Wanhuida Intellectual Property
WAN HUI DA is a leading IP service powerhouse in China. It has three main legal entities, Wan Hui Da Law Firm, Wan Hui Da IP Agency and PEKSUNG IP Ltd. The merger with PEKSUNG in November 2016 was a milestone in the development of this IP powerhouse. It now is the home for over 400 IP professionals and a total of some 500 employees with presence in all major IP hubs in China, with offices in Beijing, Shanghai, Guangzhou, Ningbo, Suzhou, Xiamen, Kunming, Shenzhen and Hong Kong and liaison offices in San Diego, Paris and London. It operates under a single leadership team headed by senior partners.Show more
The Supreme People's Court recently promulgated Several Provisions on Evidence in Civil Litigation Involving Intellectual Property Rights. The 33-article provisions alleviate the burden of proof on IP rights holders and streamline the formal requirements for evidence sourced outside China. They also introduce penalties for evidence obstruction.
The Interpretation on Several Issues Concerning the Application of Laws in the Trial of Civil Cases Involving Disputes over Food Safety (I) recently came into force. The 14-article interpretation sets out the scenarios in which various parties will be held liable and the level of compensation liability that they will assume. This article explores some of the interpretation's key takeaways, including with respect to e-commerce and parallel imports.
The Commercial Press has published the Dictionary of Frequently Used Ancient Chinese Characters since 1979. It has been reprinted more than 160 times and sold over 22 million copies. The Commercial Press was recently awarded Rmb1.5 million in damages in the first court ruling in which a book planning firm and a publisher were held liable for joint infringement in a dispute concerning book decoration.
The National People's Congress recently passed the fourth amendment to the Patent Law, which will come into effect on 1 June 2021. It has been eight years since the first draft was released for public opinion. This article provides an overview of how the patent regime will be updated.
The Standing Committee of the National People's Congress recently adopted the third amendment to the Copyright Law, which is the result of decade-long legislative efforts of the Legislation Office of the State Council and the National Copyright Administration. The amendment will enter into force on 1 June 2021. This article provides an overview of the key highlights of the new law.
The number of trademark applications has increased progressively in recent years and this has created serious adverse consequences, including with respect to trademark squatting. Rights holders must be aware that legal means are available to help them deal with trademark squatters and know that, since the government has decided to tackle the problem, these legal means are effective.
As a rising fashion brand in China, Tommy Hilfiger has been constantly challenged by an increasing number of copycats. In a recent case, Tommy Hilfiger initiated an invalidation action against a Chinese company's disputed mark and successfully invalidated it on the grounds of prior use and the similarities between the designated goods of the disputed trademark and its cited trademark.
During a volatile 2020, China's legislature completed the overhaul of an amendment to patent and copyright law and promulgated varied judicial interpretations and policy documents projected to bring substantial changes to the nation's IP landscape from 2021. These well-coordinated legislative efforts ensure that parties will have detailed rules and criteria to follow and will improve the consistency, predictability and transparency of IP protection in China.
LPG Systems recently received an administrative decision from the Beijing Intellectual Property Office ordering an infringer to stop its design patent infringement. Previously, LPG had prevailed in an invalidation proceeding initiated by the infringer against its design patent in which the China National Intellectual Property Administration maintained the validity of this design.
The China National Intellectual Property Administration recently released details of 10 exemplary patent administrative enforcement cases from 2019. One selected case concerned a patent infringement dispute relating to the anti-tumour drug sorafenib, which has been selected for its significance in respect of the application of the Bolar exemption.
Whether the use of a trademark in the title of a product sold online constitutes trademark infringement typically depends on whether such use is fair. When products are sold online, determining what constitutes fair use can be tricky. Two cases involving famous mobile phone manufacturers Xiaomi and Oppo illustrate this problem.
In April 2020 the Beijing High Court published the Guidelines on the Determination of Damages and Statutory Damages in Disputes over Intellectual Property and Unfair Competition. These guidelines, which entered into effect on the date of issuance, are detailed, precise and even innovative. Even if they have binding force on only the Beijing courts, they should be influential throughout the rest of the country.
Apart from securing damages from infringers in a time-efficient manner, IP rights holders could leverage settlement agreements to rein in repeated infringements, provided that a considerable amount of damages could be written into the agreement as an insurance policy in case of repeated infringement. The courts tend to validate such damages clauses as long as infringement is established.
Van Cleef & Arpels' four-leaf clover 3D trademark invalidated in China due to lack of distinctivenessChina | 26 October 2020
The Beijing IP Court recently denied the inherent and acquired distinctiveness of Van Cleef & Arpels' four-leaf clover 3D trademark. Van Cleef & Arpels appealed before the Beijing High Court and the case is pending. The Beijing IP Court has set a high threshold in assessing the registrability of a 3D trademark which consists of a product shape. It remains to be seen whether this view is shared by the Beijing High Court.
Clear and convincing evidence standard should be applied to prior art taking form of physical objectsChina | 19 October 2020
In 2019 the IP Tribunal of the Supreme People's Court confirmed that a physical mobile phone was eligible prior art in assessing the novelty and inventiveness of a patent. The tribunal clarified that a party that asserts a physical object as prior art must specify the asserted prior technical solution, specify the corresponding relation between such prior technical solution and the physical object and prove or demonstrate that the public can intuitively obtain the technical solution from the physical object.
The exposure draft for the Implementation Measures for Early Resolution Mechanism of Pharmaceutical Patent Disputes (for Trial Implementation) was recently published to solicit public opinion. The measures are the first legal document explicitly addressing the pharmaceutical patent linkage system in China since the idea was first floated by the National Medical Products Administration in 2017. This article examines the measures' key takeaways.
The Supreme People's Court recently promulgated the Provisions on Several Issues Concerning the Application of Laws in Adjudicating Administrative Cases Involving Granting and Affirmation of Patent Rights, which is the first judicial interpretation concerning the trial of patent administrative cases. This article summarises the judicial interpretation's main points.
The Guangzhou IP Court recently upheld a first-instance judgment which had dismissed a trademark infringement claim against parallel imported products. The decision reaffirms the judicial practice that the import of non-counterfeit goods without the express permission of the trademark owner is not illegal in China, provided that the imported products comply with China's compulsory certification requirements and the importer does not modify, in any way, the imported product.
In China, an individual's name right is no longer protectable after their death. Although Marlon Brando passed away in July 2004, the China National Intellectual Property Administration (CNIPA) recently rejected an application to register the trademark MARLON BRANDO and the Chinese equivalent in respect of goods in Class 3. The CNIPA held that the registration and use of the trademarks would violate Article 10.1.8 of the Trademark Law.
Against the backdrop of the COVID-19 outbreak, the State Administration for Market Regulation recently issued the Notice on Eliminating Copycats of Famous Hospitals and Other Healthcare Institutions. The notice aims to eliminate from the healthcare industry copycats that are free-riding on the reputation of trade names or famous hospitals – in particular, 'Union', 'Huashan', 'Xiangya', 'West China', 'Qilu', 'Tongji' and 'Tiantan'.
The Supreme People's Court recently published the draft Judicial Interpretation on Several Issues Concerning the Application of Law in Civil Litigation on Trade Secret Violation. The draft judicial interpretation provides further details on several matters, including what can be protected as a trade secret, what protective measures a trade secret owner should apply and how damages should be calculated.
The Supreme People's Court recently released the Opinions on Tightening Sanctions on Intellectual Property Infringement (for Consultation) for public opinion until 31 July 2020. The opinions contain 21 articles aimed at strengthening preservation measures, stopping infringement in a timely manner by ordering cessation, enhancing compensation and reinforcing criminal crackdown on IP violations.
The Supreme Court recently released an exposure draft on several provisions concerning evidence specifically relating to civil litigations involving IP matters. The draft contains five chapters and 53 provisions, encompassing aspects of the provision of evidence by the parties, the investigation of evidence, the collection and preservation of evidence, evidence exchanging and cross-examination, and evidence assessment and admissibility. The draft also attempts to codify some customary practices.
The Supreme People's Court recently released for public comment two judicial interpretations that address online IP infringement. Some of the drafts' articles reflect government commitments made during the first phase of the China-US Economic and Trade Agreement, including exempting brand owners from liability for submitting erroneous takedown notices provided that they are submitted in good faith and imposing liability for takedown notices and counter notifications that are submitted in bad faith.
In March 2020 the China National Intellectual Property Administration released an exposure draft on the Guide for Determining Geographical Indications as Generic Names. The guide is considered a response to the first phase of the China-US Economic and Trade Agreement, since it completely absorbs the standards for determining generic names stipulated in the agreement.
The China National Intellectual Property Administration (CNIPA) recently issued the new Administrative Measures for the Use of Special Marks Reserved for Geographical Indications (GIs) (Trial). The special mark reserved for GIs is an official mark for consumers to verify GI-protected products in China and can be used by authorised producers, members affiliated with rights holders of GI collective trademarks, licensees of a GI certification trademark and other parties subject to CNIPA recordal and publication.
In response to the Sino-American trade agreement signed in January 2020, the Supreme People's Court (SPC) recently issued a notice soliciting public opinions on two documents concerning the enforcement of IP judgments. The promulgation of the SPC's documents may allow the judiciary to review the entire enforcement regime to further clarify and simplify not only enforcement procedures, but also bankruptcy procedures.
The Beijing IP Court recently held that two Tianjin-based companies had infringed Chinese Patent 201310030601.2, which is owned by the largest specialty mushroom grower in China, Shanghai Finc Food Co Ltd. This is the first case concluded in the Beijing IP Court to involve an infringement dispute concerning a patented microorganism per se.
The China National Intellectual Property Administration (CNIPA) recently invalidated Daimler's Design Patent 201430032306.6 regarding the new Mercedes-Benz Smart generation following a validity challenge by Shandong Lichi, a Chinese new energy vehicle company. The CNIPA held that the two designs in the patent at issue had no obvious difference to the prior designs, which had been published in news media.
In China, foreign brand owners are becoming increasingly concerned about unauthorised retailers using their trademarks on signboards. The legal issue is complicated by the fact that these unauthorised retailers are selling genuine goods which originate from parallel imports.
The Patent Law provides that a design for which a patent is granted must significantly differ from prior designs. Further, the similarity between a patent design and a prior design must be determined from the perspective of ordinary consumers in the relevant market. To this end, the Supreme People's Court uses certain parameters, including so-called 'design space'. This article analyses the application of these parameters in a recent design patent administrative suit.
The fourth amendment of the Trademark Law came into force on 1 November 2019. The revised Article 4 of the law now states that a "trademark filed in bad faith without intention to use shall be rejected". This modified version is also mentioned in Article 44.1 of the law, which provides that any trademark registered in violation of Article 4 and any trademark registered by fraudulent or unfair means will be declared invalid.
China has witnessed a number of significant developments in biotechnology patent prosecution in recent months. The amended Patent Examination Guidelines, which the China National Intellectual Property Administration (CNIPA) has been implementing since 1 November 2019, brought significant changes to the use of human embryonic stem cells. Further, in one of the few cases of its kind, the Supreme People's Court overturned a CNIPA re-examination decision in a patent administrative litigation.
In November 2019 the China National Intellectual Property Administration (CNIPA) stated that when a trademark embossed on a bottle cannot be removed, recyclers should ensure that they cover said trademark with another label to avoid the likelihood of confusion. The CNIPA added that affixing another label bearing another trademark on a bottle, leaving the original embossed trademark visible, is insufficient to avoid confusion.
When goods are manufactured in China by an original equipment manufacturer factory for export, the foreign buyer is not always the owner in China of the trademark that is affixed on the goods. But what if the trademark is registered in the name of a third party and such third party decides to sue the factory for infringement and stop the export of the goods? This is a long-debated question of which the courts have demonstrated different understandings.
A recent Supreme People's Court (SPC) decision clarified the requirements to cite the prior use defence under Article 59.3 of the Trademark Law. In this regard, the court stated that the only person eligible to cite this defence is the prior user themselves and that such use must have occurred prior to the registration application and the trademark owner's use of the registered trademark. Further, for the first time, the SPC made it clear that geographical scope is a key element in defining the original scope of use.
Geographical indications identify goods as originating from a certain region or locality, where a given quality, the reputation or another characteristic of the good is essentially attributable to the natural or humanistic features of the indicated place. However, if an indication is accredited as a geographical indication in its country of origin, is this sufficient for it to be granted protection in China without being registered as a trademark?
Claims are technical solutions seeking protection and should be a generalisation of the content sufficiently disclosed in a patent description. However, poorly drafted claims that include inappropriate generalisations risk being unsupported by their description. When ascertaining whether a claim of medical use invention is supported, it is crucial to reasonably interpret the scope of the claim.
The State Administration for Market Regulation recently published Certain Provisions for Regulating Applications for Trademark Registration. The new regulations set parameters for determining bad-faith practices and bad-faith applications for trademarks that are not intended for use. They also introduce procedures and countermeasures for identifying not only bad-faith applications, but also perpetrators (ie, bad-faith applicants), facilitators and enablers (ie, unethical trademark intermediaries).
In China, the practice of defensive trademarks appears to be a guiding factor when determining the legitimacy of a trademark application, but said trademarks remain subject to cancellation in case of non-use. The main challenge is the bad-faith strategy of applying to register many different trademarks without the aim of using them. In this respect, the recent revision of the Trademark Law gives hope that such a highly prejudicial phenomenon will be progressively eradicated.
Drug invention patents protect multiple types of invention, including compounds, crystal forms, dosage forms, preparation methods and uses. Nonetheless, in practice, it is difficult to patent improvement drug inventions in China. In proving the patentability of such an invention, patentees often face difficulties in establishing its non-obviousness (inventiveness).
The Trademark Review and Adjudication Board (TRAB) has released analysis of its decisions that were challenged before the courts in 2018. In addition to this analysis, the TRAB has provided comments on the admissibility of evidence in cancellation cases based on non-use for three consecutive years. This article provides an in-depth overview of the TRAB's findings.
So-called 'notorious markets' are markets which are well known for selling counterfeit products, often to tourists and visitors looking for good deals on famous branded products. Brand victories in the fight against physical market sellers and landlords selling counterfeit goods are all too rare. However, there are a number of practical strategies that can be employed to maximise success in the battle against counterfeits.
The Beijing High Court recently published an extensive set of guidelines on administrative trademark cases, which are divided into two parts: procedural issues and substantive matters. Although the guidelines clarify a number of matters (eg, the possibility of bringing an action against a ruling of the National Intellectual Property Administration when such ruling was remade in accordance with an effective court judgment), they contain a number of unpleasant surprises.
China has followed the global trend of protecting graphical user interfaces (GUIs) by acknowledging them as patentable designs in its amended Patent Examination Guidelines. However, under the Patent Law, designs are patentable only when filed together with a product which embodies the design. Since GUIs and software per se are not recognised as products, GUI patentees are faced with a dilemma if they attempt to challenge software developers for merely offering software which exploits their patented GUI design.
Offering to sell is an independent act of patent exploitation. However, it is not necessarily established on the premise that the product is physically manufactured or actually sold. In this context, the Beijing Intellectual Property Office recently had to consider how to determine whether an accused drug falls within the protected scope of a patent, without appraising a physical product, and the criteria needed to determine whether a product is being offered for sale.
In 2019 the Trademark Law was rapidly revised without public consultation. This revision, which was relatively limited, aimed to address the problem caused by trademark applications made in bad faith and without the intention to use and to increase the powers of the courts in judicial enforcement. This article analyses what remains to be done and what a fifth revision of the Trademark Law should cover.
The China National Intellectual Property Administration has released the Draft Amendment to the Patent Examination Guidelines. The draft proposes revisions to both substantive and procedural aspects in preliminary examination, substantive examination and invalidation proceedings regarding patents. This article analyses the major proposed changes to patent examinations.
In patent infringement disputes, it is possible to narrowly construe a feature to the specific embodiment and its equivalent embodiment by arguing that a claimed feature is a functional one. The accused infringer usually adopts this strategy in its non-infringement defence to narrowly construe the scope of patent protection to obtain a favourable position in the infringement comparison. A recent case serves as a reference on how to determine the functional features in patent infringement disputes.
No one wants to associate toothpaste with insect repellent, but this can happen if the same names and images have been trademarked in different classes of goods. This was the situation in which Hawley & Hazel (H&H) found itself with regard to its toothpaste brand Darlie. After Guangzhou Heiren filed the same iconic image associated with Darlie and the trademark DARLIE in several classes, H&H initiated copyright infringement and bad-faith registration claims.
The revision of the Anti-unfair Competition Law is part of the new effort to enhance the protection of intellectual property in China. It also reflects the ongoing negotiations between China and the United States on various topics, including IP protection. The revisions provide (among other things) a wider definition of a 'trade secret' and introduce the concept of punitive damages and the inversion of the burden of proof.
In 2018 the China Trademark Office launched a consultation for the fourth revision of the Trademark Law, which will enter into force in November 2019. The revision focuses on two important issues: the proliferation of trademarks, which was one of the main issues on which comments were submitted, and enforcement actions against infringers, which are considered insufficiently deterrent. As the new law was promulgated in such a hurry, further explanation and information on how it will be implemented is necessary.
The State Council recently amended the Regulations on the Administration of Technology Import and Export. The previous regulations, which had been in force since 2002, contained provisions pertaining to patented technologies and technological secrets which directly contradicted the Contract Law 1999. As such, they had been the subject of numerous complaints from the foreign business community.
A recent case concerning a culinary utensil invention may serve as a point of reference in assessing technical teaching. In practice – particularly in cases involving machinery – even though a structure extracted from prior art is identical or similar to a technical feature of a patent claim, a technical teaching could be erroneously derived if the structure's effect is considered based only on the extracted structure alone and not the effect that the structure achieves within the whole context of the invention.
Colour combinations have been registrable as marks since the Trademark Law was amended in 2001. However, in practice, this has been difficult, as examiners often opt for the easy solution of refusing such marks on account of their lack of distinctiveness. The Beijing IP Court case involving Andreas Stihl AG & Co KG's orange and grey abstract colour combination trademark illustrates the difficulties in this regard and showcases how to register a colour combination trademark in China.
Against the backdrop of China's changing IP landscape, the administrative enforcement of patents remains a valid option. Although local IP offices are being incorporated into the local administrations of market supervision, their patent enforcement function will remain intact. As such, judicial and administrative protection will likely dovetail in future to achieve complementary advantages. IP practitioners are therefore advised to tailor enforcement strategies to the circumstances of a particular case.
The Ouhai District People's Court in Wenzhou recently affirmed the significance of taking a global view when assessing the similarities between an allegedly infringing product and a 3D trademark. The dispute at issue was between Martell, one of the world's oldest cognac houses, and the Chinese manufacturer of Louis Baron XO brandy, the bottle of which was almost identical to Martell's 3D trademark.
In a recently published case, the Supreme People's Court reaffirmed that the reputation that a prior mark has built up may be extended to a later mark of the same applicant. However, the court categorically denied that a trademark registration can be extended to other marks through any means other than a renewal. This decision has rendered the widespread practice of extending a trademark registration obsolete.
The Office of the Inter-ministerial Joint Meeting for Implementation of the National IP Strategy recently promulgated the Action Plan for Furthering the National IP Strategy and IP Rights Powerhouse Initiative 2018. The action plan offers few new proposals and instead reiterates the major IP initiatives which the government has promoted over the past two years, including institutional and judicial reform, a legislative plan and various national enforcement campaigns.
In October 2018 the National People's Congress decided that all appeals of lower-court judgments rendered in cases with a technical aspect should be submitted to the Supreme People's Court (SPC). Following this decision, the SPC created a detached tribunal known as the SPC IP Court. It also promulgated the Provisions on Several Issues concerning the SPC IP Court, which set out how the new court will function and its jurisdiction.
Supreme People's Court to establish IP tribunal to hear appeals and retrials of highly technical casesChina | 28 January 2019
The 13th National People's Congress Standing Committee recently concluded its sixth session and adopted the Decision on Several Issues concerning the Litigation Procedures of Patent and Other IP Cases. Among other things, the decision provides that first-instance judgments rendered in highly technical civil IP cases will be directly appealable to the Supreme People's Court.
In July 2018 the Supreme People's Court confirmed the Trademark Review and Adjudication Board's decision to invalidate the pre-emptive registration of the trademark 美图秀秀MEITUXIUXIU in Class 3. The court's verdict has put an end to the invalidation proceedings instituted by Xiamen Meitu Technology Co, Ltd against the disputed trademark and confirmed the well-known status of the cited trademark 美图秀秀 in Class 9.
The statutory limit for damages set out in the Patent Act is Rmb1 million, which is lower than the equivalent limit set out in both the Trademark Law and the Anti-unfair Competition Law. As such, it is becoming increasingly important in patent cases to convince the court that the prejudice is higher than the statutory limit. Stokke AS recently managed to do this before a Zhejiang court in a lawsuit against a patent infringer.
In 2017 the Beijing IP Court rendered a groundbreaking decision by awarding the owner of an unregistered well-known trademark Rmb3 million in damages for infringement. According to the Trademark Law (2013 version), the owner of an unregistered trademark can prevent a third party from registering or using an identical or similar trademark on the same or similar goods. However, the law is silent as to whether the owner of such a mark can seek damages from third-party users.
China's State Intellectual Property Office was recently renamed the National Intellectual Property Administration. Simultaneously, the activities of a number of government entities, including the State Administration for Industry and Commerce and the State Intellectual Property Office, were regrouped under the State Administration for Market Regulation. Since the government announced this plan, foreign brand owners have been wondering how it will affect the IP sector.
The Supreme People's Court recently held a public hearing on the retrial of the administrative litigation concerning the refusal of Parfums Christian Dior's international 3D trademark application. The case was far from simple and raised several procedural issues, including with regard to the definition and publication of an application's subject matter, the consistency of examination criteria and the treatment of solely 3D marks.
The Beijing IP Court handles a substantial number of cases each year. Despite a 90% increase in the number of concluded cases since 2015, the court remains under enormous pressure to reduce its case backlog, of which patent administrative cases account for a considerable proportion. In order to reduce this backlog, the court recently began enlisting technical investigators and jurors with technical expertise in court proceedings.
The Patent Law provides that a patent's claims must be based on the description, which is a key mechanism devised to balance protection and disclosure under the law. The Supreme Court has rendered a number of judgments in this regard, which – in addition to the Patent Law and the Patent Examination Guidelines – are of guiding significance for the practical application of the Patent Law.
The Trademark Review and Adjudication Board (TRAB) recently released an analysis of its decisions which were overruled by the courts in 2017, in which it observed that the ratio of court decisions rendered against its own adjudications in the first instance and on appeal has increased each year. In addition to these statistics, the TRAB provided a commentary on issues such as admitting new evidence in court proceedings, changes of circumstances and trademark coexistence agreements.
The submission of experimental data after the filing date (also known as post-filing data) in support of the patentability of inventions has long been debated in the Chinese patent community. While opinions are divided in this regard, post-filing data provided by the applicant or patentee may serve as useful evidence if an invention is challenged for substantive defects.
The State Intellectual Property Office recently announced that a number of official patent application fees would be waived as of 1 August 2018. In addition, if a patent applicant or patentee meets the criteria for annuity reduction as set out in Article 3 of the Measures on the Reduction of Patent Official Fees, the reduction period will be extended from six years (calculated from the year of grant) to 10 years.
Requesting Customs to seize export products on grounds of patent infringement can be a potent legal tool against exporters. If the products involved are subsequently detained by the court and found to be infringing, they will be destroyed. However, it is difficult for patentees to organise customs seizures of exported patent-infringing products. If the other party files a counterclaim, the patentee may end up shooting itself in the foot.
Too many trademarks are filed in China for the purpose of trading them as a commodity for profit. These marks are not filed for the purpose of functioning as a source indicator of goods or services, which leads to frequent procedures before the Trademark Review and Adjudication Board. The courts should scrutinise evidence of use more closely if it is suspected to have been forged by a trademark registrant. The level of scrutiny demonstrated by the Beijing High Court in a recent case is therefore most welcome.
The Central Committee of the Communist Party recently released the Plan on Deepening the Reform of Party and State Institutions, providing insight into how the government will be run in the medium to long term following the State Council's plan to streamline governance. As part of the government overhaul, the State Intellectual Property Office will be restructured to integrate the registration and administrative adjudication responsibility for patents (its existing function), as well as trademarks and geographical indications.
The Paris Convention forms the cornerstone of China's legislative framework on the protection of commercial signs. This framework also comprises the new Anti-unfair Competition Law, which took effect in January 2018, and the Trademark Law, among others. This article analyses Article 59(3) of the Trademark Law and, by way of a comparison with the corresponding provisions of the new Anti-unfair Competition Law, examines how the new law will redefine the legal landscape for protecting commercial signs.
The new Anti-unfair Competition Law took effect in January 2018. As regards damages awards, Article 17 of the new law essentially follows the same calculation principles set out in the Trademark Law. Unfortunately, the new Anti-unfair Competition Law does not include the other modes of calculation provided for in the Trademark Law. In addition, the remedies granted by the Trademark Law and the Anti-unfair Competition Law with regard to unregistered trademarks are different.
The new Anti-unfair Competition Law took effect in January 2018. Although substantial changes were made concerning important issues such as the theft of trade secrets, as regards the principles set out in Article 10bis of the Paris Convention, most of the main concepts and principles of the original 1993 text were maintained. Article 9 of the 1993 law is one such article which remains largely unchanged, although some matters have been clarified, including with regard to misleading commercial publicity.
Article 6(1)(4) of the new Anti-unfair Competition Law prohibits a party from performing "other confusion acts that may mislead consumers to believe that its products are those of another person, or induce a special relationship with another person". This is a convenient fallback provision for IP rights holders which need protection in circumstances other than those explicitly listed in Article 6 of the law.
Article 6(1)(3) of the new Anti-unfair Competition law prohibits the unauthorised use of a website name, webpage or the main parts of a domain name with a certain level of influence. By way of an analysis of this provision from the perspective of Article 10bis of the Paris Convention and a comparison with the corresponding provisions of the Trademark Law, it is possible to examine how it will redefine the legal landscape for protecting commercial signs in China.
The legislature had been planning the recent amendments to the Anti-unfair Competition Law since China's accession to the World Trade Organisation. During the four drafts that followed, substantial changes were made concerning important issues such as conflict between company names, which may lead to confusion with regard to business entities.
The legislature recently made a number of amendments to the Anti-unfair Competition Law, which it had been planning since China's accession to the World Trade Organisation. One topic of discussion during the law's revision concerned the list of signs that cannot be copied, as requests were made to add a product's shape to this list. Further, the use of the word 'famous' with regard to trademarks came under intense debate during the revision process.
The legislature had been planning the recent amendments to the Anti-unfair Competition Law since China's accession to the World Trade Organisation. Although most of the main concepts and principles of the original 1993 text have been maintained, during the act's revision, Article 6 – which concerns misleading consumers and acts of confusion – was one of the most discussed provisions.
The legislature had been planning the recent amendments to the Anti-unfair Competition Law since China's accession to the World Trade Organisation. During the four drafts that followed, substantial changes were made concerning important issues such as the theft of trade secrets. However, as regards the principles set out in Article 10bis of the Paris Convention, most of the main concepts and principles of the original 1993 text have been maintained.
Winning first instance on procedural technicality not enough: final victory on merits remains necessaryChina | 25 June 2018
The Beijing High Court recently ascertained that a cited mark had acquired well-known trademark status before the opposed mark's application date. Thus, the court corrected the first-instance court's findings, while upholding its decision to rescind the Trademark Review and Adjudication Board's decision for its failure to address all of the cited mark owner's claims.
The Beijing High Court recently overturned a first-instance judgment relating to a certification trademark filed by the Keemun Black Tea Association. In its decision, the court emphasised that geographical indication trademark applicants bear a higher obligation and must act in good faith when submitting filing documents, including by not producing forged application files and giving a full and accurate account of the circumstances.
Data released by the Beijing Intellectual Property Court shows that bad-faith filings and registrations account for 30% of all trademark-related administrative suits, making them a major concern for brand owners. Recent case law of the China Trademark Office, the Trademark Review and Adjudication Board and the judiciary reveals how brand owners could be more strategic in fighting bad-faith filing under the existing trademark legislative framework.
The Shenzhen Intermediate Court recently demonstrated that, when seeking financial compensation, all efforts made by a plaintiff to prove the scope of patent infringement – even if its findings are not based on official accounting records – may be appreciated and rewarded by the courts. Factors such as a defendant's behaviour or an oral admission may assist the courts when determining damages.
It is acknowledged doctrine that if an accused trademark exhibits substantial similarity to copyrighted works, copyright infringement can be established once the accused has demonstrated access to the copyrighted works, unless the accused can prove that the accused work is the result of its independent creation. Such doctrine applied in a recent Beijing IP Court case, in which the court found that the opposed mark infringed a prior copyright.
The question of how stylised word marks should be examined often arises. In a recent case, an applicant obtained a registration for a word mark comprising three stylised Chinese characters, even though the visual arrangement of the characters rendered it a device mark and not a word mark. One solution to this issue that has been proposed would be to treat such marks as composite trademarks, comprising both a word and a device mark, and thus subject them to substantial examination as both.
Although the BORDEAUX GI collective trademark is registered with the China Trademark Office, the administrative enforcement authorities have seldom made findings of trademark infringement based on unauthorised use of the mark. However, the GI collective trademark BORDEAUX波尔多 (ie, Bordeaux in Latin and Chinese characters) was recently granted judicial protection in China for the first time. The decision is expected to serve as a point of reference for the enforcement authorities in future.
A Shanghai court recently found a wine dealer, its legal representative and one of its employees guilty of selling commodities bearing counterfeit Bordeaux geographical indication (GI) collective trademarks pursuant to the Criminal Law. The ruling, which granted the same level of protection to a registered GI collective trademark as an ordinary registered trademark, is the first criminal ruling regarding a counterfeit GI collective trademark to be awarded by a Chinese court and may serve as a precedent in future.
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.
Supreme People's Court accepts New Balance's retrial application in invalidation action against copycatsChina | 12 March 2018
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.