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
IT & Internet
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.
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 | June 25 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 | March 12 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 | January 08 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 | June 26 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 | January 16 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.
As in most countries, registration is the quickest and most cost-effective way to obtain trademark protection in China. However, a party may occasionally fail to register a trademark and another party may file or register the same trademark. If the owner of the unregistered trademark has no prior right that could invalidate the opposing trademark, there are still several options available.
While design patents can easily be obtained in China, precautions must still be taken – particularly before filing an application. Two recent high-profile cases involving foreign companies provide an opportunity to reflect on such precautions and consider how innovation-driven businesses should tailor their design patent filing strategies to guarantee protection.
An online vendor selling genuine Avène products while claiming that its platform was the official Avène website was recently found to have committed an act of unfair competition. The court held that although the website had offered genuine products, its prominent use of the plaintiff's registered trademarks and its self-identification as Avène's official website would likely lead the public to believe that its website was operated or licensed by the plaintiff, thus giving it unfair competition advantages.
In March 2016 the State Council Legislative Affairs Office released a second draft of the revised Anti-unfair Competition Law, which brings welcome changes for rights holders. The revised law amends the IP infringement acts that constitute unfair competition, including use of another party's 'business identifier' and trademark and trade secret infringement. The revised law also significantly increases the level of fine that can be awarded to infringing parties.
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.
Court considers Michelin's reputation in evaluation of trademark similarities and likelihood of confusionChina | June 13 2016
The Supreme People's Court recently ruled in Michelin that reputation is a factor when evaluating trademark similarities and the likelihood of confusion. In its bold decision to raise Michelin's compensation to Rmb500,000 – the maximum amount allowed under the Trademark Law – the court considered the high reputation of the infringed trademarks, in addition to the elements of the combination marks and the infringers' bad faith.
The Chongqing First Intermediate Court recently applied Article 63.2 of the Trademark Law in its determination of damages, in another exemplary case of a court ordering the defendant to produce evidence showing the scope of its activities. The decision confirms that if a defendant refuses to produce accounts or produces accounts that cannot be verified, the consequences can be serious.
The Trademark Review and Adjudication Board has ruled that STIHL's orange and grey colour combination mark is registrable in China, since it has acquired distinctiveness through long-term, extensive use. The case demonstrates the arduous task faced by applicants in proving that colour combinations have acquired secondary meaning through extensive use and advertisement.
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.
For the first time, a colour combination trade dress has been granted judicial protection – before being registered as a trademark – as a 'specific trade dress of a famous commodity' under the Anti-unfair Competition Law. The court concluded that STIHL's long-term and extensive promotion and use of the orange and grey colour combination on its famous chainsaw products made it distinctive enough to serve as a source identifier.
According to the 'inclusive development' theory, when two similar trademarks have coexisted for some time and are both successful, they should continue to coexist, regardless of whether the first trademark owner agrees. The Supreme People's Court has developed this theory through two of its guiding opinions; however, a recent retrial judgment by the court seems to suggest a change in practice.
In a recent trademark infringement case, the Zhejiang High Court rejected the infringing company's defence based on its business success, penalised it for refusing to disclose its accounts and awarded the plaintiffs Rmb3.5 million in damages – far exceeding the statutory limit provided under the Trademark Law. The case arose from a suit filed by US multinational 3M and its Chinese subsidiary.
The Supreme People's Court recently rendered a judgment which ended the four-year legal battle over the PRETUL trademark. The case centred on a trademark infringement suit brought against an original equipment manufacturer for exported products. However, the court's decision raises many questions. Was it a strategic choice, aiming to boost Chinese exports by any means necessary – even at the cost of trademark protection?
The China Trademark Office (CTMO) has refused registration of the marks LAFARGE and LAFARGE (in Chinese characters), citing the prior trade name rights of Lafarge SA, one of the world leaders in the building materials industry. The CTMO took particular account of the originality and high reputation of Lafarge's prior trade name and the close association of the designated goods with Lafarge's products.
The Trademark Review and Adjudication Board (TRAB) has ruled in favour of US singer Taylor Swift in a dispute involving another party's registration of the trademark TAYLOR SWIFT. The TRAB held that the evidence provided by Swift proved that 'Taylor Swift' is the name of a US singer and that, as a natural person, she had the right to claim protection of her personal name.
The Supreme People's Procuratorate and the Baiyun District Court have adopted the opinion of the brand owner in a criminal case with regard to the calculation of a trademark counterfeiter's illegal turnover. The case demonstrates the importance of the IP owner's active participation in criminal proceedings. In light of the input and involvement of the brand owner, the court imposed a heavier penalty on the counterfeiter.
The China Trademark Office (CTMO) has upheld an opposition against a trademark application filed by a company affiliated with the distributor of the opponent, citing Article 15.2 of the new Trademark Law. The CTMO applied the new law even though the opposition referred to the former version of Article 15. By doing so, it indirectly clarified an apparent contradiction in terms used.
In a recent decision the Trademark Review and Adjudication Board recognised that trademark use within the original equipment manufacturer (OEM) context constitutes effective use as defined by the Trademark Law. As long as the evidence of use forms a complete evidence chain, OEM activities will suffice to maintain a registered trademark.
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 Number 1 Intermediate People's Court has recognised that the geographical indications 'Champagne' and '香槟' ('Champagne' in Chinese) should be protected, even though they were not registered in China at the time that the case was filed. The judgment will constitute an important reference in future cases where a geographical indication owner has not yet registered IP rights in China.
The Trademark Review and Adjudication Board has found that scupper hoses in Class 17 are similar to shower pipes in Class 11 with respect to their usage, function, target consumers and sales channels. The case concerned a registration for the mark MOEN for scupper hoses, which was opposed by Moen Incorporated on the grounds of its prior marks designating showers, bath basins, sinks, taps and drainpipes for bath basins.
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 State Council has launched the Action Plan for the Further Implementation of the National Intellectual Property Strategy for the period from 2014 to 2020. In particular, by 2020 the government intends to reach a "relative high standard for innovation, utilisation, protection and management of intellectual property rights".
Recent invalidation proceedings before the Supreme Court have shown that evidence submitted at the retrial stage can be taken into consideration. The case, which involved Lacoste's crocodile device trademark, should encourage brand owners to file decisive new evidence at any stage of the judicial review procedure.
The registration of a word mark that is identical or confusingly similar to the name of a celebrity – and thus causes confusion and mis-identification among consumers – falls under Article 32 of the Trademark Law, which states that an application for registration must not infringe another person's prior rights. Actress Nicole Kidman recently obtained cancellation of the trademark NICOL KIDMAN on these grounds.
In criminal IP proceedings, the Chinese courts tend not to accept a civil claim collateral to criminal proceedings filed simultaneously by the victim IP owner. Therefore, in criminal proceedings the victim and the infringer should seek to reach an agreement on damages through negotiations, since it will help the victim to obtain compensation and the infringer to obtain a commuted sentence.
It is not easy to register and protect a three-dimensional (3D) trademark in China. However, in a recent case involving The Absolut Company a two-dimensional trademark registration which represented a bottle was successfully used as a 3D trademark covering the shape of the bottle. This is an exemplary case which may serve as a model for the future.
SEB recently obtained favourable rulings in two disputes against infringers who exploited an invention for which SEB had filed a patent application. The exploitation started after publication of SEB's patent application, but before grant of patent. SEB filed suit for damages covering the period following grant of the patent and for a 'reasonable fee' covering the period preceding grant of the patent, pursuant to Article 13 of the Patent Law.
The newly amended Trademark Law and its implementing regulations recently entered into force. The implementing regulations provide welcome clarifications of the Trademark Law's new provisions on substantial, procedural, administrative and enforcement matters. However, certain ambiguities and discrepancies remain.
According to the 'first-sale' doctrine, trademark rights are exhausted once the product has been sold on the market by the trademark owner or with the trademark owner's consent; the trademark owner cannot prevent further distribution of the product. In a recent case involving altered Zippo lighters, the main issue was whether the defendant could invoke this doctrine as a defence. The court's decision was not an obvious one to make.
A local retailer of parallel-imported spirits, the identifier code of which had been removed, was recently found guilty of trademark infringement and unfair competition, on the grounds that the removal of the identifier code had compromised the source-identifying function of the trademark. This violated the consumers' right to know the origin of the products and interfered with the trademark owner's control of product quality.
The Beijing Higher Court has held that the distinctiveness of a trademark consisting of foreign words should be assessed on the basis of the general knowledge of the relevant public. The case concerned L'Oréal's application to extend protection of its CHROMA RICHE mark for haircare products to China.
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.
A recent decision shows that where an offender simultaneously commits the crimes of IP rights infringement and the manufacture and distribution of fake and inferior goods, he or she will be convicted of the crime for which the punishment is harshest. The case stems from a raid resulting in the seizure of large amounts of counterfeit alcohol bearing the marks JACK DANIEL'S and HENNESSY, among others.
Zippo Manufacturing Company owns a registration for the trademark ZIPPO in China, covering lighters and related goods. However, the limited scope of the designated goods was seen by infringers as an opportunity to free-ride on Zippo's significant brand power. A recent case regarding this mark reflects the variety of legal means that are available to trademark owners when they are faced with bad-faith applications.
A recent decision of the Trademark Review and Adjudication Board confirms that a pseudonym, as an expression of the name of a natural person, may in certain circumstances be considered as a prior right under the Chinese Trademark Law and enforced as such. This case involved Francisco Rabanne Cuervo, a famous Spanish fashion designer who has been using the pseudonym Paco Rabanne for many years.
When examining opposition proceedings, the China Trademark Office (CTMO) generally considers only the opposed trademark and the cited trademark. However, two recent cases show that the CTMO may take other trademark applications filed by the applicant into consideration when assessing the situation and deciding on the opposition.