Recently, patent examiners at the State IP Office have been increasingly focused on patentability issues, especially inventiveness. In raising objections to inventiveness, examiners usually emphasise the obviousness of the claims. This trend poses new challenges to patent attorneys and applicants. In order to address inventiveness objections, practitioners may consider using various strategies.
Under Chinese law, well-known trademarks receive special legal protection. However, a brand owner cannot unilaterally apply for a declaration that a trademark is well known under Chinese law. Such a determination can be made only in the context of administrative or judicial proceedings. An official interpretation aims to resolve the uncertainty surrounding well-known trademarks in China.
The Japanese Ministry of Trade, Economy and Industry and China's State Administration for Industry and Commerce have signed a memorandum of understanding on IP protection. Closer links are intended to foster joint efforts in areas such as trademark registration systems, the policing of counterfeit products and the prevention of unfair competition.
Legal measures are a key element of IP rights protection, but more is needed to keep a company's safeguards watertight. Businesses must take a holistic approach in developing a rights strategy that includes operational protocols and procedures, both internally and across the relevant supply chain and distribution network.
New guidelines from the Supreme People's Court include the announcement of its intention to establish special unified tribunals for IP rights disputes and a unified IP appellate court. They also encourage courts to use their powers to grant interim remedies and make substantial damages awards, confiscatory orders and other remedial measures.
The most recent revisions to the People's Republic of China (PRC) Patent Law were passed to bring the law further into line with international standards and other PRC regulations. The recent revisions are also part of a national strategy to assist Chinese companies move towards greater innovation and to strengthen China's legislative and enforcement framework for the protection of IP rights.
The Supreme People’s Court has issued for public consultation a new draft of the Interpretation of Several Issues Regarding Application of Laws in Recognition and Protection of Well-Known Trademarks in Trademark-Related Civil Disputes for public consultation. It aims to set the criteria for the recognition of well-known trademarks and to standardize the remedies available for trademark owners.
A Chinese firm has won a patent infringement case against Schneider Electric and its Chinese distributor. The damages award - the equivalent of $48.6 million - is the largest issued in a patent infringement case in China and should encourage both Chinese and international companies investing in research and development in China.
A ruling in favour of auction house Sotheby's will help to prevent Chinese companies from hijacking the names of well-known international enterprises. It is also a reminder to multinational companies operating in China that they should develop a Chinese version of their foreign brand and apply for registration as a defensive measure, regardless of whether they intend to adopt a bilingual branding strategy.
A new interpretation from the Supreme People's Court particularly targets companies that register company names which are identical or similar to well-known trademarks or other prior registered trademarks. Although prevention is generally thought to be more effective than cure, the court's clarifications provide owners of registered trademarks with additional judicial protection.
The upcoming Beijing Olympics and China's track record on counterfeit goods have spurred the government to address concerns about piracy of the Olympic ensignia and the 2008 Beijing Olympics mascots. The government has teamed up with the World Customs Organization to launch a new anti-counterfeiting operation which will focus efforts to protect the marks associated with the Olympic Games.
A court's decision to order a French company to pay over Rmb334 million in damages for patent infringement - reportedly the largest amount ever awarded in an IP case in China - has attracted much attention. Although the case is relatively unusual in having a Chinese plaintiff, such cases are becoming more common as Chinese companies move up the value chain and increasingly become IP owners.
China's economic growth has been matched by a dramatic rise in trademark registrations - the Trademark Office receives the highest number of trademark registration applications in the world. A vast backlog of work, systemic inefficiencies and a desire to harmonize the law with the Singapore Treaty on the Law of Trademarks have prompted draft changes to the trademark system.
An infringement action brought by Lacoste demonstrates that local administrations for industry and commerce are prepared to investigate trademark infringement complaints, and also shows a degree of willingness on the part of the lower courts to recognize well-known trademarks. The amount of damages will reassure multinational companies that their well-known brands will be protected.
A new interpretation has been issued on the application of the law in criminal cases involving IP infringement. It defines the 'serious' circumstances in which certain penalties apply, clarifies the term 'reproduction and distribution' of infringing goods, sets guidelines for fines and introduces criteria for refusing probation.
Supreme Court guidance on the application of the Unfair Competition Law focuses on counterfeiting, false or misleading publicity and the infringement of trade secrets. It includes information on court procedure, assessing whether information is a trade secret and the calculation of damages in trade secret cases.
In 2005 eight recording companies brought separate suits against Baidu, the Chinese internet search company, claiming that its search service for recordings in digital formats infringed their copyright. Despite the factual similarities of the cases, the courts' conclusions were different; regulations issued after the first trial seem to make recording companies responsible for locating such infringement.
Trademark owners must rely on the general provisions of the Trademark Law when enforcing their rights online. Such laws are applicable to corporations or individuals engaged in directly infringing activities. However, different courts have reached different conclusions on the circumstances under which internet operators and service providers should be held liable for secondary infringement.
The State Intellectual Property Office has promulgated a draft for comment of the third revision of the Patent Law. The draft does not substantially change the structure of the patent regime, but revises half of the articles in the law and adds 13 new articles.
The infringement of IP rights through online platforms has become an increasingly visible problem in China. A recent regulation provides a mechanism for copyright owners to issue a take-down notice to internet service providers in respect of infringing activities, but patent and trademark owners must rely on the general provisions of the Patent Law and Trademark Law when enforcing their rights online.