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Industry Reports - More Updates
China
Wanhuida Intellectual Property
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20 Oct2021
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. Full text
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13 Oct2021
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. Full text
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29 Sep2021
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. Full text
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22 Sep2021
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. Full text
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15 Sep2021
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. Full text
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8 Sep2021
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. Full text
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25 Aug2021
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. Full text
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11 Aug2021
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. Full text
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28 Jul2021
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. Full text
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21 Jul2021
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. Full text
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14 Jul2021
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. Full text
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30 Jun2021
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. Full text
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9 Jun2021
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. Full text
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2 Jun2021
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. Full text
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19 May2021
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. Full text
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5 May2021
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. Full text
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17 Mar2021
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. Full text
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24 Feb2021
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. Full text
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3 Feb2021
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. Full text
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20 Jan2021
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. Full text
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13 Jan2021
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. Full text
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9 Dec2020
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. Full text
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2 Dec2020
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. Full text
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4 Nov2020
‘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. Full text
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14 Oct2020
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. Full text
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7 Oct2020
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. Full text
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9 Sep2020
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 Full text
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2 Sep2020
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 Full text
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12 Aug2020
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. Full text
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22 Jul2020
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. Full text
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8 Jul2020
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. Full text
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1 Jul2020
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. Full text
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17 Jun2020
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. Full text
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10 Jun2020
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. Full text
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27 May2020
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. Full text
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20 May2020
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. Full text
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13 May2020
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. Full text
