Wanhuida Peksung updates

Relationship between new Anti-unfair Competition Law and Paris Convention: continuation of use
Wanhuida Peksung
  • 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
  • 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
  • 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
  • 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
  • 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
  • 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
  • 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
  • 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
  • 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
  • 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.

Keemun GI certification trademark invalidated
Wanhuida Peksung
  • Intellectual Property
  • China
  • 18 June 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
  • 11 June 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
  • 30 April 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
  • 23 April 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
  • 16 April 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
  • 02 April 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
  • 26 March 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
  • 19 March 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
  • 12 March 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
  • 05 March 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.

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