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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.