Wanhuida Peksung updates

Relationship between new Anti-unfair Competition Law and Paris Convention: misleading consumers
Wanhuida Peksung
  • Intellectual Property
  • China
  • July 16 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
  • Intellectual Property
  • China
  • July 02 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
  • Intellectual Property
  • China
  • 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.

Keemun GI certification trademark invalidated
Wanhuida Peksung
  • Intellectual Property
  • China
  • June 18 2018

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.

How to be more strategic in your fight against bad-faith filing
Wanhuida Peksung
  • Intellectual Property
  • China
  • June 11 2018

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.

Damages awarded in patent infringement case beyond statutory limit
Wanhuida Peksung
  • Intellectual Property
  • China
  • April 30 2018

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.

Proving copyright ownership in trademark disputes
Wanhuida Peksung
  • Intellectual Property
  • China
  • April 23 2018

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.

Is your trademark a word mark, a device mark or both?
Wanhuida Peksung
  • Intellectual Property
  • China
  • April 16 2018

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.

GI collective trademark granted judicial protection for first time
Wanhuida Peksung
  • Intellectual Property
  • China
  • April 02 2018

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.

Shanghai court renders first criminal ruling on GI collective trademark
Wanhuida Peksung
  • Intellectual Property
  • China
  • March 26 2018

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.

SAIC statistics and new initiatives on trademark practice
Wanhuida Peksung
  • Intellectual Property
  • China
  • March 19 2018

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 copycats
Wanhuida Peksung
  • Intellectual Property
  • China
  • 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.

Supreme Court increases compensation for IP rights infringement
Wanhuida Peksung
  • Intellectual Property
  • China
  • March 05 2018

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.

Exception to safe harbour principle
Wanhuida Peksung
  • Intellectual Property
  • China
  • February 26 2018

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.

Court sanctions transformation of registered trademark into infringing trademark
Wanhuida Peksung
  • Intellectual Property
  • China
  • February 19 2018

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.

New patent practice for computer programs
Wanhuida Peksung
  • Intellectual Property
  • China
  • February 05 2018

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.

Fendi successfully fights unauthorised use of trademark
Wanhuida Peksung
  • Intellectual Property
  • China
  • January 29 2018

TRAB launches online database of decisions
Wanhuida Peksung
  • Intellectual Property
  • China
  • January 22 2018

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.

How will the new Anti-unfair Competition Law affect your intellectual property?
Wanhuida Peksung
  • Intellectual Property
  • China
  • January 15 2018

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 trademarks
Wanhuida Peksung
  • Intellectual Property
  • China
  • 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.

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