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.
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.