Wanhuida Peksung IP Group updates

Regulations clarify new agencies' roles following institutional IP reform
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 10 December 2018

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.

SPC's retrial ruling for Christian Dior's 3D mark encouraging, but ambiguities remain
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 03 December 2018

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.

Beijing IP Court enlists jurors with technical expertise in patent administrative proceedings
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 19 November 2018

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.

Balancing patent protection and disclosure
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 12 November 2018

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.

TRAB releases analysis of its decisions that were overruled in 2017 court proceedings
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 05 November 2018

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.

Submission of supplementary experimental data in patent practice
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 22 October 2018

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.

Official fees for patent applications cut
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 15 October 2018

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.

Customs seizure of patent-infringing products
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 08 October 2018

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.

Beijing High Court applies strict criteria regarding trademark use evidence
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 01 October 2018

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.

Outlook for IP and brand owners in the context of China's institutional reform
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 24 September 2018

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.

Relationship between new Anti-unfair Competition Law and Paris Convention: continuation of use
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 17 September 2018

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.

Relationship between new Anti-unfair Competition Law and Paris Convention: legal liability
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 10 September 2018

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.

Relationship between new Anti-unfair Competition Law and Paris Convention: misleading publicity
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 03 September 2018

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.

Relationship between new Anti-unfair Competition Law and Paris Convention: other acts of confusion
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 27 August 2018

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.

Relationship between new Anti-unfair Competition Law and Paris Convention: websites and domains
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 20 August 2018

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.

Relationship between new Anti-unfair Competition Law and Paris Convention: trade names
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 06 August 2018

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.

Relationship between new Anti-unfair Competition Law and Paris Convention: uniqueness
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 30 July 2018

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.

Relationship between new Anti-unfair Competition Law and Paris Convention: misleading consumers
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 16 July 2018

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.

Relationship between new Anti-unfair Competition Law and Paris Convention: general principles
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 02 July 2018

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 necessary
Wanhuida Peksung IP Group
  • Intellectual Property
  • China
  • 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.

Current search