Bringing you regular news of key developments in the area of Intellectual Property in China.

General

SPC to Enhance Judicial Protection of Property Rights29 November 2016

The Supreme People’s Court (“SPC”) issued the Opinion on Giving Full Reign to the Role of Judicial Functions to Effectively Enhance Judicial Protection of Property Rights, which states that the SPC will publish the judicial interpretation and guiding cases relating to property rights (including IP rights) in a timely manner, and will enhance the application of the punitive compensation system by protecting the integrity of evidence, and reasonably assigning the burden of proof between the parties. Moreover, the SPC will explore the establishment of an Intellectual Property Appellate Court, and promote the “three-in-one” trial of civil, administrative and criminal IP cases.

For the full text of the Opinion, please click here (Chinese only).

SIPO to Promote Rapid Collaborative Protection for Intellectual Property Rights25November 2016

The State Intellectual Property Office (“SIPO”) issued the Circular on Promoting Rapid Collaborative Protection for Intellectual Property, which will apply a collaborative protection regime where there are a number of clustered competitive industries. This will include a quicker review process, confirmation and protection of rights, and assistance for collaborations with administrative enforcement, arbitration, mediation, and justice. Intellectual Property Protection Centres located in the districts will help the regime to be realised. Under the regime, patents will enjoy quicker examination channels, invalidation and confirmation processes. Moreover, mediation and administrative methods are encouraged for infringement cases before taking measures such as arbitration and litigation.

For the full text of the Circular, please click here (Chinese only).

State Council to Enhance the Protection and Utilisation of Intellectual Property of Strategic Emerging Industries19 December 2016

The State Council issued the 13th Five-Year Plan of Strategic Emerging Industries (“Plan”), which enhances the protection and utilisation of intellectual property. The existing legal regime of protection will be complemented by the Plan by amendments to the Patent Law, Copyright Law and rules in the areas of internet, e-commerce, and big-data. The Plan also proposes further research regarding IP protection. The Plan also lists intentional infringement behaviours on social credit recording platforms and increases the value of statutory damages. In addition, IP Utilisation services, including transferring, pledging and securitisation are encouraged.

For the full text of the Plan, please click here (Chinese only).

Draft E-commerce Law to Protect Intellectual Property27 December 2016

The E-commerce Law (Draft for comment) (“Draft”) enables intellectual property right holders to notify third-party platform of e-commerce operators’ infringements. The platform owners should then promptly forward the notice they receive to the potentially infringing operators, and take necessary measures according to law, such as deleting, shielding or disconnecting the infringing material and by terminating transactions and services associated with the infringement. If the e-commerce operator protests that any infringement has occurred, the third-party platform should terminate the measures it has taken, forward the statement to the IP right holder, and notify them that they may complain to the competent authority or file a lawsuit to a people’s court. If the IP right holder causes losses to the e-commerce operator because of a wrongful notification, they shall bear civil liability according to law. Moreover, the third-party platform may bear the legal liability if it has known the infringement of intellectual property by an operator, but does not take necessary measures.

For the full text of the Draft, please click here (Chinese only).

Patents

SIPO to Further Standardise Patent Application Activities6 December 2016

The SIPO issued Several Provisions on the Standardisation of Patent Application Activities (Draft for Comment) (“Draft”) for public comment. The Draft expands the scope of irregular patent applications, including applications which are made through simple substitution or assembly of different materials, components, proportions or parts; applications containing experimental data or technical solutions that are fabricated; applications of which the shape, design or colour is made from computer random generation and so on. In China, rewards are given to enterprises which file a certain amount of patent applications to encourage innovation; the draft stipulates that enterprises which file irregular patent applications may not enjoy such favourable policies. This Draft aims to reduce the number of low-quality applications and relieve the burden placed on examiners.

For the full text of the Draft, please click here (Chinese only).

Trademarks

The first batch of 13 local Trademark Accepting Offices are established1 November 2016

The Trademark Office of the State Administration for Industry and Commerce (“SAIC”) has established the first batch of 13 local trademark accepting offices. The offices will take charge of accepting trademark applications and collecting registration fees in the designated region, receiving and reviewing trademark application files, determining the filing date of eligible applications, issuing the registration certificate on behalf of the SAIC, as well as providing inquiry and consulting services. To date, there are three ways to apply for trademark applications, which include applying at the trademark acceptance offices, at the TM accepting hall of the SAIC, and entrusting a trademark agency. Online acceptance of trademark applications will be open in 2017.

For the full text of the Decision, please click here (Chinese only).

Shareholders may be liable for the company’s infringement26 December 2016

The Jiangsu High Court has held that four companies used a very similar enterprise name and trademark compared with the official trademark holder, which led to confusion, misled the public, constituted unfair competition, infringed the trademark holder’s exclusive right, and had the subjective intent of taking advantage of the trademark holder’s business reputation. The natural person shareholders controlling the four companies played an important role in the trademark infringement. The Court held that the four companies must change their enterprise name within one month after the decision, stop the infringement of the trademark, and the natural person shareholders should be jointly and severally liable for the infringement, together with the four companies. The Court ordered compensation of RMB 2 million to be paid to the trademark holder. This case increases pressure on infringers as the “corporate veil” of a limited liability company may not protect them from being jointly liable for the infringement with the company.

For the full text of the decision, please click here (Chinese only).

Michael Jordon partly won trademark infringement case7 December 2016

The SPC held that the “乔丹”(the normal Chinese translation of Michael Jordan) trademark owned by Qiaodan Sports Corporation had infringed the prior name right of Michael Jordan, and that subjective intent of the company registering Jordan’s Chinese name as the trademark was misleading the public. The trademark was ordered to be withdrawn.

For the full text of the decision, please click here (Chinese only).

As to the trademark “QIAODAN” which is the Chinese Pinyin of “乔丹”, the SPC held that this trademark does not refer to Jordan’s name as the public do not always use “QIAODAN” in this way and so the trademark does not infringe the prior right of Jordan’s name.

For the full text of the decision, please click here (Chinese only).

“LANCASTER” can be registered as a trademark because it is not a “foreign geographical name well known to the public”23 December 2016

Under Chinese trademark law, normally a “foreign geographical name well known to the public” cannot be registered as trademark. In the judgement of the ‘LANCASTER’ trademark case, the Beijing High Court stated that whether the trademarks of Hershey Company are “foreign geographical names well known to the public” depends on the general cognitive level of the Chinese public, with the consideration of the evidence submitted to prove the awareness of this geographical name. “LANCASTER” refers not only the British city, but also to other cities, in other countries. The submitted evidence could not prove this city is well-known to the Chinese public and therefore the trademark can be registered in China.

For the full text of the Decision, please click here (Chinese only).

Copyrights

Protection of Copyright of Internet Literature to be enhanced11 November 2016

The National Copyright Administration of the PRC (“NCAC”) issued the Circular on Strengthening the Copyright Administration of Internet Literature, which emphasised that internet service providers providing literature through their networks shall not disseminate the literature without the permission of right holders. Internet service providers who provide search engines, browsers, forums, network disks, application stores, post bar, Weibo, WeChat and other services shall not provide literature in disguise through technical means (directional search, links and so on); and shall not facilitate the dissemination of literature for its users without the permission of the right holder. Moreover, online storage service providers shall take the initiative to block and remove infringing literary works to prevent users from uploading, storing and sharing infringing literature.

For the full text of the Circular, please click here (Chinese only).