Updated draft of amendment to PRC Copyright law published for public consultation
On 17 August 2020, lawmakers published the second draft of the Amendment to the Copyright Law of People’s Republic of China, which will be open to public comments until 30 September 2020.
Compared to the first draft published on 30 April 2020, the second draft proposes to further strengthen protection of copyright owners. The highlights include:
- expanding the scope of copyright works, such as defining that works can be protected under the copyright law when they can be “represented in a certain tangible form” and clarifying that in addition to cinematographic works and television works, other types of audio-visual works will also be protected under the copyright law and providing rules stipulating ownership of the works;
- expanding the scope of copyright, such as specifically listing digitalisation as a duplication right and expanding the broadcast right from broadcasting the work to spreading the work;
- requiring that, when using the work of another for creation of derivative works, a license fee should be paid [to the owner of the original work];
- deleting the punitive-damage rules against the abuse of copyright; and
- allowing for “pre-litigation” property preservation and injunctive relief to be granted when copyright infringement will cause irreparable damage if not stopped immediately, and evidence preservation when such evidence can be lost and difficult to obtain.
Other highlights includes adjusting the rights and obligations of collective copyright management organisations, expanding the scope of fair use, changing the starting date for the protection of the publication right of a legal person or non-legal organisation from the initial publication date to the work's completion date, and applying similar changes to the publication right of audio-visual works.
The second draft maintains key amendments in the first draft, such as: granting punitive damages to wilful infringement and lowering a right holder’s burden of proof for damages; requiring that, when using the work of another individual for the creation of derivative works, such author [must] obtain a license from the owner of the original work; and prohibiting directly or indirectly destroying or circumventing of technologies adopted for copyright protection and setting up exceptions to the general rule.
Please click here for the full text (Chinese only) of the second draft of Copyright Law.
CNIPA issues guidance to strengthen administrative protection of patents
On 13 July 2020, the China National Intellectual Property Administration (CNIPA) issued “Guidance on Administrative Mediation of Patent Disputes”, “Guidance on Investigation and Punishment of Patent Counterfeiting and Handling of Cases Involving Non-Standard Patent Labelling” and “Guidance on Review and Response of Patent Administrative Protection”.
These three documents provide detailed practical information ranging from relevant laws, procedural rules, exemplary cases, and sample forms and documents. The Guidance on Administrative Mediation of Patent Disputes provides guidelines on the basic definitions, legal basis, jurisdiction and scope of acceptance of cases, types of patent disputes, the procedure for patent disputes mediation, methods to calculate statutory damages, and administrative mediation of patent-related disputes. The Guidance on Investigation and Punishment of Patent Counterfeiting and Handling of Cases Involving Non-Standard Patent Labelling provides guidelines on basic definitions, jurisdiction, withdrawal of judges, service processes, the procedure for investigating and punishing patent counterfeiting, the procedure for investigating and punishing non-standard patent labelling, and how to identify patent counterfeiting and non-standard patent labelling. The Guidance on Review and Response of Patent Administrative Protection provides guidelines that have been separated into two sections: one for initiating administrative reviews against a decision made by an administrative department, and the other for initiating a lawsuit against a decision made by an administrative department. The first section includes an overview of patent enforcement administrative review, and a guidance on how to respond to patent enforcement administrative review, how to handle patent enforcement administrative review, and the period and service of patent enforcement administrative review. The second section includes an overview of patent enforcement administrative litigation, and a guidance on how to handle patent enforcement administrative litigation and the conclusion of a case.
Please click here for the full text (Chinese only) of the three guidance.
Addition of a new chapter on Trade marks of dissolved Hong Kong companies to the Trade Marks Registry Work Manual
As of 31 July 2020, the Hong Kong Intellectual Property Department has added a new chapter on “Trade marks of companies incorporated in the Hong Kong SAR that are dissolved” to the Trade Marks Registry Work Manual. When a company incorporated in Hong Kong is dissolved, any property or right vested in or held on trust for the company immediately before the dissolution is considered bona vacantia (i.e. ownerless property in all forms) and vested to the government, in accordance with section 752(1) of the Companies Ordinance (Cap. 622) (CO). If the dissolved company takes ownership of a registered trade mark immediately before dissolution, the mark is also deemed bona vacantia and vested to the government. The Registrar of Companies (CR) has the authority to act as agent on behalf of the government in bona vacantia cases.
There is a possibility that the CR may determine that the registered trade mark is bona vacantia, but also consider it appropriate to disclaim the government’s title to the same in accordance with section 753(1) of the CO. Pursuant to section 754 of the CO, the effect of a disclaimer is that the registered trade mark that has been disclaimed will be regarded as not having been vested to the government, and from the date of the disclaimer, the company’s rights, interests and liabilities concerning the disclaimed registered trade mark will be terminated. If the CR decides to disclaim the government’s title to a registered trade mark and the Registrar is informed of this through a notice of disclaimer, the Registrar will determine if the mark ceases to have effect.
Where an application for registration is blocked by an earlier registered trade mark owned by a company incorporated in Hong Kong that has been dissolved, the CR may dispose of or otherwise deal with the bona vacantia in question as he sees fit upon receiving relevant submission in writing from the applicant for registration.
For more information, click here.
Amendments to Geographical Indications Act 2014 and Geographical Indications Rules 2019 in force since 15 August 2020
On 15 August 2020, amendments to the Geographical Indications Act 2014 (GI Act 2014) and the Geographical Indication Rules 2019 (GI Rules) entered into force in Singapore.
A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities, characteristics or a reputation arising from that origin, thereby establishing a clear correlation between the product and its original place of production.
The key amendments to the GI Act 2014 are detailed below.
Treatment of GI variants
The definition of “variant” is now included in the GI Act 2014, which in the context of a GI means a variant of the indication constituting the GI, and includes any translation, transliteration or other variation of the indication. If an applicant desires to register any variant constituting a GI and the GI is the subject of an application for registration, the applicant may include that variant either in that application, or in a different application for registration.
The amendments further indicate that variants will be determined distinctly and independently from each other. For example, refusal of a registration of a variant or an opposition of an application of a variant by third parties upon publication would not prohibit the registration of other variants that have not been refused or opposed.
Requirements for filing a Qualification of Rights request
A request for Qualification of Rights is commonly filed in relation to any name contained in a GI or any term that may be a possible translation of the GI to be entered into the GI Register.
Under the latest amendments, a request for Qualification of Rights in respect to a GI may only be made prior to the registration of a GI.
In situations where a request to qualify the rights of a GI would effectively nullify that GI, the request should be filed as an opposition or a cancellation action, whichever is applicable.
Removal of post-registration Qualification of Rights and introduction of a Limitation of Scope mechanism
The GI Act 2014 has been amended to remove the post-registration Qualification of Rights process and to introduce a Limitation of Scope (LoS) mechanism in relation to the scope of protection conferred upon registered GIs. Under the new LoS regime, all applications would be filed to and heard by the High Court.
The existing Qualification of Rights mechanism continues to be available for third parties to file such requests and for GIs that have not been registered.
In conclusion, the amendments to the GI Act 2014 and the GI Rules seek to crystallise the role of the GI Registry and to streamline the GI registration process. The express definition of a variant and the clarification on the distinctiveness of each variant of a GI should also provide traders and producers a better picture of the GI landscape in Singapore.