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Updates from an international team of correspondents who report on recent developments in IP law and practice in their home jurisdictions, as well as strategic issues and those relating to finance, dealmaking and valuation.
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New 12 JANUARY 2022Supreme People’s Court reaches first administrative decision on GUI design patent infringements
A fresh case reaffirms that the general principles employed in design patent infringement assessment also apply to GUI designs.
15 DECEMBER 2021How to assess infringement of patents involving usage environment features
The criteria for assessing the infringement of patents with usage environment features is ambiguous. To achieve consistency and interest balance, it is crucial to take account of factors such as the infringer’s intention to use.
08 DECEMBER 2021CNIPA measures are a big step forward for patent pledges in China
The viability of patent pledges in China has been given a significant boost by amended measures published by the CNIPA, a detailed attempt to make the patent pledge procedure smoother for prospective registrants.
01 DECEMBER 2021Tommy Hilfiger successfully appeals the CNIPA’s refusal of its stripe logo mark
A case involving international fashion brand Tommy Hilfiger highlights important strategic considerations for applicants trying to register trademarks with similarities to the flags of foreign countries.
24 NOVEMBER 2021Unilever defeats Chinese competitor on grounds of bad-faith filing
Unilever has triumphed, not only in having an administrative proceeding upheld against a rival trademark, but also in securing well-known status for its own mark, which should make subsequent enforcement much easier.
20 OCTOBER 2021Analysis of the Beijing IP Court’s assessment of novelty and inventiveness highlights where inventors go right
In the second and final part of this article, which focuses on a pharmaceutical invention claim for ibuprofen, we examine what the court looked for in its assessment and suggest that this may signal a new dawn for those wishing to protect their inventions in the pharmaceutical sector.
13 OCTOBER 2021CNIPA’s assessment of novelty and inventiveness for transdermally administered ibuprofen could pave way for future similar decisions
Many patentees of pharmaceutical preparations find it difficult to defend the validity of their inventions before the China National IP Administration. However, a deep dive into the claims of a pharmaceutical preparation for ibuprofen provides some useful pointers.
29 SEPTEMBER 2021STIHL successfully invalidates an infringer’s colour combination mark
Non-traditional trademarks are famously challenging for brand owners to protect, as a vast amount of evidence needs to be provided to prove distinctiveness. STIHL’s successful case against an infringer highlights some best practices for colour trademark owners.
22 SEPTEMBER 2021Supreme People’s Court acts against obstruction of litigation
In a case involving deliberate obstruction of evidence by the defendant, the IP Court’s decision underlines the fact that the good-faith principle should always be observed by parties throughout IP civil litigation.
15 SEPTEMBER 2021Courts evolve to tackle bad-faith trademark filings in China
A series of recent cases shine the spotlight on how trademark case law is developing in China and suggests particular areas of interest, of which practitioners should take note.
08 SEPTEMBER 2021ABB prevails in a private criminal prosecution in China
A case selected by the Supreme People’s Court as one of its top 10 exemplary IP cases of 2020 highlights how brand owners can use private proceedings to enforce their rights should attempts to pursue public prosecution fall through.
25 AUGUST 2021CNIPA promulgates interim measures on patent examination
While China’s fourth amendment of Patent Law has now come into effect, there are as yet no sign of rules on its implementation. To bridge this gap, the China National IP Administration has released interim measures to guide IP owners through this transition period.
11 AUGUST 2021Procter & Gamble fends off an unreasonable patent lawsuit in China
In what is becoming a more and more common occurrence, another multinational corporation has become the target of unreasonable patent assertion in China. Brand owners should familiarise themselves with the facts of this case in order to take evasive action against opportunists.
28 JULY 2021China’s new grounds for defence and damages indicates tougher rules on patent linkage
The Supreme People’s Court has promulgated judicial interpretation on patent linkage litigation, which clarifies the grounds for defence and claiming damages.
21 JULY 2021Supreme People’s Court promulgates judicial interpretation on patent linkage litigation
China’s new judicial interpretation features substantial amendments in terms of the right of action, the materials for filing the case, grounds of defence and the damages regime.
14 JULY 2021Understanding China’s new infringement measures
Recent changes to China’s IP laws have big implications for major patent infringement cases. A breakdown of the new measures sets out useful guidance for both patentees and stakeholders.
30 JUNE 2021CNIPA clamps down on ‘abnormal’ application practices in fresh drive for patent quality
Following a surge in patent filings, the China National IP administration has released a notice and draft measures, which aim to dampen the enthusiasm of opportunistic domestic filers, divert the focus of patent filers and practitioners from quantity to quality and encourage innovation.
09 JUNE 2021Supreme People’s Court’s six exemplary cases show how punitive damages will be assessed and applied
In part two of a series on punitive damages in Chinese courts, Wanhuida Intellectual Property provides a rundown of new exemplary cases that will influence the practice going forward.
02 JUNE 2021China’s top court releases judicial interpretation for punitive damages in IP cases
The Supreme Court has released a judicial interpretation on the application of punitive damages in the trial of civil cases involving IP rights infringement. It aims to coordinate and unify the criteria and language used across the various branches of IP law.
19 MAY 2021Revocations and damages: the 2020 China decisions shaping trademark practice
Continuing the two-part overview of key decisions in China in 2020, IP experts explore decisions on revocations for non-use and those illustrating the raising level of financial compensation awarded by the courts.
05 MAY 2021The China trademark cases you need to know about
Wanhuida Intellectual Property partners Huang Hui and Paul Ranjard outline a number of important decisions addressing trademark refusal, oppositions and invalidations on relative grounds handed down in 2020.
17 MARCH 2021New regulations on enterprise name registration enter into force
Good news for brand owners as updated regulations on enterprise names come into force in China. Among the amendments are provisions to prevent brands from piggybacking on another’s reputation as well as tightening the deadline by which brands must respond to orders to stop using an enterprise name.
24 FEBRUARY 2021Shanghai releases China’s first local anti-unfair competition regulations
In welcome news for business owners, Shanghai has enforced the first local anti-unfair competition regulation in China. The rules are designed to improve business relations by providing more clarification on acts that are damaging or cause confusion among consumers.
03 FEBRUARY 2021Best strategies for fighting trademark squatting in China
While the China National IP Administration’s efforts to boost filing numbers have been immensely successful, it has inadvertently contributed to a rise in trademark squatting. Experts provide top tips for battling these bad-faith applications.
20 JANUARY 2021Tommy Hilfiger invalidates trademark piggybacking on its iconic flag logo
The Beijing IP Court and Beijing High Court have overturned a China National IP Administration decision and ruled in favour of Tommy Hilfiger in an invalidation action against a copycat trademark, which, when in its colour form, mimics Tommy Hilfiger’s iconic flag logo. This could set a valuable precedent for stakeholders in the fashion industry.
13 JANUARY 2021Everything you need to know about China’s new Patent Law
The fourth amendment to China’s Patent Law will come into effect on 1 June 2021. Local experts outline the key changes to be aware of.
09 DECEMBER 2020How to write damages into a settlement agreement in case of repeated infringement
As pre-litigation mediation becomes a popular method of settlement for infringement cases, it is crucial to know how to navigate this in order to avoid repeated infringement. Including a strong damages clause in a settlement agreement is one effective way to help to prevent this.
02 DECEMBER 2020Van Cleef & Arpels' four-leaf clover 3D trademark invalidated in China due to lack of distinctiveness
The Beijing IP Court recently denied the inherent and acquired distinctiveness of Van Cleef & Arpels' four-leaf clover 3D trademark. Van Cleef & Arpels appealed before the Beijing High Court. The Beijing IP Court has set a high threshold in assessing the registrability of a 3D trademark which consists of a product shape. It remains to be seen whether this view is shared by the Beijing High Court.
04 NOVEMBER 2020‘Clear and convincing evidence standard’ applies to prior art taking the form of physical objects
An exemplary case – the first patent administrative case appealed before the Supreme People’s Court IP Tribunal – shines a guiding light on the clear and convincing evidence standard, where the prior art is a physical object, in this case a mobile phone.
14 OCTOBER 2020What brand owners should know in the battle against bad-faith trademarks in China
Trademark experts offer advice on filing against bad-faith trademarks in China, which includes court practice, case law and not taking Article 4 as a universal remedy in trademark disputes.
07 OCTOBER 2020Landmark judicial interpretation promulgated in patent administrative cases
The Supreme People's Court recently promulgated the Provisions on Several Issues Concerning the Application of Laws in Adjudicating Administrative Cases Involving Granting and Affirmation of Patent Rights, which is the first judicial interpretation concerning the trial of patent administrative cases. This article summarises the judicial interpretation's main points.
09 SEPTEMBER 2020IP Tribunal upholds infringement finding on hairstyling patent
The Supreme People’s Court IP Tribunal has affirmed an earlier infringement decision and provided invaluable guidance on interpreting the language of a patent claim
02 SEPTEMBER 2020Shandong High Court awards Rmb500,000 over collective geographical indication wine mark in top 10 IP case
The Shandong High Court has selected a case involving the collective geographical indication (GI) trademark Bordeaux波尔多 as one of the 2019 Top 10 IP Cases. The matter is expected to serve as a point of reference for the administrative and judicial protection of GIs in future cases
12 AUGUST 2020L’Oréal counterfeit case is shining example of how to bring a case to court
The 2019 ruling in a case pertaining to counterfeit L’Oréal products serves as a model for distinguishing between the prime culprits and accessories, and applying penalties accordingly.
22 JULY 2020Case sheds light on assessing the inventiveness of solving a technical problem
In April 2020 the IP Court of the Supreme People’s Court in 2019 chose Judgment (2019) Zui Gao Fa Zhi Xing Zhong No 32 as exemplary for its significance in clarifying the level of description required for a technical problem and its solution in an assessment of inventiveness.
08 JULY 2020Supreme Court clarification on hybrid technical features chosen as exemplary case
The Supreme People’s Court has selected as an exemplary case a 2019 ruling in which the IP Tribunal clarified that if a technical feature defines or implies a specific structure of an invention solution, it is not a functional feature in principle, even though it defines a function (or effect) that it can achieve. The ruling is expected to help establish a unified jurisprudence on ascertaining functional features in patent infringement lawsuits in China.
01 JULY 2020Supreme People’s Court denies trademark infringement in bad-faith lawsuit against Michael Kors
The Supreme People’s Court has confirmed previous judgments to dismiss an infringement claim initiated by a Chinese trademark owner against the world-famous brand Michael Kors, finding that the case had been filed in bad faith.
17 JUNE 2020Design space must be considered when determining similarity of designs
Article 23 of China’s Patent Law provides that a design must significantly differ from prior designs in order to be patented – any design that is substantially similar will be denied. The similarity between a design patent and a prior design is ascertained from the perspective of an ordinary consumer with regard to the specific category of product that incorporates the design patent.
10 JUNE 2020Article 4 of the new Trademark Law fights against bad-faith filings
The fourth amendment to China’s Trademark Law came into force on 1 November 2019. Article 4 now states that a "trademark filed in bad faith without intention to use shall be rejected”. This modification is also mentioned in Article 44.1, which provides that any mark registered in violation of Article 4 or by fraudulent or unfair means will be declared invalid.
27 MAY 2020Stores’ unauthorised use of trademarks on signboards requires clarification
Foreign brand owners in China are becoming increasingly concerned about stores using their trademarks on signboards without permission. This is complicated by the fact that these shops are selling genuine goods that are the result of parallel imports.
20 MAY 2020Supreme People’s Court ruling on Christian Dior 3D mark selected as a guiding case
The Judicial Committee of China’s Supreme People’s Court has listed the ruling on the Christian Dior 3D trademark of 26 April 2018 as Guiding Case 114. The judgment overturned the decisions of the Trademark Review and Adjudication Board, the Beijing IP Court and the Beijing High Court, which had refused the registration of Christian Dior’s 3D trademark. The Supreme People’s Court ruling will therefore be binding on Chinese courts.
13 MAY 2020CNIPA’s latest patent practice and 2020 patent objectives
A rundown of the China National Intellectual Property Administration's most recent patent filing statistics and what the office is planning for the rest of 2020.
01 APRIL 2020Pilot project to improve administrative complaint process for infringement disputes will shake up China’s IP system
For the last few years, the Chinese government and the China National IP Administration (CNIPA) have been promoting the enforcement of patent rights through administrative actions. In November 2019 CNIPA published a notice announcing the launch of a project to refine the system of handling administrative complaints with regard to patent infringement.
12 FEBRUARY 2020Trademark squatters get smarter in China – a look at the latest tactics
Following China's clampdown on illegal filing activity in the amended Trademark Law, it appears that squatters have also raised their game. This article shows the most effective ways to prevent rights holders from becoming victims of trademark squatting.
05 FEBRUARY 2020Landmark infringement decision: trademark owners can take action against their damaged goods on third-party platforms
A recent decision shows that in cases where product packaging has been damaged and the third-party platform cannot prove that the contents are genuine, trademark owners can take action on the grounds of trademark infringement.
11 DECEMBER 2019Amendments to Trademark Law and new provisions for regulating trademark registration applications could alter China's filing landscape
The fourth amendment of the Trademark Law came into effect on 1 November 2019. It provides the factors to be considered when deciding whether a trademark application contravenes Article 4 of the amended Trademark Law and demonstrates the China National IP Administration's determination to tackle bad-faith filings.
19 JUNE 2019Major developments set to vastly improve trademark and patent landscape
As it marks the 10th anniversary of the implementation of the national IP strategy, the Chinese government has taken the next step in restructuring the offices that administer various IP rights. This includes the implementation of a faster timeframe for patent examination, provisions to curb bad-faith filings and the introduction of the E-commerce Law.
12 JUNE 2019Amends to the Trademark Law could put an end to bad-faith filings
The amendments of 23 April 2019 to the Trademark Law will come into effect on 1 November 2019. These changes are a promising next step in the Chinese government’s stand against bad-faith filings and trademark infringement in China.
03 APRIL 2019Protecting app names in China
Designing a unique and striking app name and icon is crucial for developers keen to set their innovations apart from competitors. However, it is important to protect the app name and enforce your trademark rights to prevent others from profiting on the app’s success.
12 MARCH 2019Ford successfully obtained injunction order in China in landmark case
In a strategic lawsuit in which Ford authorised Ford China to file an action on its behalf and apply for an evidence preservation order, an export of counterfeit automobile parts was prevented and a favourable judgment was handed down, which suggests that injunction orders are becoming easier to obtain.
20 FEBRUARY 2019New registration requirements prompt fears from e-businesses
The first E-commerce Law in China came into force on 1 January 2019. Since its promulgation, many people have voiced concerns, in particular over the requirement for online businesses to register with the Administration for Industry and Commerce.
23 JANUARY 2019Competitors and keyword advertising: how to protect your mark
Over the past decade, advertising and sales have moved onto online platforms, transforming search engines into essential platforms for business promotion. However, this makes it easier for competitors to take advantage of a mark’s reputation by using a registered mark as a keyword.
19 DECEMBER 2018Data breach – what to know, how to prevent and how to handle
The proliferation of recent data breaches is a wake-up call for data users, who should have a basic understanding of the statutory requirements on the protection of personal data and should take the necessary actions to comply with these.
28 NOVEMBER 2018Case alert – Hugo Boss Trademark Management GmbH v Britain Boss International Co Ltd
Can a trademark owner submit a claim in Hong Kong against the owner of a website selling infringing goods in China? This issue was brought before the Hong Kong Court of Appeal.
21 NOVEMBER 2018First E-commerce Law in China
On 31 August 2018 the Standing Committee of the National People’s Congress published the long-awaited E-commerce Law, which will come into effect on 1 January 2019. This article highlights some of the changes to which brand owners should pay attention.
07 NOVEMBER 2018Key takeaways from the top 20 cases published by the Trademark Review and Adjudication Board
The China Trademark Review and Adjudication Board has published its top 20 cases, which provide insights into approaches and trends in decisions.
24 OCTOBER 2018How to obtain high damages in a patent infringement case in China
A recent Supreme People’s Court decision to award Rmb9.4 million in damages for patent infringement is another example of the increased willingness of the Chinese judicial system to enforce IP rights.
19 SEPTEMBER 2018Five significant recent cases from the Supreme People’s Court
The Supreme People’s Court has announced 2017’s top IP cases, which serve as an important guideline for future cases and demonstrate the courts’ flexibility in handling IP cases involving new technology.
08 AUGUST 2018Judicial interpretation of the Administrative Procedure Law: what’s new?
A judicial interpretation issued by the Supreme People’s Court has updated the Administrative Procedure Law. Key amendments include stricter rules to tackle habitual complainants and the requirement for administrative personnel to justify their absence from court.
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