By Mia Qu, Hannah Sun and Wendy Dong King & Wood Mallesons’ Dispute Resolution group

qu_miaoTo protect your IP rights, sending potential infringers a Cease & Desist Letter or Warning Letter (the “Letter”) is one of the most common tools. Is it a necessary step before starting any legal proceedings in China?What legal consequences does it entail? Are there any issues that must be attended to? How effective is the Letter? This article will try to project a bird’s eye view regarding everything you should know before sending the Letter to your potential infringers.

Purpose of Sending the Letter

Sending the Letter is not a condition precedent for the right holder to initiate legal actions in China. The purpose of sending the Letter includes: Continue Reading Everything You Should Know before Sending a Cease & Desist Letter in China

by Li Zhongsheng, King & Wood Mallesons’ IP group

li_zhongshengOn behalf of Qualcomm Incorporated, King & Wood Mallesons (“KWM”) recently asserted several standard essential patents (SEPs) against Meizu, a Zhuhai-based handset manufacturer. Meizu concluded a license agreement with Qualcomm on fair, reasonable, and non-discriminatory (FRAND) terms, in settlement of the royalty dispute after it was threatened with an injunction.. Article 24 of the Supreme People’s Court Interpretation of Issues of Application of Laws in the Handling of Patent Infringement Disputes (II) (“Judicial Interpretation II”) was the legal basis on which Qualcomm accused Meizu of patent infringement. This essay is a preliminary consideration of that article.

Article 24 of Judicial Interpretation II (“Article 24”) consists of four paragraphs. Continue Reading Patent Disputes and Article 24 of Judicial Interpretation II

By Joshua Fisher and Michael Swinson  King & Wood Mallesons’ Melbourne office.

捕获The “internet of things” or “IoT” may be the defining technology buzzword of our age. Certainly just about every technologist is busy explaining how the IoT will revolutionise the ways in which businesses work and societies function.

Yet, as IoT systems and devices proliferate, so do the security implications. While many benefits of the IoT can only be realised by expanding the ecosystem of interconnected IoT devices, this can also be one of its greatest flaws; networks are only secure as their weakest link.

Many readers will already be familiar with some of the more famous examples of IoT vulnerability, such as the demonstration at the 2015 Black Hat of taking control (remotely) of a Jeep Cherokee travelling at over 110kph or the recent incident when IoT-connected CCTV video cameras and DVR players were used to facilitate one of the largest internet denial of service attacks in history. However, despite the high level of awareness of these security issues, industry is yet to take a coordinated approach to dealing with these matters. Continue Reading Who’s afraid of the IoT? IoTAA Security Guideline

By Li Zhongsheng and Song Xinyue King & Wood Mallesons’ IP group.

li_zhongshengIn January 2017, Beijing Sihuan Pharmaceutical Co., Ltd. (“Sihuan Pharm”), represented by a King & Wood Mallesons’ IP litigation team, succeeded in a patent infringement trial. The Inner Mongolia Hohhot Intermediate People’s Court (the “Court”) found that Qilu Pharmaceutical Co., Ltd. (“Qilu Pharmaceutical”) had infringed two of Sihuan Pharm’s patents, and ordered Qilu Pharmaceutical to cease the infringement. The case involves standard-related patents in the pharmaceutical sector and drew lots of attention in the industry. The Court’s decision is a valuable precedent for the judicial protection of pharmaceutical patents.

Read full article, please click here.

By Li Zhongsheng Lei Peng King&Wood Mallesons’ Intellectual Property Group

untitledThe nature and products of some industries, like wireless telecommunications, necessitate the incorporation of all essential patents related to the products into standards created by standardization setting organizations (“SSOs”). If they are to find buyers, manufacturers whether licensed or not must make products in accordance with the standards, therefore using standard essential patents (“SEPs”). Because of this, SEP licensing has become a focus of attention from anti-monopoly enforcement authorities around the world.

Before asserting their SEPs against infringers in China, aside from the usual risk of losing in court, multi-national companies (“MNCs”) with strong SEP portfolios, should evaluate the restrictions on patent rights arising from the P.R.C. Anti-monopoly Law (“AML”).

Read full article, please click here.

By Chen Changhui King&Wood Mallesons’ Intellectual Property Group

untitledCivil enforcement is the last step of civil litigation (incl. intellectual property (IP) litigation), which plays a key role to realise civil rights. Whether or not it operates smoothly tends to be a weighted indicator to a nation’s legal development.

Enforcement constitutes the last yet crucial step of the protection of IP right holders’ interests. However, similar to other civil disputes, arduous enforcement has always perplexed IP right holders, which may cause that they cannot get the full extent of compensation (or even no compensation at all). Given that, how to avoid such a problem has become an intractable issue for both IP right holders and their attorneys. Continue Reading Enforcement: the last mile of intellectual property litigation

By Yang Hua  Ding Xianjie  and He Tongjun  King&Wood Mallesons’ Intellectual Property Group

untitleduntitled 01What should we concern: when determining the level of similarity between trademarks, it should be limited to comparing the part that the citation mark has acquired the right to exclusive use with the mark in application. The part that is disclaimed of the exclusive right to use in an early registration even if has distinctiveness should not constitute a valid part for comparison and impede registration of a later filed trademark.

“Disclaiming the right to exclusive use” in trademark application refers to the situation in which the proprietor makes a disclaimer to give up any right to exclusive use for a part of the trademark, in order to avoid rejection of the whole application due to registrability issue of the disclaimed part. Signs prohibited from registration due to lack of distinctiveness are the part that is more commonly disclaimed of the right to exclusive use. In practice, some proprietors also disclaim the right to exclusive use for a part that has distinctiveness (the Disclaimed Part), which gives rise to the issue referred above, whether the Disclaimed Part will function to impede the registration by others of a later filed application. Continue Reading Trademark comparing: disclaimed part no longer valid even with distinctiveness

By Yang Hua  Wang Fang  King&Wood Mallesons’ Intellectual Property Group

untitledWhat should we concern: registered trademark, filed in the name of others without others’ authorisation should be deemed as “obtained through means of fraud” and should be announced invalid.

DELTASOFA’S S.R.L. (“DELTASOFA”) was established on September 19, 1985 by Vincenzo Liborio Calia, a skilled master carpenter in Europe who in 1965 started to design and produce sofas in south Italy and created the famous sofa brand “caliaitalia”. Nowadays the “caliaitalia” sofa products are sold in countries in North America, the Middle East and the Far East.

On August 1 2008, a Guangdong company filed a trademark application for the mark “caliaitalia” under No. 6875537 (hereinafter as “mark in dispute”) in the name of “Calia Italia S.p.A” (the former name of DELTASOFA”). In 2011, this Guandong company, again in the name of “Calia Italia S.p.A.”, signed the trademark assignment documents regarding the mark in dispute and had the mark assigned to its affiliated company. Continue Reading Trademark invalid: registering in others’ name with no authorisation

By Ding Xianjie King & Wood Mallesons’ Trademark Group

xian-jie_dingWhether OEM constitutes trademark infringement has been an area of controversy in the field of intellectual property for many years. The ongoing debate has arisen recently, mainly focusing on the following three points: a) whether export-related OEM constitutes trademark infringement regulated by the Trademark Law of the PRC; b) whether OEM satisfies the requirement of “prior use” with an ability to prevent others from registering the trademark on the same or identical goods by illegitimate means; c) whether OEM can defend others’ cancellation requests on the grounds that the trademark has not been used for three years consecutively.

With regards to the abovementioned issues, the focus of the argument lies in whether the “brand-post” in OEM is a use of trademark in the sense of Trademark Law. If a) above is not satisfied, b) and c) will be problematic. This article summarizes existing case law and the prevalent literature, and concludes that the current controversy over the use of trademarks shall be weakened, but over the substance of trademark right protection. Continue Reading Analysis of the use of trademarks in OEM based on the legislative intent of trademark protection

By Alex Zhang and Xuelin Ma   King & Wood Mallesons’ IP Group

I. INTRODUCTION

By 2015, the Chinese government plans to double the number of patent applications filed with the State Intellectual Property Office (“SIPO”), such that applications will increase from 1 million in 2010 to 2 million per year.[i]  According to SIPO’s “National Patent Development Strategy (2011-2020)” (the “Patent Strategy”), “China will rank among the top two in the world in terms of the annual number of patents for inventions.”[ii]  The Chinese government also expects that “the number of overseas patent applications filed by Chinese entities and individuals will double.”[iii]  However, this ambitious plan cannot relieve concerns about the quality of Chinese innovation.  The basis for these concerns is that “the vast majority of these applications are for utility model patents that merely undergo a preliminary examination for formalities rather than substance—a concept that does not exist in the US.”[iv]  According to a Shanghai-based patent attorney quoted by the Economist: “Patents are easy to file but gems are hard to find in a mountain of junk.”[v] Continue Reading Recent Proposed Amendments to China’s Patent Law: Will it help to improve the enforceability of patents in China?