Search terms: Intellectual Property, China
The State Intellectual Property Office has issued the Administrative Measures for the Priority Examination of Invention Patent Applications. Through these measures, a fast-track system for the examination procedure of patent applications has been formalised and made workable in China.
The State Intellectual Property Office has published draft amendments to the Patent Law. Overall, their implementation would be positive for patent protection, as they would lower the burden of proof and might allow for the recovery of greater damages for wilful infringement. However, some commentators see the amendments as tipping the balance too far towards patent owners.
Chivas is the owner of several trademarks, including a three-dimensional trademark, for Class 33 goods. Chivas filed a lawsuit against the manufacturer and retailer of Elysee Regal Whisky for infringement of these trademarks. The court ruled in favour of Chivas at first instance and on appeal, issuing the first Chinese decision to recognise three-dimensional trademark infringement.
The State Intellectual Property Office's recently revised Measures for Compulsory Licensing of Patent Implementation create two additional grounds for applying for compulsory licences. However, there have been no instances of compulsory patent licensing in China since the patent legislation system was founded. Will the new measures change this?
An intermediate people's court has found that selling genuine products with modified technical information amounts to an act of infringement. Although the Michelin tyres sold by the defendant were genuine, the act of resale constituted infringement because information including load index, size and place of manufacture was modified without the trademark owner's consent.
Plans to roll out a real-name registration system for China's parcel post may give IP rights owners a crucial advantage in the battle against counterfeiting. Once infringers have been identified and located, rights owners can adopt a range of anti-counterfeiting strategies against their operations.
The battle for the IPAD trademark in China has yet to reach a conclusion, but it has highlighted the issue of trademark assignment practice in China. Assignment involves more than merely signing an agreement to purchase the target trademark; foreign brand owners should ensure that they understand the practical issues involved.
A Shanghai court has found that the mark MYBELIVE, which was registered in Class 3 for cleaning products, became an infringement of L'Oréal's registered trademark MAYBELLINE when used for cosmetics. The court also found that use of the name 'Mei Bao Lian Cosmetic Company' constituted free riding on L'Oréal's market reputation.
The Supreme Court recently rejected an application for retrial filed by Castel Frères SAS in a trademark non-use dispute. Its ruling redefined the concept of 'legitimacy' in trademark use and reversed a previous decision on the same issue in another case published in 2008.
The Shanghai Number 2 Intermediate People's Court recently held that an article imitating the famous Michelin restaurant guides, with a description and rating of French restaurants in Shanghai, constituted a violation of trademark rights, despite the fact that it was presented as a parody. The finding could have significant implications for other foreign brands in China.
The Shanghai Pudong District People's Court has held that four companies infringed Levi Strauss & Co's 'double-arc' mark by using a similar stitching on jeans. The defendants contended that the stitching was merely decoration, but the court held that Levi Strauss's use - in combination with its registered LEVI'S trademark, on the jeans as a whole - had created a link between sign and products in the minds of consumers.
In trademark opposition proceedings in China, it can be difficult to seek recognition of well-known trademark status or to prove that an opponent's trademark, although not registered in China, has obtained sufficient reputation through use. However, as a recent case demonstrates, if a disputed mark is a slavish copy of the opponent's stylised trademark, the opponent may be able to invoke copyright.
Foreign companies have registered numerous trademarks in China, but many such registrations have been purely defensive, by registrants that are either laying plans to tap into the market in future or trying to stem the flow of counterfeits. However, changing judicial practice and an imminent amendment to legislation mean that foreign companies must give more thought to serious commercial use of their trademarks.
The term 'bad faith' is not directly defined in either the Trademark Law or the revised draft. However, the concept plays a key role in both trademark law and practice in China. The revised draft presents some significant practical advantages to counter bad-faith applications for registration or opposition, although there is still room for improvement.
A dispute between Nestlé and Master Sauce, over the use of a square-based sauce bottle resembling Nestlé's registered trademark, will alert all trademark owners to the possible limitations that the courts may impose on the protection granted by the Trademark Law.
The State Administration for Industry & Commerce has published a document entitled "Lists of Well-Known Trademarks Recognised through Administrative Procedure". Its statistics indicate the difficulties that foreign companies face in having their trademarks recognised as well known through administrative procedures.
Destroying infringing goods and their means of production can be vital to prevent repeat infringement, as the damages awarded by Chinese courts are often too small to be a deterrent. However, many courts in China choose to avoid dealing with the issue directly. Forum shopping, administrative actions and out-of-court agreements are among the tactics to consider.
If a product has lost its design patent protection, but is widely recognised by the relevant public in China as a result of its distinctive design, a recent Supreme Court opinion will make it easier to seek protection under the Unfair Competition Law. The court virtually treated the configuration of the allegedly infringed product as an unregistered three-dimensional trademark.
Tyre manufacturer Michelin has been established in China since the 1980s and the brand's success has attracted numerous imitators. The company filed suit against an individual who was using the same Chinese characters as Michelin and a similar transliteration on sound equipment. The case demonstrates the benefit of obtaining recognition of a mark's well-known status.
A Supreme People's Court decision reaffirms the interpretation of Article 56 of the Patent Law, which concerns the scope of protection for a patent. The court held that the scope of protection is based primarily on claims, but that such claims must be interpreted in combination with the patent description and attached drawings.
The State Administration for Industry and Commerce has approved and released the Management Measures of Trademark Agencies. The measures, which are already in effect, make a particularly significant change to the 2009 measures: law firms can now act as trademark agents.
Since China's accession to the World Trade Organisation in 2001, local courts have experienced an increase in IP rights lawsuits before the civil courts. The number of foreign-related IP lawsuits also increased, although these account for an ever-declining proportion of the total number of cases.
The Beijing Higher Court has upheld a first instance decision that a crocodile logo affixed to shoes infringed two trademarks owned by fashion and sportswear company Lacoste. Although the defendant argued that it had been authorised to use the controversial mark, it was found that the authorising company held the rights in the word element of the licensed logo, but not the device element to which the case related.
After many years of accumulating knowledge, particularly since its economic liberalisation, China has established an effective legal system for the protection of trademark rights. Applicants and rights holders should ensure that they understand the issues and procedures involved, from registration to enforcement, ownership changes and rights transfers.
The State Council recently released the newly revised Regulations on Customs Protection of Intellectual Property Rights. The new regulations made five revisions, most of which are favourable for IP owners. However, they underline the importance of ensuring that changes of information relating to IP rights and their owners are recorded within the required time.
In the past 18 months China's IP stakeholders have witnessed a number of important developments, including the implementation of the new national IP strategy. The State Administration of Industry and Commerce and the Supreme Court have separately promulgated a number of trademark-related regulations and interpretations.
The Supreme People's Court's interpretation of the Patent Law clarifies how the courts will define the scope of protection for patent claims. As the interpretation embodies more than 20 years' experience of patent trials and incorporates the latest amendments to the law, it is expected to have a significant effect on patent litigation.
The Tort Liability Law is expected to have a far-reaching effect on the protection of intellectual property in China. Among other key issues, it addresses liability for abetting IP infringement, moral damages for infringement of personal rights and joint and several liability for internet service providers in online copyright cases.