The commissioner of the State Administration for Industry and Commerce (SAIC) recently delivered a keynote speech at the National Administration for Industry and Commerce and Market Supervision Conference, unveiling various 2017 statistics and the SAIC's new 2018 initiatives on trademark practice.
Following a lengthy battle regarding imitators' use of the letter 'N' on their trainers, the Supreme People's Court recently accepted New Balance's application for a retrial. The court may see this case as a good opportunity to apply the new direction regarding how courts should assess the likelihood of confusion. Alternatively, it may consider that the Trademark Review and Adjudication Board and the Beijing High Court erred when they ignored the prior judgments affirming the protection of trade dress.
The Supreme People's Court recently promulgated the Circular on Creating a Favourable Legal Landscape to Facilitate Innovation and the Start-Up of Entrepreneurs by Leveraging the Adjudicatory Function of the Court, in a bid to reassure the business sector. With respect to the protection of IP rights, the court has vowed to improve the rule of evidence to ensure that it applies to IP rights litigation, promote the 'three-in-one' system and establish a judicial assessment mechanism for damages, among other things.
The Beijing IP Court has ruled that an internet service provider which published rules stating that it had verified the legal status of vendors on its platform had to guarantee that the products sold on its platform were genuine. Despite taking measures after being officially informed of an infringement, the service provider remained jointly and severally liable for the infringement as, by publishing the rules, it had endorsed the vendor and lost its strictly neutral position. Therefore, the safe harbour principle did not apply.
The Zhongshan Intermediate Court has ruled that a trademark owner and his company must bear joint and several liability for the compensation of Rmb3 million after the distinctive element of their registered trademark was subtly modified in practice to appear visually similar to the trademark 3M. The case shows the courts' determination to penalise trademark infringement, particularly where a defendant is reluctant to disclose its accounts.
The State Intellectual Property Office recently issued a decision amending the Guidelines for Patent Examination. The revised guidelines explicitly prescribe that an invention involving a computer program is not the same as a computer program per se, which broadens the scope of eligible subject matters in this field. The guidelines came into effect in April 2017.
The Trademark Review and Adjudication Board (TRAB) recently launched an online searchable database which will make its decisions publicly available. This announcement follows the 2016 initiative which saw the TRAB publish a number of randomly selected decisions each month. The database aims to make a greater number of TRAB decisions publicly available in order to increase transparency.
After four drafts, the revised Anti-unfair Competition Law 1993 has finally entered into force. Although the new law essentially maintains the concepts and principles of the original text, a number of changes have been introduced. The most significant change with regard to intellectual property is arguably the introduction in Article 6 of the expression 'a certain influence', which applies to signs and replaces the terms 'known' or 'well-known', which applied to products.
The China Trademark Office (CTMO) recently held that although the word marks in question were spelt differently, their similarities in terms of font, design and arrangement created a similar overall visual effect. As such, the coexistence of the marks in the market was likely to cause confusion among the relevant public with regard to the origin of the designated goods. The CTMO's comprehensive examination of the likelihood of confusion was in line with a recent Supreme People's Court interpretation.
Registering a three-dimensional (3D) trademark is difficult and the Chinese courts have failed to develop reliable jurisprudence on this matter. However, a recent Trademark Review and Adjudication Board decision concerning the world-famous Little Trees car air fresheners reaffirms the registrability and inherent distinctiveness of 3D marks that comprise the unusual shape of a product.
Sources indicate that the Beijing High Court recently released the Provisions on the Adjustment of the Courts' Jurisdiction over Civil IP Cases in Beijing. The new provisions outline the jurisdiction of the Beijing High Court, the Beijing IP Court and the lower-level Beijing courts and abolish the Provisions on the Jurisdiction over First-Instance Civil IP Disputes Heard by People's Courts at Various Levels in Beijing 2008.
The Supreme People's Court recently reversed a Guangdong High Court judgment and held that the trademark and packaging used on a product may constitute separate IP rights. The case serves as a reminder that where products are sold by a licensee in packaging which differs from that of the licensor, the licensee can claim independent IP rights. The licence agreement should therefore provide that on termination any packaging rights will remain attached to the trademark.
There are a number of tips that patentees should follow in order to enhance their patent's strength and give greater protection to their inventions. For example, patent claims should cover as many direct infringers as possible, defence claims should include as many specific features as possible and patent claims should not include any process features.
The Beijing High People's Court recently issued the newly revised Guidelines for Patent Infringement Determination. In addition to the comprehensive rules on patent interpretation, the determination of what constitutes patent infringement and the defence of patent infringement, the guidelines also provide rules on some much-discussed issues for the first time, such as standard-essential patents and graphical user interface designs.
A Swiss-type claim allows applicants to seek protection for a new medical use of a known substance. Although such a claim may make the subject matter of the second medical use patentable, attention should be paid to which features may contribute to the prior art. The Supreme People's Court recently clarified that use features which do not relate to the manufacture of a medicament cannot be taken as having a restrictive effect on or making a contribution to such a medical use when compared with the prior art.
The State Intellectual Property Office (SIPO) recently released the new Administrative Measures for the Prioritised Examination of Patents, which took effect on August 1 2017. Applicants in China and abroad, as well as other relevant parties, can take advantage of the measures to obtain the examination results of relevant patent applications or patents more quickly. The new measures represent the SIPO's efforts to foster the development of an innovative economy.
The State Administration for Industry and Commerce recently published the Rules on the Prohibitions and Restrictions for Enterprise Name Registration and the Rules on the Criteria for Finding Enterprise Names Identical or Similar. Both documents aim to regulate the examination of enterprise names during registration in order to establish a method of comparison and provide convenience for applicants.
A recent case before the Guangzhou IP Court concerned the principle that a design must display a fundamental level of intellectual creativity in order to be copyrightable as a work of art. Mao Jihong claimed that he owned a copyrighted design comprising a reversed version of the word 'exception'. However, the court held that it was essentially the expression of an idea as much as a design, and therefore demonstrated little originality in expression and no aesthetic value as fine art.
In a trademark battle involving Swiss fashion company AKRIS Prêt-à-Porter AG, Akris had to change its litigation strategy in the second-instance proceedings by shifting the focus from its prior registration, which had ceased to exist, to the bad faith of the owner of the opposed trademark. The case, which took 12 years to resolve, was recently selected as one of the Beijing IP Court's 18 exemplary cases concerning bad-faith trademark filing.