21 October 2015, Baroness Neville-Rolfe gave a speech in London about the UK-PRC relationship in regard to IP, see here.
After summing up the achievements in this field by both states, she points to the room for improvements: “Of course, there is more to be done. We must ensure that the lessons learnt from these successes are incorporated into “business-as-usual” on Alibaba websites, including by: streamlining notice-and-takedown procedures; further enhancing pre-emptive filters to prevent criminal scale infringements from happening in the first place; and smoother linking of on- and off-line enforcement.”
Unfortunately, if one reads the IP chapter in the leaked TPP (5 October 2015), it seems that the tide is against a statutory obligation for online service providers to monitor the content of their servers:
“6. Eligibility for the limitations in paragraph 1 may not be conditioned on the Internet Service Provider monitoring its service or affirmatively seeking facts indicating infringing activity.”
Another panel was discussing “Hong Kong’s Response” on patent reform chaired by Mr. Thomas Tsang (photo: left), Assistant Director (Patents), HKIPD. First speaker of that panel was Ms. Charmaine Koo (photo: right), Partner and Co-Head of Deacons IP Department: She put Hong Kong’s lack of an independent patent system in perspective by remarking that Macao S.A.R. has an independent patent system, and that Hong Kong is in the same league as … Fiji and the Seychelles.
Ms Koo realistically sees many problems but, tried her best to provide the best arguments for the implementation of Hong Kong’s OGP. In general a perception by R&D companies that the level of protection and enforcement in Hong Kong is at a high level is important. In particular to OGP: Singapore’s GDP increased after the implementation of their OGP.
Ms Koo argued that if Hong Kong would do the examination and grant OGPs under Hong Kong law, and not under PRC or EU law, this could be beneficial to the needs of Hong Kong. It would be also interesting if SIPO would recognize Hong Kong OGPs in China. This could distinguish Hong Kong OGPs from Chinese patents by a higher standard in quality.
Professor Alice Lee, Associate Dean Faculty of law, University of Hong Kong advocated a culture of innovation which should start at school. This is a sound analysis: innovation cannot start early enough. Therefore, rote learning should make place for liberating education, which can lead to environment what provides room for experimenting and can incubate innovation.
Mr. Kenneth Yip, Vice President, International IP Commercialization Council (IIPCC) was looking into the future, and questioned the wisdom to invest into a new OGP system which might takes years, especially since nobody knows what will happen when the “two systems, one country” period of 50 years will expires, now after 32 years. Mr Yip points to the use of patents not for innovation, but for fundraising purposes and grants for professors and other researchers.
Dr. Yahong Li (photo: middle), Associate Professor, Faculty of Law, University of Hong Kong, demonstrated how innovation has been prioritised in the People’s Republic of China during the years.
– National Medium and Long Term Plan for Science and Technology Development 2006-2020, which declared sanguinely that China will become an innovation-based economy by 2020!
– The State Council “383” reform plan (2013), “Promoting innovation is one of the eight key reform priorities.”
– National Patent Development Strategies (2011-2020), “China will rank among the top two in the world in terms of the annual number of patents for inventions.” The total number of patent applications by 2015: 2 million. “The patent system has not become fully integrated with development of socialist market economy, and its role has not been brought into full play in guiding industrial restructuring and upgrading and promoting China’s innovation capacity.”
– Outlines of National IP Strategies (2008): “improving the capacity to create, utilize, protect and administer IPRs, and making China an innovative country.”
Professor Li’s conclusion that quantity of patents does not necessarily translate into innovation hits the nail on the head. She argued rightly that “national innovation and competitiveness eventually depend on true innovative culture and comprehensive innovation framework including the effective
mechanisms for tech transfer and commercialization.”
Professor Bryan Mercurio (photo), Vice Chancellor’s Outstanding Fellow of Faculty of Law of the Chinese University of Hong Kong discussed “Amending the TRIPS Agreement to Promote Innovation” and posed some interesting What if… questions.
Professor Mercurio went directly to the point:
Since there is no conclusive answer to the question whether IP stifles or stimulates innovation, scholarship gives a mixed results depending on a multitude of factors, he wisely recommends further research on the correlation or causal relationship between IPRs (particularly patents) and innovation, including indirect benefits for innovation which patent protection may provide.
Professor Mercurio recommends to re-evaluate the purpose of the TRIPS Agreement. Is innovation a core part of the Agreement? And one should consider adding more detail to Article 27 (1) so as to ensure that it compliments rather than hampers innovation.
Professor Mercurio poses the question whether the current scope and duration of patent protection is suitable for all industries and sectors or whether some differentiation would benefit innovation. Professor Rader disagreed and tried to illustrate it with an example about fat cells in your chest and that the invention cannot be caught by one technology but moves across technologies. It seems to me that Professor Mercurio’s one size does not fit all, makes more sense. One could for example make the duration dependent to the redemption date of the investment plus some profit.
Another sound proposal of Professor Mercurio is adding a more direct and enforceable mandate in TRIPS in regards to patent protection, competition and innovation.
After Dr. Marcelo Thompson (photo), Deputy Director, HKU Law & Technology Center chaired the panel discussing the Worldwide Patent Law Reform. Mr Timothy Hancock, President of Asian Patent Attorneys Association Hong Kong Group looked back the last three decades, when IP in Hong Kong was not the omnipresent field of law as it is nowadays, when Anton Pillar cases were frequent and when UK design rights automatically applied in Hong Kong. Mr Hancock explained that the use of the professional titles patent agent and attorney were controversial and would probably be regulated.
Mr Hancock’s Asian Patent Attorneys Association Hong Kong Group, the Law Society of Hong Kong;
and the Hong Kong Institute of Trade Mark Practitioners do not see a business case for having an OGP system. In contrast, the Hong Kong Institute of Patent Attorneys and the Hong Kong Institute of Patent Practitioners think it is beneficial for HK.
Dr. Jasemine Chambers (photo: right), Of Counsel, Wilson Sonsini Goodrich & Rosati, P.C., gave an overview of the implementation of the American Invent Act (AIA) which became effective in September 16, 2011 (PL 112-29). Dr. Chambers made clear that the AIA was the most significant patent reform in the U.S. since 1836, or at least the Patent Act of 1952. The AIA transitioned the U.S. from a first-to-invent to a first-to-file country (effective in March 16, 2013), it defines prior art (more broad) and grace period (more narrow). The goal of the AIA is to encourage innovation and create jobs. Dr. Chambers described the difficult creation of the AIA, which took 10 years. See more here: http://www.aipla.org/advocacy/congress/aia/Pages/summary.aspx.
Professor Randall Rader (George Washington University School of Law), former Chief Judge of the United States Court of Appeals for the Federal Circuit, who is now busy working as an arbitrator gave the keynote speech “US Patent System and the Lessons to Hong Kong”.
Professor Rader gave example of the blessings of the patent system by pointing to cancer research. Not only one cannot map the genome of healthy cells but also of cancerous cells. In the latter case there are many anomalies in the cell. Because there are so many, not one single inventor can come up with all medical solutions. Professor Rader argued that the patent system is crucial not only because it is a way for inventors to get a loan at a bank or be rewarded and continue their research, but because of the disclosures intrinsic to the patent system it is the way for other researchers to learn about the research and to collaborate and be linked to other scientists. Therefore the Hong Kong patent system can be a conduit for facilitating this international collaboration.
Most learning, Professor Rader, asserted goes incrementally, little by little. Unlike insights by people like Einstein, who happened to be a patent examiner at the Swiss patent office. Professor Rader pointed out the relation between Einstein’s work to examine the transmission of electric signals and electrical-mechanical synchronization of time, and his thought experiments that led him to his conclusion about the nature of light and the fundamental connection between space and time.
“Maybe the next Einstein was born in Manila or Hong Kong and can be identified by the patent system.”
Professor Rader argued that successful corporations can be identified by their IP. From idle ideas to profit via the patent.
According to Professor Rader Hong Kong is well positioned to a centre for adjudication, since the special administrative region has one foot in common law and one foot in the civil law.
Professor Rader argued that the grant of a patent to the inventor was a fundamental human right: dignity to the inventor for a valuable contribution to society, in many times a life’s endeavour.
For Professor Rader the question whether patents are stimulating or stifling innovation is unequivocally clear: each patent that is granted should by definition be an advance over the prior art. Professor Rader asserted that there is no such thing as the tragedy of the anti-commons in regard to inventions in biomedical research, and, referring to an article by Michael Heller and Rebecca Eisenberg “Can Patents Deter Innovation? The Anticommons in Biomedical Research” Science 280, 698 (1998), https://www.cornellcollege.edu/dimensions/workshops/reading-group-resources/science-280.pdf, said that it could not be proofed. However, I think it was Heller and Eisenberg’s goal to signal potential problems with the patent system. Therefore, one can argue that there is also no conclusive proof that the patent system is only beneficial for the creation of innovation.
After some welcome words of Professor Michael Hor (photo middle), the relatively new Dean of the Faculty of Law of HKU, Professor Paul Cheung (photo: right), Associate Vice President, Director of HKU Tech Transfer Office, talked briefly about the relationship of patents and innovation in China. He argued that the growth in the Chinese patents was indicative of the growth in innovation. (I would like to add to Professor Cheung’s words that the lion’s share of the patents or utility model patents and not invention patents, and that the quality of the patents might be very low since provincial and municipal governments provide subsidies for patents. A better yardstick might be the registration of patents by Chinese persons and companies abroad).
Then Ms Ada Leung (photo), the new Director of Hong Kong Intellectual Property Department (IPD) spoke about the 2011 public consultation on plans for the introduction of an Original Grant Patent (OGP) system in Hong Kong. At the moment the IPD can only re-register patents that were examined and granted by the Office for the Harmonisation of the Internal Market (OHIM), United Kingdom’s Intellectual Property Office (IPO) or China’s State Intellectual Property Office (SIPO). Via the public consultation the IPD is listening to the arguments of scholars, practitioners, interested parties and the public to find out the following: – whether Hong Kong IPD should be able to register OGPs, next to re-registering patents that have been granted by OHIM, IPO or SIPO; – and in case the answer is yes, whether Hong Kong should be able to do the examination themselves, which means acquire the knowledge and experience, or outsource it to a place that has the knowledge and experience. Ms Leung announced that in the first half of 2015 a new bill will be announced, which takes into account the comments of the public consultation. It seems that Hong Kong will choose for an OGP system next to the possibility of re-registration and is willing to build up the expertise in examination from scratch. Ms Leung told that the plan is that SIPO will help IPD with building up the expertise. This is a surprising choice given SIPO’s backlog and the alternatives of places that can help Hong Kong up to speed to set high standards of examination so that quality patents will be granted. See more of the Worldwide Patent Law Reform and Hong Kong’s Response Workshop here: http://www.ipdragon.org/2015/01/17/worldwide-patent-law-reform-and-hong-kongs-response-hku-workshop/.
University of Hong Kong Law & Technology Centre and the Intellectual Property Department of Hong Kong organized the IP Forum 2015 on 16 January 2015 at HKU. The topic was “Patent and Innovation: Worldwide Patent Law Reform and Hong Kong’s Response”. The question that would be raised was, and hopefully answered was: “Can patent promote innovation?” Just as the poster announcing the event promised the forum/workshop brought “international and local patent law scholars and practitioners to explore the patent law reform around the world and Hong Kong’s proposed change to introduce an “original grant patent” system, and to discuss how these changes may be conducive to innovation.”
The Third Amendment to the Trademark Law, which, together with the revised Trademark Regulations, came into effect May 1st, 2014, in combination with the Well-known Trademark Recognition and Protection Regulations stipulated by the State Administration for Industry and Commerce (SAIC), came into effect on May 17, 2014, will clarify among other things:
– The routes to get recognition of one’s trademark as well-known, so that one’s trademark will benefit from the extended protection;
– Well-known trademarks can no longer be used as a promotional tool;
– The threshold for well-knownness.
The preliminary question is why we need well-known trademarks?
The idea of the well-known trademark doctrine can be seen as a correction to the territoriality principle of trademark law. This is especially useful if proprietors have been relying on unregistered marks if they are coming from a first-to-use country, only to find out that in the first-to-file markets, such as China, where they would like to become active, their marks have already been registered. Or if they have never used a trademark in a country (in case of first-to-use countries).
At the 1925 revision of the Paris Convention for the Protection of Industrial Property at The Hague in the Netherlands, it was decided that holders of marks should be protected against registration or use of a trademark for identical or similar goods which constitutes a reproduction, imitation or translation and which can create confusion of a registered or unregistered but used mark that is considered well-known by the competent authority of the country (Art. 6bis(1) Paris Convention).
Article 16(2) TRIPS extended Article 6bis Paris Convention (Stockholm Act of 1967) to services, and according to Art. 16(3) TRIPS to dissimilar goods or services, as long as the mark would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use (indicating protection against trademark dilution).
In short, each WTO member should protect:
– Unregistered well-known marks against misrepresentation by an identical or similar trademark for an identical or similar goods or services;
– Registered well-known trademark against misrepresentation or misappropriation by an idential/similar trademark for identical/similar or dissimilar goods or services.
What are China obligations in regard to the protection of well-known trademarks?
China has made it clear in Article 14 Trademark Law 2014 that to the recognition and protection of well-known trademarks should be applied using the passive protection principle, a necessity check and on a case-by-case basis. The passive protection principle means that, although Art. 6bis Paris Convention allows the refusal or cancellation of a trademark “ex officio” (which means that the competent authority, by virtue of the office, can take the initiative) in case of a well-known trademark, but China chooses not to permit this in their legislation. Only the trademark holder can request the protection of a well-known trademark.
The necessity check means that the Trademark Office (TMO), Trademark Review and Adjudication Board (TRAB) or people’s courts first need to look for alternative ways to solve the problem, for example if possible solving the case as a conventional infringement case. Well-known trademark protection should remain a last resort for the Chinese authorities. To deal with well-known trademark protection on a case-by-case basis was already the mode of operation.
Routes to well-knownness: who determines what a well-known trademark is in China?
This depends on the timing of this question:
During the examination phase: the TMO can assess whether the trademark is well-known at the request of the applicant.
During an alleged infringement case: when an AIC is investigating, the TMO can assess whether a trademark is well-known, at the request of the trademark holder.
During opposition/concellation: the TRAB can assess whether a trademark is well-known at the request of the trademark holder.
During litigation: the trademark holder can directly request the court in case of an infringement, or request the court during an administrative appeal to assess whether his/her trademark is well-known .
Be a well-known trademark, but do not shout it of the roofs
Until recently the words “well-known trademark” (驰名商标), in both Chinese and English, could be found on bottles and cans of Qingdao beer (click here). However, times have changed. Apparently there was massive abuse, and therefore the government decided that well-knownness of a trademark cannot be used for promotional purposes. Read the explanation of Wu Qun, vice inspector of TMO under SAIC here.
“Thoroughly known” is a higher threshold than “generally known”. Dropping the seemingly redundant “and enjoys a high reputation in the trademark”, seems to have no influence on the threshold, unless one interprets “high reputation” as a positive connotation, in which case the thresholds can be interpreted also lower, since one no longer has to proof this.
(1) the degree of knowledge or recognition of the mark in the relevant sector of the public;
(2) the duration, extent and geographical area of any use of the mark;
(3) the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
(4) the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark;
(5) the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities;
(6) the value associated with the mark.
Leah Chan Grinvald argued in A Tale of Two Theories of Well-Known Marks, that case law in both China (see for example Ferrari vs Jiajian 2007) and the U.S. predominantly apply the Interactional Theory of Consumer Recognition instead of the Passive Perception theory, even though this goes beyond the threshold stated in Art. 16(2) TRIPS and except for Factor (1) of Art. 2(1)(b), Factors (2) to (6) all apply the Passive Perception Theory.
The Passive Perception theory views well-known trademarks as having acquired a unique status. Grinvald referred to Frederick W. Mostert, who argued in Well-Known and Famous Marks: Is Harmony Possible in the Global Village?(86 TRADEMARK REP. 103, 116–17 (1996)) that the evidentiary standard is quite low for internationally well-known trademarks with a presumption in favor of the foreign well-known mark. Instead, the Interactional Theory of Consumer Recognition needs to demonstrate some type of consumer-interaction with the trademark; such as purchases, inquiries, or website activity, according to Grinvald. In light of this distinction the 2014 threshold “thoroughly known” might point to a formalisation of such an interactional theory.
To register one’s trademark in China is preferable over relying on the well-known trademark protection. However, trademark holders should continue to monitor Chinese character versions of the trademark, and register defensively those that are obvious transliterations or phonetic transcriptions.
I will give a course in Transnational Trademark Issues using the Budweiser Conflicts as an illustration, in the China Club Building (9th floor), in Central Hong Kong, this May 17, 2014 between 14.30-17.45.
The Report of the Commission on the Theft of American Intellectual Property which was written in May 2013 by Dennis C. Blair (former Director of National Intelligence and Commander in Chief of the U.S. Pacific Command) and Jon M. Huntsman, Jr (former Ambassador to China, Governor of the state of Utah, and Deputy U.S. Trade Representative) includes the following sentence:
“In China, where many overseas supply chains extend, even ethical multinational companies frequently procure counterfeit items or items whose manufacture benefits from stolen IP, including proprietary business processes, counterfeited machine tools, pirated software, etc.”
One questions how many counterfeits an “ethical” multinational company should procure before it is not considered an ethical multinational company in the eyes of the commission.
The University of Hong Kong organizes the conference ‘Charting the New Frontiers of Intellectual Property Protection of Fashion Brands and Designs’ May 10, 2014. See the programme here. continue reading…
A never ending scholarly debate, put on the agenda by Professor Keith E. Maskus many years ago, about whether intellectual property rights harness or hinder Economic Development including Foreign Direct Investment from North (developed countries) to South (developing countries) has been enriched by Yuan Wang and Huanxing Yang (both Ohio State University, Department of Economics) with some interesting insights.
In their article ‘Foreign Direct Investment Cycles and Intellectual Property Rights in Developing Countries’ Wang and Yang distinguish between short and long run effects of IPR in developing countries.
Their model generates FDI cycles:
“[N]ew FDI, which brings new generations of products, occurs only when the technology gap between the South and the North exactly reaches some threshold. The FDI cycle length captures how frequent new FDI occurs, and in general determines the technology gap between the North and the South. Within this framework, we identify the short run effect and the long run effect of South IPR. In the short run (within each FDI cycle), a stronger IPR tends to discourage imitation and reduce South welfare. However, in the long run (across FDI cycles), a stronger IPR tends to reduce the FDI cycle length (FDI becomes more frequent) and increase South welfare.”
The authorse gave the following example of a FDI cycle in the automotive industry Volkswagen Passat’s production in China (see more here):
“Volkswagen Passat B2 was introduced in Europe in 1981. Its variant Santana has been produced in China since 1986, and another variant Quantum was produced in Brazil from 1985 to 2002. In late 1980s, new generations of Passat, B3 and B4, were introduced in Europe (1988) and North American (1990). But they were never produced in China, and Volkswagen started to produce them in South America only after 1995. However, shortly after the newer generation of Passat, B5, was introduced in 1996 in Europe, Volkswagen started to produce it in China. ”
However, the big improvements in IPR in China came in the run up to WTO membership in 2001 and afterwards, so this example is probably in need of an update.
The conclusion of the study confirms previous findings that developing countries, and especially least-developed countries, each have different IPRs requirements to maximize their welfare.
According to Wang and Yang:
the “North does not always benefit from an increase in the Southern IPR. This is because an increase in the Southern IPR might reduce the equilibrium cycle length. In this case, FDI would occur more frequently, which reduces the expected length of the monopoly of any existing FDI, or the competition among different generations of the Northern FDIs is intensified.”
The Institute for Globalisation and International Regulation (IGIR) of the Maastricht University, led by Professor Anselm Kamperman Sanders, has organized this year a IEEM IP Seminar 2014 on Trade Secrets, Restrictive Covenants and the Knowledge Economy, Macau Cultural Center, May 19-20, 2014.
Then May 21, 2014, the Advanced Professional Update will be held (Programme for the IGIR -IEEM IPKM 2014) in association with the Hong Kong Intellectual Property Department. Read here more. continue reading…
In 2006 Professor Justin Hughes of Cardozo Law School wrote one of the defining articles on Geographical Indications: “Champagne, Feta, and Bourbon: The spirited debate about geographical indications”, you can find here and an excellent presentation here. In his presentation Professor Hughes also mentions the Budweiser cases, starting at 42 minutes see here.
Dr. Christopher Heath of the European Patent Office, wrote a great chapter about “The Budweiser Cases: A Brewing Conflict”, in Christopher Heath and Anselm Kamperman Sanders (eds) Landmark Intellectual Property Cases and Their Legacy, 2011, 181-244, see here.
Inspired by Hughes and Heath this author is teaching on March 8, 2014 a CPD course (3 points) in Hong Kong for The Profectional Company, see here, on these Budweiser cases, since they are a great tool to teach about the following topics:
Rationales of Trademark Law
By the end of this course the participants will know the rationales of trademark law, the essential function of trademark against confusion or a likelihood of confusion: source of origin, quality and product distinctiveness and their derivatives; the doctrines of sponsorship and affiliation confusion, initial-interest confusion, post sale confusion and reverse confusion will be all explained.
Beside the “essential” function, the participants will also learn about the communication, advertisement and investment functions, and the measures against trademark dilution or a likelihood of trademark dilution, which can be crucial for the trademark proprietor. There are two branches of the trademark dilution doctrine, which will be illustrated by relevant case law: trademark dilution by blurring and trademark dilution by tarnishment.
Characteristics of Trademarks
Trademarks will be discussed in regard to different categories, each having very different characteristics: registered/unregistered, inherently distinctive/acquired distinctiveness, well-known/famous/reputable, collective/certification, appellation of origin/geographical indication.
New Challenges for the Trademark
First the history of trademark infringement and trademark dilution will be highlighted in order to better understand the present situation. This course will then elaborate on the challenges of two fundaments of trademark law; territoriality principle in regard to globalisation and the internet, and the specialty principle and the problems related to the Nice Classification. Alternative systems will also be reviewed.
Relevant Treaty Law for Geographical Indications
The course will explicate how collective/certification trademarks, Paris Convention, TRIPS and Lisbon Agreements are relevant for the protection of Geographical Indications, the similarities and differences in the different jurisdictions will be discussed. The participants will understand the relation and conflict between a normal trademark and a Geographical Indication.
European Intellectual Property Law
This course includes a primer on EU IP law; the participants will understand the difference between regulations and directives, and how the National Courts of the EU, the European Court of Justice/Court of Justice of the European Union and the Advocate General of the CJEU and their relationships.
The Budweiser Cases
After comprehending the aforementioned building blocks of the course, the participants will fully appreciate and comprehend the rich case law on the manifold Budweiser legal conflicts which will be reviewed. By the end of this course, the participants will have an up-to-date knowledge of the ECJ/CJEU decisions and even an ECHR (human rights) judgment in regard to the Budweiser cases.
A Team of law students, who are members of the Intellectual Property law Fellowship at the Thomas Jefferson School of Law in San Diego, California, are working on a Research Project directed toward aiding patent attorneys in developing international patent filing strategies for biotechnology and pharmaceutical companies. With the help of IP Dragon readers, the Team is working to amass statistically significant survey data on the countries patent attorneys are filing patents in for their biotechnology and pharmaceutical clients most often, and the factors considered when making the decisions to file.
As China institutes the universal healthcare program and modernizes its economy, the demand for biotech and pharmaceutical products will likely increase. With increased demand, the market competition and incentive for companies to patent their research and products will likely increase as well. Once the results of the survey are published, policy makers will have more information on the factors patent attorneys from different countries consider most important when making their filing decisions. The results will also give Chinese patent attorneys better information as to where in the world they can promote their legal services and partner with foreign law firms for patent applications being filed in China. Responses from Chinese patent attorneys will be particularly valuable to see where the growing life sciences sector in China intends export its new products.
The survey is open to patent attorneys from any country who prosecute patents in the biotechnology of pharmaceutical sectors. The survey can be found by following the hyperlink below. All personally identifiable information will be kept confidential. It should take approximately 15 minutes to complete. As a token of our gratitude for completing the survey, respondents have the voluntary option of entering in their email address to receive the survey results when they are released, and to be considered in a drawing for one of several gifts.
If you would like more information or have any questions about this project please visit: http://www.tjsl.edu/news-media/2013/10478 or email one of the team members directly at: email@example.com. The results of the survey will be released on April 11, 2014, in San Diego, at a public seminar event with panel discussions on the evolving field of international patent law.
Thank you for your time and thank you to IP Dragon for allowing this guest post.
Baidu Inc. and QVOD were each fined 250,000 RMB on December 27, 2013 for copyright infringement by the National Copyright Administration of China (NCA) and had to enjoin their infringing activities. The NCA started the investigation on November 19, 2013 after receiving complaints from Youku Tudou (since the merger in 2012 China’s biggest video website operator), LeTV, Sohu, Tencent, MPA, CODA, Wanda Films and Enlight Media; that Baidu Video, Baidu TV Stick, Baidu Yingyin media player and Baidu Video mobile app had infringed their copyrights. The complaints were also directed against QVOD, another software video player.
The Global Times reported that the 250,000 RMB was the highest fine the NCA could give to Baidu and QVOD. However, this would be only correct if the illegal earnings were no more than 50,000 RMB. If the illegal revenues exceeded 50,000 RMB the maximum is five times the amount of the illegal revenues, and they can also confiscate the equipment such as computers that is mainly used to provide the network service. See Articles 18 and 19 Regulation on the Protection of the Right to Network Dissemination of Information (updated February 25, 2013 by Bridge IP Law).
Wang Fan wrote for the China Daily here about a campaign to deter illegal streaming of unauthorised videos in June, when 20 video website operators had to submit documents to the NCA to demonstrate that they had authorisation to stream 2,374 different films and television programmes.
250,000 RMB? What happened to the claim of 300 million RMB?
The administrative route is a relatively time and costs efficient mode of enforcement in China, but it lacks the remedy of compensation of damages. Therefore it was to be expected that on November 13, 2013, a consortium of video companies announced at a press conference at the Beijing Shangri-La that they were going to file a lawsuit against Baidu and claim 300 million RMB in damages. Paul Bischoff of Tech in Asia reported that Youku Tudou (since the merger in 2012 China’s biggest videosite), LeTV, Sohu, Tencent, CODA, Wanda Films and Enlight Media and other video companies were unified in the “China Online Video Anti-Piracy Alliance”.
According to Eric de Fonenay of MusicDish, Capital Copyright Industry Alliance Capital Protection Division, the China Radio and Television Association of the Television Production Committee, and many Chinese production companies gave acte de présence, see here. The Motion Picture Association of America (MPAA), Sony Pictures Entertainment, Warner Brothers, Disney and Paramount were present too, see here, although, according to Brid-Aine Parnell of The Register, the MPAA did not join the copyright infringement claim, see here. Ms Parnell wrote also that the alliance had tried to negotiate with Baidu, to no avail, because according to her Baidu would not agree to rules on violating copyright unless QVOD did the same.
Baidu argued that it took already four steps towards mitigating piracy: Research and development into an automatic piracy filtration system; Open complaint channels where a 24-hour team reviews reports of pirated content and consequently removes it; recommending high quality genuine content to steer users away from pirated material and Baidu’s web search will stop linking to pirated video sites.
Copyright infringement? Taking unfair advantage?
According to Global Times’ Li Qiaoyi Baidu and QVOD were “identified as the top two violators of copyrighted video content for 2013” by Yu Cike, head of the department of copyright management, of the NCA.
The claim against Baidu and QVOD was that they deeplinked to copyrighted videos without authorisation: in other words that copyrighted content of third parties were directly accessible via Baidu or QVOD video players. This way, the rights holders were deprived of their right to communicate their works, performances or audio-visual recordings to the public (conform Article 8 WIPO Copyright Treaty to which China is a member since 2007, compare the language used in Article 26 Regulation), and internet users never had to visit the third parties’ sites, and devoid of advertisements on those sites. At the same time Baidu and QVOD were taking unfair advantage of the content, storage and bandwidth of the rights holders of the videos.
One can argue that the CJEU rule that “transmission and retransmission of works (even where those [users] streaming the content were legally permitted to view the original broadcast) constitutes a “communication to the public”, can be applied in this case as well. Read Annsley Merelle Ward’s analysis at IP Kat.
China has safe harbour provisions for online (network) service providers against secondary liability in case of copyright liability, comparable to the DMCA in the US (the E-Commerce Directive in the EU works horizontally, and is applicable to trademark infringements too, and is not just applicable to copyright infringement, anti-circumvention and technological adjuncts). Articles 18 (1) and 19(2) Regulation state that the network service provider is liable for copyright infringement if it is providing works, performances, or audio-visual recordings to the public through the information network without permission; and is obtaining economic benefits. The safe harbour provisions are not providing immunity against liability in case of actual or constructed knowledge, see Articles 22 (3-4), 23 Regulation.
Another claim was that Baidu provided access to video sites that host pirated content and do not have official licensing to operate in China. It was also stated that Baidu was profiting from advertising revenue sharing agreements with such sites.
Professor Eric Priest of the University of Oregon School of Law sets out in ‘The Future of Music and Film Piracy in China‘, that the conflicts about piracy of videos (at least for the part that are permitted by the Chinese authorities) could be prevented if China would apply an Alternative Compensation System (ACS) (where for example a percentage of the costs of an internet subscription via a fixed line of mobile will be redistributed to the rights holders in the relation to the usage of their works). The future Professor Priest outlined in his 2006 publication in Berkeley Technology Law Journal, is still worth considering today. The Institute for Information Law (IViR) in Amsterdam is doing a comprehensive study between 2012 and 2015 on ACS under the guidance of principal investigator Professor P. Bernt Hugenholtz, see here. continue reading…
This course will provide an insight into transnational trademark law. The trademark law in Hong Kong will be used as a reference point: to clarify the differences and similarities between the Hong Kong, EU and US systems.
The course will illustrate transnational trademark law in the process via the ongoing legal battles between the US and Czech beer breweries in many jurisdictions all over the world. Rationales of trademark law, trademark categories and new challenges for the trademark are building blocks to comprehend the cases that will be used. The case law, including that of the CJEU, makes clear that beside trademark law, EU regulations about Geographical Indications, the Lisbon Agreement to Protect Appellations of Origin, contract law and bilateral agreements are all relevant factors to the matter.
If you are interested in IPR, CPD points or beer, this course is for you. At a great location: The Chinese Club of Hong Kong in Central. See the curriculum of The Profectional Company course, and participate now here.
China’s increasing economic power keeps on rumbling. While the US and UK seemed like identical twins in regard to foreign policy during the Bush-Blair era, recently the Anglo-American unity in regard a policy towards China seems to be diverging. David Cameron, the UK prime minister and leader of the Conservative Party, has jumped on the seemingly unstoppable train of China’s economic successes (according to Cameron: “Last year China became the world’s largest trading nation. Next year China is set to become the world’s largest importer of goods and later this century it will become the world’s biggest economy.”), while the US and also the other EU countries, seem to be more circumspect.
Cameron’s message to open up the EU for trade with China coincides with the UK’s biggest trade delegation ever to visit China (131 persons). The IP industries are well represented: executives from the automotive industry which is IP intensive (Jaguar Land Rover), Royal Dutch Shell (patents), GlaxoSmithKline (patents), TalkTalk (music copyright) and the football Premier League (copyright and broadcasting rights), TV producer Peter Bazalgette (formats/copyrights), etc., read more here.
See James Chapman’s article ‘China’s an opportunity, not a threat, gushes Cameron: PM uses interview to say nation’s rise is a ‘defining fact’ of our age – even if the West doesn’t like it’ for the Daily Mail, see here.
Chapman wrote: “Mr Cameron is also promising to speed up the process for patents so that businesses concerned about the economic impact of intellectual property infringement in China, estimated to cost from tens of millions to several billion pounds. In 2012, 1 in 4 UK businesses were put off doing business overseas due to concerns around intellectual property theft.”
Gary Locke, the US ambassador to China, articulated a similar concern perceived by US businesses that operate in China. According to Edmond Elococo: “There is still a long road ahead before right holders in China can feel confident that their IPR will be both fully protected under the law and effectively enforced,” Locke told the 2013 U.S. Ambassador’s Intellectual Property Rights Round-table. At the same time, he said China’s enforcement regimes are “clearly moving in the right direction.” Elococo’s article for Bloomberg News here, and he notes that Locke argued that China’s IP lacks transparency and consistency (which is a recurring theme at IP Dragon and in ‘Paper Tiger or Roaring Dragon, China’s TRIPS Implementations‘).
David Cameron, UK Prime Minister
The differences in emphasis might be summarised as follows: The UK sees the status of China as an economic superpower as a fait-accompli or at least a seront accomplies and even though UK businesses perceive that their IP is not adequately protected in China, the UK government does not want to pressure China to improve its IP regime and implicitly seems to encourage the UK businesses to find a way to deal with it. And regardless the effectiveness of China’s IP regime, the UK is advocating an EU free trade agreement with China. Chapman argued that other EU countries feared that this will result in cheap and fake products originating from China flooding the EU market.
The US government is stating more neutrally that China’s IP is transparent nor consistent and that US rights holders do not feel confident that their rights will be effectively protected and enforced, and it seems not to be afraid put pressure on China to further improve its IP system.
Locke’s remarks proved to be sensitive for Foreign Ministry spokesman Qin Gang: “We hope that the U.S. can be more objective and fair in understanding this. We hope that relevant countries can strengthen dialogue and not keep applying pressure and blame.”
In your opinion, what will be the most successful approach to improve IP enforcement in China: more trade or more political pressure? And is it fair that the UK government is not willing to exert pressure, and therefore probably landing lucrative trade deals with China, but if US pressure is successful it benefits from this as well?
Gary Locke (US Ambassador to China, since 2011) and John Locke (English philosopher of the Enlightenment and writer of Two Treatises of Government, which includes Locke’s theory on property, 1689) two advocates of the protection of property, which one can argue includes intellectual property rights. continue reading…
At the HK/EU Expert Conference on cooperation in protecting and developing IP and brands at the beginning of this month, Peter Cheung, director of Intellectual Property Department (IPD) of Hong Kong SAR, is demonstrating that he is a man of all seasons in regard to encouraging smell marks in Hong Kong. Under the name Fragrant Hong Kong, which is a well chosen pleonasm since Hong Kong already means “fragrant harbour”, each season has its own activities to raise awareness about and interest in smell marks, see here, suggesting that a company can provide a good with different smells for different seasons. One of the non-traditional marks Hong Kong allows is the smell mark (Cap. 559 Trade Mark Ordinance of Hong Kong, Section 3(2). Like any trademark it should be distinctive. Applicants cannot just provide a chemical formula, but must also give a description that is clear for members of the public looking at the electronic register exactly what the mark is being applied for.
香 heung/xiang= fragrant
港 gong/gang = harbour
香港= Hong Kong (En), Heung Gong (Cant.), Xiang Gang (Cn)= fragrant harbour
The IPD’s philosophy is that companies can compete using all sensory stimuli in their goods and will organise the Global Sensory Branding Forum in Hong Kong in 2014. continue reading…
During the IP HK-EU Series 2013 Expert Conference, which was entitled “Hong Kong – European Union Cooperation in Protecting and Developing Intellectual Property and Brands: Current Situation and Future Trend”, September 2 at the Hong Kong Baptist University, Albert Ho, Assistant Commissioner, Intelligence and Investigation Branch, Hong Kong Customs and Excise, shared some great ideas that would help right holders worldwide enforce their rights in Hong Kong.
Innovative rights holders can stay one step ahead the producers of counterfeits, but they have to inform the customs of how to distinguish between genuine and counterfeit products. The practice was that a representative of the rights holders goes to the customs and checks whether the products are genuine or not, or gives the customs training to be able to do this by themselves. Hong Kong Customs and Excise has been thinking outside of the box about ways that rights holders outside Kong Kong can help determine Hong Kong Customs what is counterfeit.
Hong Kong Customs and Excise is developing electronic recordation of the goods;
A video-link could be established between Hong Kong Customs and the rights holder, so that the latter can virtually examine whether the goods are counterfeit;
The rights holder can send the design file of their product which includes some indicators that distinguish genuine from counterfeit to Hong Kong Customs, which they subsequently can print out via a 3D printer.
In the wake of a prostitution scandal involving a famous investor (Xue Manzi) and the trial of the former secretary of the Communist Party in Chongqing on the suspicion of corruption (Bo Xilai), the Chinese government via the People’s Daily urged popular Weibo accounts (China’s version of Twitter) that have more than a million followers (also known as 大 V (Big Verified) Weibo users) to take the national interest into account when tweeting. Read Brian Spegele’s article for China Real Time (WSJ) here.
By listening to what the population is tweeting and sometimes to act upon public outcries the Chinese government is experimenting with a selective direct digital democracy. But as the exhortation in the People’s Daily shows it wants to use the Chinese twittersphere not just passively but also actively as an instrument to influence the people.
Read Danny Friedmann, Paradoxes, Google and China – How Censorship Can Harm and Intellectual Property Can Harness Innovation in GOOGLE AND THE LAW: IT AND THE LAW, (Aurelio Lopez-Tarruella, ed., TMC Asser, 2012), here.
Tesla Motors planned to sell its Model S in China as of 2013. It’s already doing so in the U.S. and Europe. However, the sale of the cars, made in California and the Netherlands, have been stalled allegedly partly by a trademark squatter/troll or more politically correct “an entity using the trademark not in a trademark sense”. Reuters wrote that Zhan Baosheng registered the Chinese trademark in 2006 for a logo at Jinda Trademark agency in Guangzhou, that seems identical, apart from the TESLA lettering which is a bit different. The car on the Zhan’s Tesla Motors site is similar to Tesla Model S, is likely to confuse consumers and it seems not too difficult to claim copyright infringement.
Account shall be taken of the following factors in the establishment of the well-known mark:
1. reputation of the mark to the relevant public;
2. time for continued use of the mark;
3. consecutive time, extent and geographic area of advertisement of the mark;
4. records of protection of the mark as a well-known mark, and;
5. any other factors relevant to the reputation of the mark.
The trademark Tesla has been used since 2003. One can argue that at least the last 7 years it has a reputation world wide in the market for electric cars. One can also argue that the defendant by setting up a site with copyright infringing computer renditions of a car similar to Tesla Model S has not really made use of the trademark in the trademark sense (has not made use of the trademark in the course of trade). Article 41 Trademark Law explicates that if a well known mark was registered in bad faith the limitation to dispute the approval of a trademark with the Trademark Review and Adjudication Board (TRAB) does not count.
Read also Reuters’ article written by Norihiko Shirouzu and Samuel Shen here. More about Well known trademarks in China, read Wan Jun’s terse article Well-known Trademark Certification: Practical Thinking of “Dual-track System” in China IP Magazine, here. Or Jing “Brad” Luo & Shubha Ghosh”s scholarly work “Protection and Enforcement of Well-Known Mark Rights in China: History, Theory and Future” in the Northwestern Journal of Technology and Intellectual Property 2009, see here.
UPDATE (August 7, 2014) : The China Daily reports that Tesla’s CEO Elon Musk and Chinese businessman Zhan Baosheng came to a settlement and resolved the trademark dispute, read here.
China and Indonesia just signed a Memorandum of Understanding (MOU) on IPR cooperation, see here. In regard to the necessity of the protection of traditional knowledge and genetic resources China has found an ally in Indonesia.
Peter Leung of Managing IP wrote the blog post Intellectual Property with Chinese characteristics about China’s more assertive stance in regard to international IP standards. That while smaller countries work to comply to international IP standards, “China, while also doing that, has also the clout to change the standard themselves.”
It will be interesting to watch whether cooperation with countries such as Indonesia can help in accomplishing China’s goal of establishing traditional knowledge and genetic resources as an international IPR norm.
Where in China are my intellectual property rights most safe, or where in China can I enforce my IPRs best in case of an infringement or commercial dispute? To answer these questions one should ask first where is intellectual property most developed in China? You mean where in China do they most apply for patents registration, trademark registration or software copyright registrations? Or where these were most granted? Or where they enforce intellectual property infringements the most? But if they enforce intellectual property the most, does that mean that that region has the most infringements? Each question poses new questions. To be able to answer the first question “where is IP most developed in China” will remain complex. One can argue that it has to do for the most part with the experience, education and fairness of the People’s courts; are they prone to corruption or local protectionism (localism), can they make impartial independent non-political decisions?
To reduce the complexity and come up with a workable answer IP Dragon has consistently written that Beijing, Shanghai and Shenzhen have the best People’s courts for IP litigation, based on research and experiments of people in the field. The National Intellectual Property Development and Research Center (国家知识产权发展研究中心) of the State Intellectual Property Office (SIPO) seems to confirm this. It published a report about the intellectual property development in different regions in China in the five years between 2007 and 2012.
Numbers 1 to 7 (except for the capital Beijing) are all located at the east coast of China, and which are most economically developed. There is a clear parallel between the inequality between economic development in the east and west of China (Candelaria, Daly and Hale wrote more about the persistent regional inequality in China here (2013) and the imbalance between the IP development in the east and west of China which can be expressed in IP development indices.
Wages are of course lowest in the regions that are less economically developed. Therefore, the choice for certain activities such as manufacturing at a location with low wages should always be weighed against the concomitant IP risks.
Read the 2012 National Intellectual Property Development Report (2012 年全国知识产权发展状况报告) here in Chinese.
Litigating intellectual property rights, especially patents, requires quite some specialised expertise. For a long time, therefore, patent disputes were dealt with by people’s intermediate or higher courts. But since ever more Chinese companies are patenting their design patents, utility patents and invention patents, in many cases subsidised by the government, the work load of these courts have been growing correspondingly.
To see whether some of the work load, namely the design patent and utility patent cases, that are generally deemed more simple, can be transferred to “grassroots” courts, such as district and municipal courts, a pilot programme was started in 2009 at Haidian District Court in Beijing, Yiwu Municipal People’s Court in Zhejiang Province and Kunshan Municipal People’s Court in Jiangsu Province, which was considered successful, so that now the Supreme People’s Court has announced here (Chinese) to expand the number of grassroots courts that can deal with intellectual property rights cases.
The argument that now the experience with IP is bigger and that many judges have more expertise in this field. But the question remains how the judges of these grassroots courts can have built up expertise with IP cases, unless of course they have worked at a people’s intermediate or higher court before.
In the Chinese language grandmother is pópo (婆婆) and a spicy grandmother is là pópo (辣婆婆). As you would already expect it is a bad idea to fool around with the feelings of a spicy grandmother. Spicy Grandmother, the enterprise name of a chain of restaurants in Beijing, was annexed without permission in the trademark logo of Yu Xiang Spicy Grandmother (Yú xiāng là pópo 渝乡辣婆婆), a competing chain of restaurants in Beijing and Shijiazhuang.
Spicy Grandmother sued but lost the case in first instance. They appealed at Beijing No. 2 Intermediate People’s Court, which will rule on the case.
Christian Nowak, Science and Technology Adviser of BEA (Bureau d’Electronic Appliqué), a Belgian company that manufacturing sensors for especially doors. BEA is active in China since 1996. First only with a representative office. But the smart thing BEA did was they registered their invention patents and design patents and a trademark in China.
In 2002, BEA discovered that their product was copied.
China IPR SME Helpdesk posted a video of Nowak explaining how BEA dealt with the case.
According to Mr Nowak he went to a patent attorney, who advised him to go to the State Administration for Industry and Commerce. “And on Monday Morning we were in Shantou city, north of Hong Kong, ringing the bell of the State Administration of Industry and Commerce and requesting the manager in charge of the patent infringement.”
Mr Nowak must have mistaken the State Administration for Industry and Commerce (which is in charge of trademark infringements) with the State Intellectual Property Office (which is in charge of patent infringements).
The raid by the State Administration for Industry and Commerce, or more likely, the State Intellectual Property Office, was successful.
Mr Nowak is enthusiastic about the administrative enforcement route and says that litigation costs too much time and money. If it is simple straightforward case the administrative enforcement route might be recommendable. The real question is, however, whether the activities at the infringing premise will not be resumed a little bit later somewhere else. To avoid this waterbedding effect, one might want to really strike hard at the infringers, piercing the waterbed so to say. A big advantage of the litigation enforcement route is that damages can be compensated. Then there is the criminal enforcement route, which can put the infringer behind bars, but which of course has higher evidentiary thresholds.
Here are some of the administrations one can go to to enforce one’s intellectual property rights:
– State Administration for Industry and Commerce (SAIC) = trademarks
– Administration of Quality Supervision, Inspection and Quarantine (AQSIQ) = in case of shoddy goods
Dan Prud’homme of the European Chamber of Commerce in China wrote a study called Dulling the cutting edge: How Patent-Related Policies and Practices Hamper Innovation in China. To summarise 226 pages: Prud’homme basically says that China’s patent promotion policy which includes quotas per 10,000 people is not conducive to quality and he asserts that […]
The Supreme People’s Court commemorated the first Trademark Law of the People’s Republic of China in August 1982, see here. Remember 1982? It was the year when Deng Xiaoping was in power at the Zhongnanhai, Reagan in the White House and Brezhnev in the Kremlin. Deng had set out a new course for China in […]
Counterfeit trademarks in China: Castel’s “uniqueness is arrested”, Penfolds has become victim of “get rich in a hurry” By Danny Friedmann Until the majority of the Chinese population is more familiar with foreign brand names, foreign brands should take the destiny of their own brand in China in their own hand. If foreign […]
Professor Thomas Cottier, managing director of the World Trade Institute (WTI) and Swiss National Centre of Competence in Research (NCCR) Trade Regulation shared his expertise on international trade law at the Summer Programme organised by the WTI and CUHK in Hong Kong.
Professor Cottier covered the international framework for IP protection, from the Paris Convention to the TRIPs Agreement, and about intellectual property in a trade law setting, and the crown jewel of the WTO: its effective dispute settlement.
After professor Cottier’s lectures one realises in a profound way that the life of international law is in its national law. China’s system is monistic, in that international law rules supreme over its national law.
IP Dragon spent his holiday participating in the WTI/CUHK Summer Programme on intellectual property, indeed co-organised by the World Trade Institute in Bern and Chinese University of Hong Kong, from July 9 -20.
The coming days I would like to give you an overview of some of the things, relevant to intellectual property rights in China and Hong Kong, I learned from professors Thomas Cottier (WTI) see here, Arno Hold (WTI), Michael Pendleton (CUHK), Bryan Mercurio (CUHK), Peter K. Yu (Drake University), Elliot Papageorgiou (Rouse), Mathias Schaeli (Swiss IPI), Philip Monaghan (Mayer Brown) and last but not least Ron Marchant (former head of IPO UK). Beside getting updates on bilateral and multilateral treaties, WIPO, WTO, law in China and Hong Kong, the event brought professors together from Bangladesh, China, India, Indonesia, Laos, South Africa, Switzerland, Trinidad and Tobago, and Vietnam, to discuss intellectual property and policy issues.
The French newspaper Le Midi Libre reports about a wine from the domaine de la Romanée Conti à Vosne-Romanée which was counterfeited in China. Oftentimes the counterfeiters manufacture a product that is almost identical to the genuine product. However, this time the counterfeiters are no connaiseurs. Unfortunately many people in their target market, China, also lack […]
The goal of the China IP Index is to “assess and analyze the different development status of intellectual property capacities in 31 provinces and municipalities of China through setting up a scientific, systematic and formal system.” The result, that only focuses on protection (namely application and registration) of IPRs and not on enforcement and excludes the whole category of copyright is claimed to be of “substantial significance”, by the researchers of the index here. Whether this is justified will be questioned after an overview of the ranking. continue reading…
Later in June or beginning of July the National Copyright Administration of China (NCAC) will release the second draft of the revised Copyright Law. The first draft of the revised version was released March 31, 2012, see here. The NCAC announced that 81 of the 88 provisions will be changed. This as a reaction to […]
EBM Papst Group, producer of energy-saving fans and motors has set up an assembly line in Shanghai. They have invested 8 million U.S. dollars in their activities in China, trying to stay ahead of the competition and preventing IPR infringements. Hans-Jochen Belike, general manager of EBM Papst has experienced infringed ventilators in China and Germany, […]
IP Dragon Alert The Chinese delegation has signed the Beijing Treaty on Audiovisual Performances ( 视听表演北京条约) on June 26, 2012, read the Chinese article here. It’s the first international intellectual property treaty that was “born” in China. World Intellectual Property Organization (WIPO), who convened the Diplometic Conference, gave the following statistics: – 156 member states; 6 intergovernmental […]