Green Shoots in China IP
China Case Law Annual
Review
Keeping up with Chinese IP law and practice is a key task for domestic and international brand owners. The “China Case Law Annual Review” serves as a valuable tool for that work. Ralph Cunningham reports.
The breadth of issues that administrative and judicial actions generate throughout China means that both domestic and international brand owners and practitioners need to pay close attention to the country’s intellectual property (IP) environment. This not only keeps them informed of developing law and practice, but also helps them tailor their approach to their own Chinese trademark protection strategies.
“The new trends were reflected by more than a million cases, and we selected six typical ones in the Report to help you understand and know them well. This is something you must know in the new stage of China trademark practice.”
- Christopher Shen | NTD Intellectual Property Attorneys (China)
China Case Law Update
The “China Case Law Annual Review,” published by INTA on May 2, is the result of an extensive editorial project highlighting key legislative and enforcement developments of recent years. These include the inauguration of China’s fourth specialized IP court, the Intellectual Property Court of the Hainan Free Trade Port, at the end of 2020.
The four authors of the Report will join INTA’s Chief Representative Officer (China), Monica Su, for the panel session China Case Law Update – Know Before You Go: Green Shoots in China IP (Tuesday May 16, 1:30 pm–2:30 pm), where they will focus on a few of the key developments and administrative and judicial decisions covered in the Report. It is the first of five regional case law updates in the 2023 Annual Meeting Live+ program.
The Update breaks down into four sections—absolute grounds for refusal and cancellation of a trademark; relative grounds for refusal and cancellation of a trademark; trademark infringement, limitation of rights, and defenses; and legal remedies—with each following a similar pattern where the team highlights topical provisions of Chinese trademark law, and subsequently discusses how the China National Intellectual Property Administration (CNIPA) and the courts have treated them in recent notable cases.
For example, the first section of the Report describes important trends in trademark substantive examination on absolute grounds over the past three years and highlights how absolute grounds examinations are used to combat bad faith filing and the expansion of the scope of eligible signs.
“CNIPA has clearly entered the stage of squeezing the bubble in all aspects, such as restricting the number of abnormal trademark applications, significantly intensifying the crackdown on trademark warehousing and bad faith registrations and applying a stricter approach in examining registrability and distinctiveness,” the Update states.
“This session will cover highlights from recent Chinese jurisprudence such as the new, more nuanced approach concerning letters of consent and clarifications on how rights and interests other than prior trademarks qualify as prior rights under the Trademark Law.”
- Helen Xia | Hogan Lovells (China)
Choosing Cases to Illustrate Key Trends
To illustrate these trends, the Report closely examines six cases.
“The new trends were reflected by more than a million cases, and we selected six typical ones in the Report to help you understand and know them well. This is something you must know in the new stage of China trademark practice,” says Christopher Shen, Senior Partner, NTD Intellectual Property Attorneys (China).
“In terms of relative grounds for refusal, the highlights from the recent Chinese jurisprudence were the new, more nuanced approach concerning letters of consent and clarifications on how rights and interests other than prior trademarks [e.g., prior name rights and merchandising rights) qualify as prior rights under the Trademark Law,” adds Helen Xia, Partner, Hogan Lovells Beijing (China).
Huang Hui, Partner, Wanhuida Intellectual Property (China), highlights the choice of cases to illustrate the issues of punitive damages for infringement and criminal litigation in this area: “The defendant in Wyeth has been using the registration as a cover for a long period of continuous infringement, while the defendant in the Ramplus case took advantage of the partnership it had with the plaintiff, especially the use of different Chinese translations of the plaintiff's trademark, to register the enterprise name. Vans involved the protection of non-traditional trademarks.
“We selected three cases of criminal protection from different perspectives: The STIHL case involved a civil claim for damages filed incidental to a criminal prosecution. The ABB case involves private litigation procedure, which opens a new way of relief for some cases with difficulties in public prosecution. The Bordeaux case involves the criminal protection of collective trademarks of geographical indications, which is a new means to increase the GIs protection,” noted Mr. Huang.
“Hardly a day goes by without a new IP legislation either being released for public comment or coming into effect (in China).”
- Monica Su | INTA (China)
2023 Annual Meeting Session
Ms. Su is looking forward to moderating a session that is sure to attract a diverse selection of international delegates. “I'm hoping our audience will be brand owners from around the globe, but Chinese participants are, of course, equally welcome. Hardly a day goes by without a new IP legislation either being released for public comment or coming into effect.”
