By Liao Fei King and Wood Mallesons’ IP group

Since May, China has continued a series of initiatives on the promotion and strengthening of intellectual property protection. The following is a summary of the updates –

  • The National Intellectual Property Administration of PRC (CNIPA) issued a white paper on “ 2019 State of Intellectual Property Protection in China”, which proposes to promote a sound punitive compensation regime for infringement as well as to step up efforts in cracking down on intellectual property crimes by means of legislation. In addition to the amended Trademark Law, which came into effect on November 1, 2019 where the compensation multiplier for malicious infringement upon exclusive trademark rights is raised from less than three times before the amendment to the current less than five times, the Whitepaper mentioned that the draft amendment to the Patent Law under consideration is also very explicit on establishing a punitive compensation regime vis-à-vis infringement. According to the Whitepaper, local courts nationwide received a total of 399,031 new first-instance civil cases concerning intellectual property rights in 2019, of which 65,209 were trademark cases, up 25.41 percent; 16,134 new first-instance administrative cases were received, of which 14,457 were trademark cases, up 20.56 percent; the Supreme People’s Court received 2,504 new civil cases concerning intellectual property rights, up 174.26 percent, and 1,066 new administrative cases concerning intellectual property rights, up 70.83 percent; a total of 7,430 arrests for 4,346 cases were approved for crimes involving infringement of intellectual property rights, and 5,433 prosecutions were filed against 11,003 people, with trademark infringement cases accounting for 90.5 percent of all prosecutions. In addition, the number of invention patent applications in 2019 was 1.411 million, down 9.2% from the previous year, utility model patents 2.668 million, up 9.5%, trademark applications 7.837 million, up 6.3%, trademark opposition applications 143,700, up 23.5%, and all kinds of trademark review cases 361,000, up 15.2%.
  • On 11 May, the Trademark Office of National Intellectual Property Administration of PRC held a conference on the state of trademark examination and administration, where a set of latest data and information concerning trademark examination was released. Among them, the number of trademark examinations in 2019 was 8.253 million, up 2.62% from the previous year; the sampling pass rate of substantive examinations for trademark applications was 96.08%, higher than the 95.77% in 2018; 38,700 abnormal applications were rejected, accounting for about 0.67% of the total in the same period; 136,400 oppositions were lodged, with opposition rate at 2.27%, down 0.21% from 2018; the average examination timeframe for trademark application was compressed to 4.5 months, with the efficiency and quality of trademark examination steadily improved. In response to the COVID-19 epidemic, the Trademark Office specially formulated the prevention and control related measures for trademark filing reception as well as an official Guidance on trademark examination, tightening the control of the epidemic-related trademark filings. As of 13 April, the Trademark Office has rejected 1,587 COVID-19 related applications which would result in negative social impact, among them “Fire God Mountain”, “Thunder God Mountain” and “Li Wenliang”[1].

The conference also proposed that in 2020, the Trademark Office will 1) continue to crack harder and swifter down on abnormal trademark filings related to COVID-19 in accordance with the law; 2) continue to deepen the reform of facilitated trademark registration, ensuring that the average examination timeframe of trademark application is further reduced to less than four months, and launching online filing for invalidation, opposition and 3-year-non-use cancellation applications within the year as well as online filing for the 9 subsequent matters for Madrid registrations by Chinese applicants; 3) continue to maintain the tough attitude against malicious filings, issue official guidelines in this regard, and accelerate the materialization of full process strategy on combating trademark hoarding and malicious registration behaviors.

  • On 13 May, the State Council Office of the Inter-Ministerial Joint Conference on the Implementation of Intellectual Property Strategy issued the “2020 Plan for the Further Implementation of the National Intellectual Property Strategy to Accelerate the Construction of an Intellectual Property Powerful State”, which joined more than 30 ministries and departments in the arrangements for the implementation of the national intellectual property strategy. The Plan include five major aspects: 1) deepening the reform of the intellectual property system, 2) reinforcing the protection of intellectual property, 3) facilitating the creation and utilization of intellectual property, 4) deepening the international exchange and cooperation in the field of intellectual property and 5) strengthening the top-level design and concrete implementation. The Plan set out 100 specific measures, each of which specifies the lead department and participating departments when it comes to implementation. Among these measures, trademark-related ones include, for example: 1) to further advance the “blue sky” initiative, cracking down on unlawful IP agents; 2) to speed up the launching of trademark infringement criteria; 3) to continue to carry out centralized enforcement actions against trademark and patent infringement and counterfeiting, with the focus on key markets, key areas and key products, and to increase case guidance and supervision; 4) to optimize the evaluation system for trademark examination quality, improving quality control of examination, to reduce the average examination timeframe to four months, to deepen the reform of facilitated trademark registration, to carry forward the electronization of trademark review, opposition and cancellation, to speed up the development of smart examination system, and to promote the use of AI technologies in examination; 5) to formulate a long-term mechanism for combating abnormal patent filings and malicious trademark applications and hoarding behaviors.

[1] “Fire God Mountain” and “Thunder God Mountain” are names of two newly-built special-purpose hospitals admitting COVID-19 patients only. “Li Wenliang” is the name of a doctor who contracted and died of COVID-19 after treating infected patients.