issued by China’s Supreme People’s Court on 31 Dec. 2021, we still cannot find the answer, because this policy simply does not apply to foreign judgments relating to intellectual property, bankruptcy, unfair competition and anti-monopoly cases.
Frankly, the Beijing Court’s enforcement of the South Korean judgment involving trademark rights is beyond our expectations. For the time being, we cannot predict what this will mean. We will keep you updated as we receive further information in this regard.
Contributors: Guodong Du 杜国栋 , Meng Yu 余萌
