Wanhuida Peksung IP Group
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
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.
Trademarks comprising different letters may still cause confusion and thus constitute similar trademarksChina | 08 January 2018
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.
In upholding a recent opposition action against a mark that was filed in bad faith, the China Trademark Office (CTMO) cited, among other things, an administrative decision issued by a local administration for industry and commerce and the bona fide doctrine. The CTMO's citation of the latter is unusual, as while the doctrine is customarily perceived to be a general principle, its direct citation remains controversial.
In 2014 the Beijing Number 3 Intermediate People's Court found that the label, bottle shape and packaging of Sumai Regal whisky were similar to the trademarks registered for Chivas Regal whisky and thus constituted trademark infringement. The Beijing High People's Court recently upheld the first-instance court's finding of infringement, but based its decision on different reasoning.
The State Intellectual Property Office recently announced the latest Patent Prosecution Highway (PPH) programme developments – namely, the relaxation of the PPH requirements regarding some of the Patent Cooperation Treaty international work products and the introduction of a new PPH pilot programme between China and Egypt. This will assist in the acceleration of examination for applicants' corresponding Chinese patent applications.
The Patent Re-examination Board recently overturned the rejection of a patent application relating to a transgenic aloe plant that was based on insufficient disclosure. The board stated that if those skilled in the art, based on the description and the prior art, could perform the claimed technical solution, solve the corresponding technical solution and produce the expected technical effect, the description sufficiently disclosed the invention.
The Changsha Intermediate Court recently provided the first trademark infringement decision in Hunan Province against products which have had their lot numbers removed. This was not a simple case. Pursuant to existing laws and regulations, the act of parallel import is not illegal. However, the court found that the act of the removal of the lot number and the unauthorised use of the trademark constituted an act of infringement as defined by the Trademark Law.
Since 2008, the development of intellectual property has become a national priority in China. The volume of trademark applications has consistently grown over the past 15 years and reached 3.69 million in 2016. One of the consequences of this growth is the proliferation of so-called 'pre-emptive trademark applications', filed in bad faith. The Chinese government is becoming increasingly aware of this problem.
In a recent case, the Beijing High Court applied Articles 13.1 and 31 of the Trademark Law 2001 to grant full protection to an unregistered trademark and clarified the assessment criteria of well-known status in the internet industry. When an unregistered trademark is confronted with the obstacle of a prior application or registration and the holder wishes to overcome this obstacle, Articles 13.1 and 31 can be cited.
The Beijing High People's court has held that although the software program PowerPoint is well known by the public, this has not weakened the connection between the product and the trademark owner Microsoft Corporation. Instead, its reputation has strengthened its connection as a Microsoft product. The word 'PowerPoint' functions as an identifier of services and is registrable as a trademark.
Likelihood of confusion and dilution clarified in Supreme People's Court interpretation of Trademark LawChina | 26 June 2017
The Supreme People's Court recently adopted the Provisions on Several Issues Concerning the Hearing of Administrative Cases Involving the Granting and Affirmation of Trademark Rights, which became effective in March 2017. These long-awaited provisions concern the revised Trademark Law, which opens up new horizons and settles old divergences.
After initiating a criminal action against an individual trademark counterfeiter, the plaintiff in a recent case filed a follow-up civil lawsuit against the counterfeiter and his company on the grounds of trademark counterfeiting and trade dress infringement. Through this civil lawsuit, the plaintiff stopped the trade dress infringement and put greater pressure on the counterfeiter.
General Mills Asia, owner of the trademark WANCHAI FERRY (in Chinese characters), recently obtained a victory against a trademark squatter before the Beijing Higher Court. The court affirmed the well-known status of the cited trademark and adopted the dilution theory to reject the bad-faith applications of the opposed trademarks.
The Beijing IP Court recently invalidated a copycat of the unregistered French geographical indication Margaux in China. In doing so, the court invoked Articles 10.2 (which prohibits a foreign geographical name known to the public from being registered as a trademark) and 10.1.8 (which prohibits a mark which has an unhealthy influence from being registered as a trademark) of the Trademark Law 2001.
The State Intellectual Property Office (SIPO) recently issued its amended Patent Examination Guidelines, which will take effect on April 1 2017. A draft was released in October 2016 for public comment and some changes have been made to the final text. The amendments reflect the SIPO's increasingly applicant and patentee-friendly attitude and its desire to provide a better service to the public.
Some online infringers sell a mix of counterfeit and genuine products as a cover for their infringing activity. Such behaviour can cause significant issues for rights holders, as it enables the infringer to circumvent their anti-counterfeiting efforts by making use of their genuine products. This was demonstrated in a recently settled case, in which online sellers filed civil litigations against a rights holder and supplied source evidence for some genuine versions of the counterfeit products that they had sold.
The recognition of three-dimensional mark infringement is highly controversial when the mark is also a bottle shape, as consumers – as well as some people's courts – tend to treat bottles as containers or packaging, rather than trademarks that can indicate the product's source. In a recent case, Chivas Holding (IP) Limited was able to prove that consumers treat the Royal Salute bottle as a trademark and can distinguish Royal Salute products from others by the shape of the bottle alone.
The Judicial Committee of the Supreme People's Court recently adopted final draft trademark provisions following a consultation process. The provisions introduce useful guidance for the Beijing IP Court (first instance) and the Beijing High Court (second instance) in relation to appeals filed against decisions of the Trademark Review and Adjudication Board.
A complaint relating to graphical user interfaces (GUIs) was recently filed with the Beijing IP Court. This is the first Chinese case relating to GUIs since they were acknowledged as patentable designs in 2014. The court's judgment should clarify issues such as the determination of a GUI infringement and the calculation of compensation.
In principle, registered trademarks should be used in the exact form in which they were registered. However, occasionally a rights holders may alter its registered mark (eg, where there is a change in branding or shifting market needs). Unfortunately, this is not risk-free. If a registered trademark is altered in such a way that its distinctive features change, the rights holder could lose its right to the mark or be unable to enforce it.
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 Supreme People's Court recently published its opinion on how to promote the 'three-in-one' system for civil, administrative and criminal cases involving IP rights in courts nationwide. The development of the three-in-one system is a positive and welcome step. However, the development of the basic people's court having first-instance jurisdiction over ordinary IP rights cases will have significant consequences that are worth examining.
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.
Patent Re-examination Board recognises breakthrough technology for first time in patent invalidation proceedingsChina | 16 January 2017
The patent for SEB SA's Actifry product – a fryer that can automatically coat food with oil – has been the subject of numerous invalidation requests. In a September 2015 decision, the Patent Re-examination Board recognised the invention as a technological breakthrough and maintained the patent's validity. According to publicly available records, this was the first time that the board based its decision in a patent invalidity proceeding specifically on the concept of breakthrough technology.
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.
It can sometimes be difficult or even impossible for a rights holder to obtain qualified evidence of infringement or the amount of damages that it has incurred. However – as demonstrated by a recent Taizhou Intermediate Court case – where evidence is likely to be destroyed or difficult to obtain in future, the party concerned can apply to the court to preserve evidence during the trial.
A trademark application can be filed directly with the China Trademark Office (CTMO) or extended to China via the Madrid System for the International Registration of Marks. While both options have their pros and cons, applications filed with the CTMO seem to have a slight advantage overall, particularly regarding application amendments, examination times, trademark enforcement and the extension of a trademark to similar products and services.
Tech, Data, Telecoms & Media
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.