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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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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.

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