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.
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.
Registering a three-dimensional (3D) trademark is difficult and the Chinese courts have failed to develop reliable jurisprudence on this matter. However, a recent Trademark Review and Adjudication Board decision concerning the world-famous Little Trees car air fresheners reaffirms the registrability and inherent distinctiveness of 3D marks that comprise the unusual shape of a product.
Sources indicate that the Beijing High Court recently released the Provisions on the Adjustment of the Courts' Jurisdiction over Civil IP Cases in Beijing. The new provisions outline the jurisdiction of the Beijing High Court, the Beijing IP Court and the lower-level Beijing courts and abolish the Provisions on the Jurisdiction over First-Instance Civil IP Disputes Heard by People's Courts at Various Levels in Beijing 2008.
The Supreme People's Court recently reversed a Guangdong High Court judgment and held that the trademark and packaging used on a product may constitute separate IP rights. The case serves as a reminder that where products are sold by a licensee in packaging which differs from that of the licensor, the licensee can claim independent IP rights. The licence agreement should therefore provide that on termination any packaging rights will remain attached to the trademark.
There are a number of tips that patentees should follow in order to enhance their patent's strength and give greater protection to their inventions. For example, patent claims should cover as many direct infringers as possible, defence claims should include as many specific features as possible and patent claims should not include any process features.
The Beijing High People's Court recently issued the newly revised Guidelines for Patent Infringement Determination. In addition to the comprehensive rules on patent interpretation, the determination of what constitutes patent infringement and the defence of patent infringement, the guidelines also provide rules on some much-discussed issues for the first time, such as standard-essential patents and graphical user interface designs.
A Swiss-type claim allows applicants to seek protection for a new medical use of a known substance. Although such a claim may make the subject matter of the second medical use patentable, attention should be paid to which features may contribute to the prior art. The Supreme People's Court recently clarified that use features which do not relate to the manufacture of a medicament cannot be taken as having a restrictive effect on or making a contribution to such a medical use when compared with the prior art.
The State Intellectual Property Office (SIPO) recently released the new Administrative Measures for the Prioritised Examination of Patents, which took effect on August 1 2017. Applicants in China and abroad, as well as other relevant parties, can take advantage of the measures to obtain the examination results of relevant patent applications or patents more quickly. The new measures represent the SIPO's efforts to foster the development of an innovative economy.
The State Administration for Industry and Commerce recently published the Rules on the Prohibitions and Restrictions for Enterprise Name Registration and the Rules on the Criteria for Finding Enterprise Names Identical or Similar. Both documents aim to regulate the examination of enterprise names during registration in order to establish a method of comparison and provide convenience for applicants.
A recent case before the Guangzhou IP Court concerned the principle that a design must display a fundamental level of intellectual creativity in order to be copyrightable as a work of art. Mao Jihong claimed that he owned a copyrighted design comprising a reversed version of the word 'exception'. However, the court held that it was essentially the expression of an idea as much as a design, and therefore demonstrated little originality in expression and no aesthetic value as fine art.
In a trademark battle involving Swiss fashion company AKRIS Prêt-à-Porter AG, Akris had to change its litigation strategy in the second-instance proceedings by shifting the focus from its prior registration, which had ceased to exist, to the bad faith of the owner of the opposed trademark. The case, which took 12 years to resolve, was recently selected as one of the Beijing IP Court's 18 exemplary cases concerning bad-faith trademark filing.
In upholding a recent opposition action against a mark that was filed in bad faith, the China Trademark Office (CTMO) cited, among other things, an administrative decision issued by a local administration for industry and commerce and the bona fide doctrine. The CTMO's citation of the latter is unusual, as while the doctrine is customarily perceived to be a general principle, its direct citation remains controversial.
In 2014 the Beijing Number 3 Intermediate People's Court found that the label, bottle shape and packaging of Sumai Regal whisky were similar to the trademarks registered for Chivas Regal whisky and thus constituted trademark infringement. The Beijing High People's Court recently upheld the first-instance court's finding of infringement, but based its decision on different reasoning.
The State Intellectual Property Office recently announced the latest Patent Prosecution Highway (PPH) programme developments – namely, the relaxation of the PPH requirements regarding some of the Patent Cooperation Treaty international work products and the introduction of a new PPH pilot programme between China and Egypt. This will assist in the acceleration of examination for applicants' corresponding Chinese patent applications.
The Patent Re-examination Board recently overturned the rejection of a patent application relating to a transgenic aloe plant that was based on insufficient disclosure. The board stated that if those skilled in the art, based on the description and the prior art, could perform the claimed technical solution, solve the corresponding technical solution and produce the expected technical effect, the description sufficiently disclosed the invention.
The Changsha Intermediate Court recently provided the first trademark infringement decision in Hunan Province against products which have had their lot numbers removed. This was not a simple case. Pursuant to existing laws and regulations, the act of parallel import is not illegal. However, the court found that the act of the removal of the lot number and the unauthorised use of the trademark constituted an act of infringement as defined by the Trademark Law.
Since 2008, the development of intellectual property has become a national priority in China. The volume of trademark applications has consistently grown over the past 15 years and reached 3.69 million in 2016. One of the consequences of this growth is the proliferation of so-called 'pre-emptive trademark applications', filed in bad faith. The Chinese government is becoming increasingly aware of this problem.
In a recent case, the Beijing High Court applied Articles 13.1 and 31 of the Trademark Law 2001 to grant full protection to an unregistered trademark and clarified the assessment criteria of well-known status in the internet industry. When an unregistered trademark is confronted with the obstacle of a prior application or registration and the holder wishes to overcome this obstacle, Articles 13.1 and 31 can be cited.
The Beijing High People's court has held that although the software program PowerPoint is well known by the public, this has not weakened the connection between the product and the trademark owner Microsoft Corporation. Instead, its reputation has strengthened its connection as a Microsoft product. The word 'PowerPoint' functions as an identifier of services and is registrable as a trademark.