When goods are manufactured in China by an original equipment manufacturer factory for export, the foreign buyer is not always the owner in China of the trademark that is affixed on the goods. But what if the trademark is registered in the name of a third party and such third party decides to sue the factory for infringement and stop the export of the goods? This is a long-debated question of which the courts have demonstrated different understandings.
A recent Supreme People's Court (SPC) decision clarified the requirements to cite the prior use defence under Article 59.3 of the Trademark Law. In this regard, the court stated that the only person eligible to cite this defence is the prior user themselves and that such use must have occurred prior to the registration application and the trademark owner's use of the registered trademark. Further, for the first time, the SPC made it clear that geographical scope is a key element in defining the original scope of use.
Geographical indications identify goods as originating from a certain region or locality, where a given quality, the reputation or another characteristic of the good is essentially attributable to the natural or humanistic features of the indicated place. However, if an indication is accredited as a geographical indication in its country of origin, is this sufficient for it to be granted protection in China without being registered as a trademark?
Claims are technical solutions seeking protection and should be a generalisation of the content sufficiently disclosed in a patent description. However, poorly drafted claims that include inappropriate generalisations risk being unsupported by their description. When ascertaining whether a claim of medical use invention is supported, it is crucial to reasonably interpret the scope of the claim.
The State Administration for Market Regulation recently published Certain Provisions for Regulating Applications for Trademark Registration. The new regulations set parameters for determining bad-faith practices and bad-faith applications for trademarks that are not intended for use. They also introduce procedures and countermeasures for identifying not only bad-faith applications, but also perpetrators (ie, bad-faith applicants), facilitators and enablers (ie, unethical trademark intermediaries).
In China, the practice of defensive trademarks appears to be a guiding factor when determining the legitimacy of a trademark application, but said trademarks remain subject to cancellation in case of non-use. The main challenge is the bad-faith strategy of applying to register many different trademarks without the aim of using them. In this respect, the recent revision of the Trademark Law gives hope that such a highly prejudicial phenomenon will be progressively eradicated.
Drug invention patents protect multiple types of invention, including compounds, crystal forms, dosage forms, preparation methods and uses. Nonetheless, in practice, it is difficult to patent improvement drug inventions in China. In proving the patentability of such an invention, patentees often face difficulties in establishing its non-obviousness (inventiveness).
The Trademark Review and Adjudication Board (TRAB) has released analysis of its decisions that were challenged before the courts in 2018. In addition to this analysis, the TRAB has provided comments on the admissibility of evidence in cancellation cases based on non-use for three consecutive years. This article provides an in-depth overview of the TRAB's findings.
So-called 'notorious markets' are markets which are well known for selling counterfeit products, often to tourists and visitors looking for good deals on famous branded products. Brand victories in the fight against physical market sellers and landlords selling counterfeit goods are all too rare. However, there are a number of practical strategies that can be employed to maximise success in the battle against counterfeits.
The Beijing High Court recently published an extensive set of guidelines on administrative trademark cases, which are divided into two parts: procedural issues and substantive matters. Although the guidelines clarify a number of matters (eg, the possibility of bringing an action against a ruling of the National Intellectual Property Administration when such ruling was remade in accordance with an effective court judgment), they contain a number of unpleasant surprises.
China has followed the global trend of protecting graphical user interfaces (GUIs) by acknowledging them as patentable designs in its amended Patent Examination Guidelines. However, under the Patent Law, designs are patentable only when filed together with a product which embodies the design. Since GUIs and software per se are not recognised as products, GUI patentees are faced with a dilemma if they attempt to challenge software developers for merely offering software which exploits their patented GUI design.
Offering to sell is an independent act of patent exploitation. However, it is not necessarily established on the premise that the product is physically manufactured or actually sold. In this context, the Beijing Intellectual Property Office recently had to consider how to determine whether an accused drug falls within the protected scope of a patent, without appraising a physical product, and the criteria needed to determine whether a product is being offered for sale.
In 2019 the Trademark Law was rapidly revised without public consultation. This revision, which was relatively limited, aimed to address the problem caused by trademark applications made in bad faith and without the intention to use and to increase the powers of the courts in judicial enforcement. This article analyses what remains to be done and what a fifth revision of the Trademark Law should cover.
The China National Intellectual Property Administration has released the Draft Amendment to the Patent Examination Guidelines. The draft proposes revisions to both substantive and procedural aspects in preliminary examination, substantive examination and invalidation proceedings regarding patents. This article analyses the major proposed changes to patent examinations.
In patent infringement disputes, it is possible to narrowly construe a feature to the specific embodiment and its equivalent embodiment by arguing that a claimed feature is a functional one. The accused infringer usually adopts this strategy in its non-infringement defence to narrowly construe the scope of patent protection to obtain a favourable position in the infringement comparison. A recent case serves as a reference on how to determine the functional features in patent infringement disputes.
No one wants to associate toothpaste with insect repellent, but this can happen if the same names and images have been trademarked in different classes of goods. This was the situation in which Hawley & Hazel (H&H) found itself with regard to its toothpaste brand Darlie. After Guangzhou Heiren filed the same iconic image associated with Darlie and the trademark DARLIE in several classes, H&H initiated copyright infringement and bad-faith registration claims.
The revision of the Anti-unfair Competition Law is part of the new effort to enhance the protection of intellectual property in China. It also reflects the ongoing negotiations between China and the United States on various topics, including IP protection. The revisions provide (among other things) a wider definition of a 'trade secret' and introduce the concept of punitive damages and the inversion of the burden of proof.
In 2018 the China Trademark Office launched a consultation for the fourth revision of the Trademark Law, which will enter into force in November 2019. The revision focuses on two important issues: the proliferation of trademarks, which was one of the main issues on which comments were submitted, and enforcement actions against infringers, which are considered insufficiently deterrent. As the new law was promulgated in such a hurry, further explanation and information on how it will be implemented is necessary.
The State Council recently amended the Regulations on the Administration of Technology Import and Export. The previous regulations, which had been in force since 2002, contained provisions pertaining to patented technologies and technological secrets which directly contradicted the Contract Law 1999. As such, they had been the subject of numerous complaints from the foreign business community.
A recent case concerning a culinary utensil invention may serve as a point of reference in assessing technical teaching. In practice – particularly in cases involving machinery – even though a structure extracted from prior art is identical or similar to a technical feature of a patent claim, a technical teaching could be erroneously derived if the structure's effect is considered based only on the extracted structure alone and not the effect that the structure achieves within the whole context of the invention.