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).
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.
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.
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.
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.
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 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.
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.
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 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.
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 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.
In 2016 the State Administration for Industry and Commerce published its Opinion on Pushing Forward the Reform to Facilitate Trademark Registration Procedure, making such reform its priority for 2016 and 2017. The opinion is intended to broaden the scope of external trademark examinations and addresses outsourcing, the application procedure, registration certificates, the online and sole-examiner systems, information availability and classification.
China's quality watchdog, the General Administration of Quality Supervision, Inspection and Quarantine, has promulgated its long-awaited Measures on the Protection of Foreign Geographical Indications Products. The new measures stipulate rules for the application, examination, approval, supervision and opposition of registrations, and were inspired by the precedent opinions on domestic geographical indication registrations.
The IP Rights Tribunal recently upheld its first-instance ruling in a decision over the manufacture and sale of counterfeit packaging for food seasoning. Highlighting the advantages of China's new three-in-one IP practice, the tribunal defined the boundary between 'counterfeiting registered trademarks' and 'selling illegally manufactured representations of registered trademarks' and identified the circumstances for complicity.
A recent trademark infringement case demonstrates that evidence of establishment and prior use of a business and trade name is sufficient against claims of similarity. This case analyses and clarifies the period and range of prior use, as well as the term 'certain influence', and serves as a point of reference for similar cases.
In an ongoing infringement and unfair competition dispute regarding the computer games World of Warcraft and Warcraft of the State, the Guangzhou IP Court recently granted an injunction to be enforced until the date on which the final judgment takes effect. The injunction prevents the operation and distribution of the defendants' computer game on the grounds that it would reduce market shares and harm the plaintiffs' business reputation.
The Beijing High People's Court recently upheld a decision to prohibit further production or distribution of a television series that was found to constitute copyright infringement. The decision highlights the purpose of the Copyright Law to protect original works and the judiciary's policy to enhance IP protection, after the court explained the methodology for finding 'material similarity' between literary works and instructed on differentiating an idea from an expression.
The Supreme People's Court recently determined that the naming of apartment blocks as 'Star River Garden' constituted infringement due to a likelihood of confusion. The court did not order a complete prohibition against use of 'Star River Garden', but ruled that buildings yet to be developed and sold must not use the name. The verdict protected the trademark owner's interests to the extent allowed by the law, while minimising the harm against the public interest.
The Shanghai High People's Court recently upheld a first-instance judgment dismissing an appeal to invalidate a conflicting exclusive trademark licence, despite finding that the defendant was not a third-party licensee acting in good faith. The court found insufficient evidence of conspiracy or intent to damage the claimant's interests and upheld the contractual right of both parties to use the disputed trademark.
The Beijing IP Court recently established an internal Speedy Trial Panel for administrative litigation cases concerning the review of trademark application refusals. Trademark applicants can now apply to the court for a summary procedure, which will halve their legal fees and allow them to adduce evidence at the court hearing. This procedure will greatly improve the court's trial efficiency, allow judges to gain a full understanding of a case's background and be more convenient for involved parties.
The Shanghai High People's Court recently issued a new regulation introducing some noteworthy changes regarding jurisdiction over civil IP cases in Shanghai. Under the new regulation, some high-level patent cases must bypass the first-instance jurisdiction of the IP courts and be heard directly by the high court. However, questions have arisen over whether this exception is compatible with the Supreme People's Court provisions on the IP courts' jurisdiction.
The State Administration for Industry and Commerce's Interim Measures for the Administration of the List of Businesses Seriously Violating the Law and Becoming Discredited recently took effect. Of the 10 circumstances listed in the interim measures in which a business can be deemed to have seriously violated the law, three pertain to trademark and unfair competition law. Blacklisted businesses will be a target for supervision and administration and will incur various penalties.
In April 2016 the Beijing High People's Court published the Guidelines for the Adjudication of Network-Related IP Cases in a bid to address various issues arising from the adjudication of network-related copyright, trademark and unfair competition cases. While the guidelines are useful for rights holders dealing with a small number of infringement cases, they are less effective for dealing with the high number of cases faced by most Chinese rights holders.
The Jiangsu High Court has issued a significant decision in an original equipment manufacturer (OEM) export case, overturning the non-infringement judgment of the Changshu Intermediate Court and finding that the OEM manufacturer's activities constituted trademark infringement. According to the court, whether OEM export constitutes trademark infringement should be decided on a case-by-case basis.
The courts have extended the cross-category protection of the trademark 华素 by finding "toothpaste, etc" in Class 3 to be similar to "medicines for human purposes" in Class 5 based on the high distinctiveness and public awareness of the opponent's trademarks, as well as on market realities. The case related to over-the-counter medication used to treat pharyngitis and canker sores.
The Beijing High Court has confirmed that a single, symbolic use of a trademark for the mere purpose of maintaining its registration cannot protect the mark against cancellation. The case concerned an individual who had filed more than 50 trademarks that were either identical or similar to well-known third-party trademarks.
The Supreme People's Procuratorate has released some statistics on IP rights-related crimes for the first half of 2013. The statistics show a year-on-year growth in IP rights-related crimes, with trademark-related crimes accounting for 80% of the total number of cases. Furthermore, IP rights-related crimes are more often committed by natural persons in economically developed regions.
The Hangzhou Internet Court was recently inaugurated. It has first-instance jurisdiction over a range of disputes, including contract disputes arising from online shopping services and small loans, disputes over internet copyright ownership and infringement, and product liability claims for goods purchased online. This move comes after the Supreme People's Court piloted a programme in May 2017 which granted the Hangzhou Railway Transport Court jurisdiction over five categories of internet-related civil cases.