22 NOVEMBER 2023
Michelin dispute sheds light on when similar trade names constitute unfair competition
French tyre company Michelin has sued three enterprises based on Article 58 of the Trademark Law, which states that using a registered or unregistered trademark in a company’s trade name in a way that misleads the public can be deemed unfair competition.
15 NOVEMBER 2023
Supreme People’s Court narrows the scope and jurisdiction of its IP Court amid workload concerns
The Supreme People’s Court’s IP Court, which was created in 2018, was so successful that it swiftly become inundated with appeals. The newly amended provisions will affect certain appeals related to civil and administrative litigation for utility models, trade secrets and software and address the abuse of litigation rights.
08 NOVEMBER 2023
Apostille Convention marks transformative step forward for foreign IP litigants in China
China's accession to the Apostille Convention signifies a ground-breaking shift in the way that foreign documents are validated and recognised in the country. This is good news for foreign rights owners, as they will now be able to enjoy a streamlined and simplified process.
25 OCTOBER 2023
CNIPA publishes sorely needed draft rules on protection of GI products
New CNIPA draft regulations signal a promising future for foreign GIs recognised in China. The regulations aim to provide more detailed rules for the registration, use and protection of GI products amid growing urgency for stronger legislation.
20 SEPTEMBER 2023
New measures aim to refine corporate name dispute adjudication
While new SAMR measures now provide a clear framework for handling corporate name disputes and specify some punitive measures, they only address conflicts between corporate names – not increasingly prevalent disputes between these and prior trademarks.
13 SEPTEMBER 2023
Plaintiffs’ subjective intentions underlined in infringement counterclaim ruling
The plaintiff in a trademark infringement claim was found to have weaponised the suit to disrupt its rival’s business operations. The decision shows that the courts are aiming to draw clearer distinctions between rights holders that legitimately believe that their marks are being infringed and those that use their rights in bad faith.
30 AUGUST 2023
Supreme People’s Court’s new guiding opinion has critical implications for trademark owners
The Supreme People’s Court has agreed to hear more retrial cases, which is good news for trademark owners. Until now, the vast majority of litigation in this area was initiated at the basic level; the Supreme People’s Court was out of reach for most infringement cases.
14 JUNE 2023
Article on well-known trademarks raises questions about unregistered well-known and defensive marks
Although the draft amendment was introduced to strengthen China’s Trademark Law, it contradicts itself when it comes to well-known trademarks and their reputation and fails to address key problems, such as damages pertaining to unregistered marks.
07 JUNE 2023
New bad-faith invalidation clause to strengthen Trademark Law against malicious registration
While the inclusion of bad faith as a separate condition for refusal in the examination, opposition and invalidation procedures is a major step toward strengthening China’s Trademark Law, critical areas of the 2023 draft amendment could be improved before it enters into force.
31 MAY 2023
Use requirements in the context of the fifth amendment to the Trademark Law
In China, the exclusive right to use a trademark is based on registration, not use. However, the obligation to use a trademark once it is registered has been strengthened by successive amendments to the Trademark Law.
26 APRIL 2023
IP court annual report breaks down valuable statistics on appeals cases
China’s Supreme Court’s IP branch has released its 2022 annual report, providing statistics on caseload and closure. These numbers highlight the longer wait times for appeals, as well as varying chances of success.
19 APRIL 2023
What applicants need to know about Article 4 of the Trademark Law
In recent practice, the CNIPA has refused the registration of many trademarks, citing Article 4 in its reasoning. It is therefore crucial that applicants prove their intention to use the marks.
22 FEBRUARY 2023
Assessing patent stability before enforcement in China
The number of invalidation attempts in China is staggering, with chances of success in such actions fairly high. It is thus vital for patentees to be armed with knowledge before enforcing their patent as doing so will almost always trigger an invalidation attempt.
11 JANUARY 2023
Filing trademarks in China: key steps for foreign applicants
Both the national and international registration routes have benefits and pitfalls for foreign entities seeking to register their trademarks in China. It is crucial to develop a thorough checklist in order to make an informed decision.
14 DECEMBER 2022
The legitimate source defence and why it is good news for defendants in patent infringement disputes
The Intellectual Property Court of the Supreme People’s Court has zeroed in on Renhengde v Huzhou Aixin & Huzhou MCHC Hospital to clarify the criteria of the legitimate source defence, offering a way out of damages liability.
07 DECEMBER 2022
CNIPA invalidates a copycat mark based on prior name right of a French designer
The CNIPA is beefing up efforts to clamp down on bad-faith filings, so it is crucial that brand owners leave no stone unturned to prove bad faith of copycat infringers.
24 AUGUST 2022
Limitation of goods or services for trademark registration in China
Brand owners are advised to weigh up their business needs when deciding whether to file a national application with the CNIPA or for international registration through the Madrid Protocol (designating China).
27 JULY 2022
Creating consistency across civil and invalidity actions involving a single design patent
A case in China involving a leading toy brand operator demonstrates the importance of employing consistent criteria when assessing the similarity of patent designs during infringement and invalidation proceedings.
20 JULY 2022
Qingdao IP Tribunal clarifies the criteria of exhaustion in cases of product modification
The ruling in a civil suit against Wuxi Smile IoT Ltd establishes that, when considering whether modified genuine products constitute trademark infringement, whether the alleged acts are detrimental to a trademark owner’s legitimate rights is the key issue.
13 JULY 2022
China’s SPC streamlines IP jurisdictional rules
China’s IP jurisdiction landscape is not exactly an uncharted territory. Nonetheless, until recently, stakeholders still need all the empirical knowledge they have acquired to navigate the terrain. A new judicial interpretation provides clarity on the geographical range and corresponding threshold of jurisdiction of the courts.
06 JULY 2022
Brand owners should avoid geographic names in marks to prevent confusion around their source
A case involving a trademark registration of the Chinese characters for Milan established that a geographic name is registrable if the mark has additional meanings or if it has acquired, through use, secondary meaning acknowledged by the relevant public.
01 JUNE 2022
China’s market watchdog releases 2022 Legislative Plan
The legislative projects covered in the Plan are categorised either as Category I or Category II. It is essential that Category I projects are submitted for compliance checks and internal scrutiny by the deadline to prevent them being demoted to Category II.
25 MAY 2022
Fighting against bad-faith design patent filings in China
Two cases demonstrate the importance of a proactive filing strategy to prevent bad-faith design patent applications being granted to infringers producing similar products.
18 MAY 2022
Wenzhou court awards Siemens Rmb1 million in civil suit
In a ruling that is good news for rights holders, a court has ordered punitive damages against a repeat counterfeiter, finding that the fact that he was found guilty in criminal proceedings was no bar to a subsequent civil case.
11 MAY 2022
Canny patentee leverages pre-suit mediation procedure to settle design infringement
A pre-litigation mediation procedure proved pivotal to bringing a civil lawsuit to a swift resolution, following field investigation and on-site notarisation to secure evidence of infringement.
27 APRIL 2022
Why interpretation of technical terms in patent claims matters – part two
A further deep dive into an invalidation decision highlights how crucial it is that patentees interpret claims consistently if they are not to risk losing their assets altogether.
20 APRIL 2022
Why interpretation of technical terms in patent claims matters
A case involving a patent that protects a heat curable resin composition for light reflection reveals the dangers that can arise from incorrect interpretation.
06 APRIL 2022
Supreme People's Court issues new interpretation of the Anti-Unfair Competition Law
A judicial interpretation of the Anti-Unfair Competition Law has now become effective, raising questions about the principle of fairness and how this should be understood, highlighting the inherent tension between IP protection and unfair competition.
02 MARCH 2022
How to protect taglines in China
For taglines to be registered as trademarks in China, it is essential that they are both distinctive and creative. The Anti-Unfair Competition Law acts as a contingency for taglines that fail registration if they do not satisfy these conditions
16 FEBRUARY 2022
Hublot successfully invalidates copycat trademark in China
The CNIPA’s decision to nullify a disputed mark on the basis of bad faith illuminates the grounds on which a registration can be held to have been obtained through unfair means
09 FEBRUARY 2022
Beijing High Court backs Michelin in invalidating copycat mark
A case involving Michelin demonstrates that if a contested mark is similar in pronunciation to the cited mark, it is likely to be invalidated on the grounds of causing confusion among consumers
02 FEBRUARY 2022
Amended Civil Procedure Law comes into effect
The revised Civil Procedure Law is designed to smooth out the existing process, especially when it comes to the service of court documents.
26 JANUARY 2022
Supreme People’s Court publishes 28th batch of guiding cases
The latest set of guiding cases from the Supreme People’s Court are striking for all involving different aspects of IP law.
19 JANUARY 2022
Supreme People’s Court issues fresh guidance on the technical field of prior art utility models
A longstanding legal battle between a Chinese machinery company and a patentee – starting with an invalidation request, and ending at the Beijing High Court – is forcing the government to answer questions around the classification of the technical field of a prior art.
12 JANUARY 2022
Supreme 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 2021
How 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 2021
CNIPA 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 2021
Tommy 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 2021
Unilever 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 2021
Analysis 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 2021
CNIPA’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 2021
STIHL 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 2021
Supreme 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 2021
Courts 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 2021
ABB 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 2021
CNIPA 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 2021
Procter & 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 2021
China’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 2021
Supreme 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 2021
Understanding 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 2021
CNIPA 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 2021
Supreme 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 2021
China’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 2021
Revocations 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 2021
The 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 2021
New 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 2021
Shanghai 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 2021
Best 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 2021
Tommy 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 2021
Everything 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 2020
How 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 2020
Van 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 2020
What 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 2020
Landmark 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 2020
IP 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 2020
Shandong 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 2020
L’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 2020
Case 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 2020
Supreme 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 2020
Supreme 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 2020
Design 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 2020
Article 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 2020
Stores’ 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 2020
Supreme 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 2020
CNIPA’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.