"IP"

Subscribe to "IP" via RSS

By Chen Changhui King&Wood Mallesons’ Intellectual Property Group

untitledAfter the Third Amendments to the Chinese Patent Law, Tort Liability Law (2009), Opinions on Further Strengthening Combat Against Infringement Upon Intellectual Property and Manufacture and Sales of Counterfeit Commodities (2011) issued by the State Council, the New Civil Procedure Law (2012), and Judicial Interpretation of Civil Procedure Law (2015) have been promulgated consecutively, and China is preparing to join The Hague Agreements Concerning the International Registration of Designs. For the purpose to enhance patent enforcements and adapt to these treaties, laws and regulations, the SIPO published Draft of the Fourth Amendments to the Chinese Patent Law (for public comments) on April 1, 2015. The Draft comprises substantive amendments to a total of 30 articles, including revisions of current 18 articles, addition of 11 articles, deletion of one article, addition of one chapter “Patent Enforcement and Application”, and adaptive wording amendments to or adjustment of two articles.

Main amendments to the current Patent Law in the Draft include the following aspects:
Continue Reading Main amendments in draft of fourth amendments to the Chinese Patent Law

By Mia Qu and Sally Wang     King & Wood Mallesons’ IP Litigation Group

qu_miaoAccording to the data of Chinese e-Commerce Research Center, by the end of 2012, the trading volumes of e-commerce market in China had reached 7.85 trillion. In 2013, it was 10.5 trillion and is expected to reach 13.4 trillion in 2014. From the industry distribution of e-commerce websites, the top ten industries are: apparel, textile, agriculture and farming, digital household appliances, machinery and equipment, chemicals and plastics, food and wine, construction materials, hardware and tools, medical treatment and medicine. Along with this phenomenon, the protection of intellectual property rights in the online sphere is also facing a whole new series of challenges. This article will focus on the discussion of issues of trademark infringement in e-commerce.
Continue Reading Common Issues of Trademark Infringement in e-Commerce and Enforcement

By He Wei and Wang Yaxi  King & Wood Mallesons’ IP Litigation Group

Introduction

As China’s cross-border technology trade develops, the number of disputes arising from international Intellectual Property contracts gradually increases. Many parties involved in international business prefer arbitration as their dispute resolution mechanism, because arbitration is confidential and its decisions can be enforced in different jurisdictions. Loads of international technology license agreements contain arbitration provisions whereby the parties agree on how to settle IP related disputes. IP disputes that will be arbitrated usually include: whether the licensee’s use exceeds the licensed scope; issues concerning the licensee’s disclosure of the licensor’s technology; and the licensee’s unauthorized sub-license of the licensor’s technology. The value of an IP right, as an intangible property right, lies in a right owner’s exclusive right to use the technology or business resources which constitute the subject matter of the right. Therefore it is essential for a right owner to maintain his IP right by prohibiting unauthorized use by others. Accordingly the use of injunctions plays a vital role in IP cases. China’s IP legislation now provides pre-action and interlocutory injunctions to give right owners provisional remedies, in the form of injunctions before and during the trial. In this way an owner can stop damage from occurring or escalating.
Continue Reading Applications for Injunctive Orders in IP Arbitration

By Manuela Finger 

Introduction

Germany is traditionally one of the most important markets for Chinese companies when it comes to IP. The number of Chinese companies targeting Germany to procure technology or to undertake M&A transactions is constantly increasing.

At the same time, the German IP enforcement system is having a considerable impact on doing business in Germany. On the one hand, it provides an efficient tool for rights owners while, on the other, the expeditious German enforcement system can have a severe commercial impact on newcomers to the market who may suffer in exhibitions in Germany from actions of rights owners. There are even court cases between Chinese companies and between other multinational companies that take place in Germany, possibly due to Germany’s IP enforcement system being recognised as effective and efficient. This brings both advantages and risks.

This article explains the German IP enforcement system and the most important aspects that both rights owners and potential defendants in IP disputes should consider when conducting IP-related business in Germany.
Continue Reading Doing IP in Germany – Advantages and Risks of the German IP Enforcement System

By Cecilia Lou  Ding Xianjie and Yao Di King & Wood Mallesons’ IP Legal Group Shang Hai Office

On November 12, 2012, the Consultation Draft of Regulations on Service Inventions (“Draft Regulation”) was released by the State Intellectual Property Office of China for public comments with immediate effect. The Draft Regulation was formulated for the purpose of protecting the legal rights and interests of the inventor-employee and the employer, to stimulate and improve the ability to innovate. For those companies which have Chinese service inventions in China, they should be aware of this Draft Regulation as it places additional pressures on employers.
Continue Reading SIPO Releases Consultation Draft of Regulations on Service Inventions

By Cecilia Lou  Ding Xianjie Yao Di  King and Wood Mallesons’ IP Legal Group

The current PRC Trademark Law (“Law”) was implemented in 1983, and revised in 1993 and 2001, and it has played a significant role in supporting the development of the PRC social economy since its implementation. However, the current Law is complained a lot in practice mainly because the registration procedure is fairly complex and time consuming, bad faith registration is common and difficult to stop and it provides insufficient protection against trademark infringement. Thus, The latest draft of revision of PRC Trademark Law Draft (“the Draft”) has been released and is currently open for any public comments until January 31, 2013. Generally speaking, the Draft addresses to the above mentioned issues.
Continue Reading Five Issues You should be Aware of the Latest Draft of Revision of PRC Trademark Law

By Susan Ning and Kate Peng

In August 2012, the State Administration for Industry and Commerce published the fifth draft of the Guidelines on Anti-Monopoly Law Enforcement in the Field of Intellectual Property (the “Draft Guidelines“). Although compulsory licensing is not expressly mentioned in the Draft Guidelines, many provisions therein seem to imply it being a possible remedy for relevant monopolistic conducts in the IP field. For example, where a dominant market player’s refusal to license has anti-competitive effects1, a compulsory license could be the right answer to the problem. However, the role to be played by the antitrust enforcement agencies in compulsory licensing is not clearly defined under the current legal system.

There are very limited provisions in the Chinese law with respect to compulsory licensing.
Continue Reading What is the role of an antitrust enforcement agency in compulsory licensing?

By Dang Zhe and Jiang Zhipei King & Wood Mallesons’IP Litigation Group

This spring has witnessed several important moves in copyright law related legislation in China. On March 31, the National Copyright Administration issued the draft of the PRC Copyright Law (Revised Draft) (the “Draft”)to gauge public opinion. Indeed the articles on copyright liability for ISPs caused heated discussion. On April 22, the Supreme People’s Court, in a similar attempt to gauge public opinion, issued the exposure draft of the Regulation of the Supreme People’s Court on Several Issues Concerning the Application of Law Involving Civil Disputes over Cases of Information Network Dissemination Right Infringement (Exposure Draft) (the “Exposure Draft”), which contains more comprehensive and specific provisions on the copyright infringement liability of Internet Service Providers (“ISPs”). Although these two documents are not in force yet, they can be assessed to better understand the legislative and judicial intent of the national copyright administration and the highest judicial organ on the copyright related legal liability for ISPs.
Continue Reading New Trends in Legislation on the Adjudication for Copyright Related Legal Liability for Internet Service Providers

作者：陈长会 蒋志培 金杜律师事务所知识产权组

在中国制造遍布全球的今天，走出去战略最核心问题是如何让品牌走出去。无论是中国制造还是中国创造，如果不注重品牌培育，继续使用他人商标，就难以摆脱随时可能被商标持有人“踢出局”的窘境。

多数走出去企业在发展之初并没有预见到将来能够有机会走出去，也没有足够资金和实力到海外注册企业、商标或域名，往往是等到准备走出去之时或者走出去之后才发现其名称、商标或域名早已存在或已被他人恶意抢注。最典型案例是海信集团与博西 “HiSense”商标纠纷以及国内某知名企业标识更换事件。借助于海信在国内行业地位以及中国市场在博西战略中份量，海信集团在国内舆论、学术界及政府各方努力下，最终与博西友好地化解了纠纷，拿回了商标权。而上述国内某知名企业则因原名泛滥采取更名策略，而新名称选择又欠妥，导致推广新标识代价巨大、困难重重。由这两个案例可见，解决企业名称、商标、或域名纠纷往往需要综合考量和高超技巧。
Continue Reading 走出去企业如何应对与品牌有关的知识产权争议

By Chen Changhui and Jiang Zhipei  King & Wood Mallesons’ Intellecutual Property Group

Chinese enterprises are progressively pursuing outbound investment strategy by expanding their businesses abroad. How to build the global branding of Chinese manufacturing is a key concern in China’s outbound investment strategies. If all Chinese-related exports, either “Made in China” or “Created in China”, continue to use the registered trademark of others without paying great attention to cultivating their own brands, Chinese exports are extremely likely to be kicked out by trademark owners in the international market.

Most Chinese enterprises don’t have immediate plan for outbound investment, or have sufficient financial strength to register enterprises, trademarks or domain names overseas in their early stage of development, and then find out their enterprise names, trademarks or domain names are already in existence or have been registered by others out of malicious cybersquatting.
Continue Reading Brand-Related Intellectual Property Disputes in Outbound Investment