Justin Davidson (HK)

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China – Suspension of Trade Mark Applications More Readily Available?

Photo of Justin Davidson (HK)Photo of James Kwong (HK)By Justin Davidson (HK) and James Kwong (HK) on Posted in Brands, Intellectual Property, Trademark
In our previous post (here), we talked about a change being proposed by the China National Intellectual Property Administrative (commonly known as CNIPA), prohibiting repeated filings for the same trade mark.  This was particularly concerning to brand owners and trade mark practitioners because, presently, it has been common practice to re-file identical back-up applications to … Continue reading

Yet Another Change Coming Up?  Structural Changes to CNIPA and China’s Potential 5th Amendment to Trademark Law

Photo of Justin Davidson (HK)Photo of James Kwong (HK)By Justin Davidson (HK) and James Kwong (HK) on Posted in Brands, Intellectual Property, Trademark
We are just a few months into 2023, but we are already seeing a number of proposed changes to Chinese Trademark Law.  We wish to draw attention to some of the upcoming structural changes to the China National Intellectual Property Administration (commonly known as CNIPA) and to highlight a few draft amendments to China’s Trademark … Continue reading

China’s accession to the Apostille Convention: Authentication procedure for foreign documents used in China to be greatly simplified

Photo of Justin Davidson (HK)Photo of Stanley NgBy Justin Davidson (HK) and Stanley Ng on Posted in Enforcement, General, Intellectual Property, Litigation
On March 8, 2023, China deposited an instrument for accession to the Convention of 5 October 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (also known as the “Apostille Convention”). Upon the scheduled implementation of the Apostille Convention in China on November 7, 2023, the expensive and time-consuming consular legalisation procedure that foreign … Continue reading

Design protection in China and abroad with a single filing

Photo of Justin Davidson (HK)Photo of Stanley NgBy Justin Davidson (HK) and Stanley Ng on Posted in Patents
Design patents, sometimes referred to as industrial designs, protect the aesthetic appearance of a product. As with other registered IP rights, the protection offered is, generally speaking, territorial in scope. In other words, unless international or regional treaties are available, a grant of design rights has to be obtained individually in each country of interest. … Continue reading

How does an offer for sale affect the patentee’s profitability – an economic analysis from the SPC

Photo of Justin Davidson (HK)Photo of Stanley NgBy Justin Davidson (HK) and Stanley Ng on Posted in Patents
Under the PRC Patent Law, the offering for sale of an infringing product constitutes an act of infringement, regardless of whether the product is actually sold or not. However, there are divergent views as to what damages arise merely from such offering (without any actual sale). According to one school of thought, the patentee does … Continue reading

Jaguar Land Rover vs. Land Wind: A typical case of simultaneous enforcement of IP rights and unfair competition claim

Photo of Justin Davidson (HK)Photo of Edward Yau (HK)By Justin Davidson (HK), Edward Yau (HK) and Leslie Xu on Posted in Patents
As an old Chinese proverb goes, “what one loses on the swings, he gets back on the roundabouts.” This is exactly what happened to Jaguar Land Rover in its claim against Land Wind (Jiangling Motors) in China for copying of Jaguar Land Rover’s car design. Background After their patent battle from 2014 to 2019, the … Continue reading

Beijing IP Court pilots mediation program for Trademark Office appeals

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)Photo of Emma QianBy Justin Davidson (HK), Phoebe Poon (HK) and Emma Qian on Posted in Brands, General, Intellectual Property, Trademark
In response to the rapid increase in the number of trademark prosecution administrative review cases (appeals from the Trademark Office – CNIPA), the Supreme People’s Court issued a Judicial Opinion on “Promoting the Reform of Administrative Litigation Proceedings by Dividing Complicated Cases and Simple Cases ” (the “Opinion”) in May 2021. The Opinion aimed to … Continue reading

A New Progress: China Issues Judicial Interpretation for Applying Punitive Damages in Intellectual Property Infringement Cases

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)By Justin Davidson (HK), Phoebe Poon (HK) and Leslie Xu on Posted in Brands, Counterfeiting, Intellectual Property
Since 2013, China has gradually introduced the concept of punitive damages in the amendments to several laws on intellectual property rights, in which the elements of punitive damages were also stipulated, namely the infringement has to be “intentional” or “malicious” and “serious”. In 2020, the Civil Code was officially adopted, and it stipulates that the … Continue reading

Proactive Trademark Registration Strategy Can Prevent Costly Customs Issues in China

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)By Justin Davidson (HK) and Phoebe Poon (HK) on Posted in Brands, Intellectual Property, Trademark
Although it is not strictly necessary to file for a trade mark registration before using a mark, there are significant advantages to securing trademark protection, particularly in a company’s primary markets.  Amongst other benefits, a trademark registration gives the owner the exclusive right to use that mark in association with the goods and services covered … Continue reading

Revisions to PRC Medical Devices Regulations

Photo of Justin Davidson (HK)Photo of Stanley NgBy Justin Davidson (HK) and Stanley Ng on Posted in General
The PRC Regulations on the Supervision and Administration of Medical Devices (“Regulations”) have recently been amended and promulgated by the State Council. The new Regulations, which will be effective from 1st June 2021, provide some important changes of which the medical device industry should be aware. Under the current Regulations, a license to manufacture medical … Continue reading

CNIPA responds to a pandemic of COVID-related TM Applications

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)By Justin Davidson (HK), Phoebe Poon (HK) and Jerry Huang on Posted in Intellectual Property, Trademark
Since the start of the COVID-19 pandemic, numerous Chinese trademark squatters have surfaced with applications for marks closely related to the pandemic, such as “雷神山” (“Lei-Shen-Shan” in Chinese, which is a hospital built in response to the pandemic), “火神山” (“Huo-Shen-Shan” in Chinese, also meaning a hospital built in response to the pandemic), “方舱” (“Fang-Cang”, which … Continue reading

Combating the unsustainable rise of patent application numbers in the PRC

Photo of Justin Davidson (HK)Photo of Stanley NgBy Justin Davidson (HK) and Stanley Ng on Posted in Intellectual Property, Patents
In the last decade there has been an exponential increase in the amount of patent filing originating from China, which, according to a recently published USPTO report, can be attributed to certain non-market factors including subsidies and targets set by various governmental authorities in China. Coincidently, or perhaps not coincidentally, the China National Intellectual Property … Continue reading

Michael Jordan deserves an apology from Qiaodan Sports for infringing his name rights for over 20 years

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)By Justin Davidson (HK) and Phoebe Poon (HK) on Posted in Brands, Intellectual Property, Trademark
According to the Shanghai Xinhua News Agency, the Shanghai Second Intermediate People’s Court handed down a first instance decision on 30 December 2020 in favour of Michael Jordan against Qiaodan Sports Company and Bairen Trading Company (both Chinese local companies) in respect of infringement of Michael Jordan’s name rights. In the lawsuit, Michael Jordan claimed … Continue reading

China quietly updates its Copyright Law

Photo of Justin Davidson (HK)Photo of Edward Yau (HK)By Justin Davidson (HK) and Edward Yau (HK) on Posted in Copyright, Intellectual Property
On 11 November 2020, the Standing Committee of the National People’s Congress passed the amendments to the China Copyright Law (the Amendments), which will take effect on 1 June 2021. This is the third time the Copyright Law has been amended since it was promulgated in 1990. The first comprehensive amendment took place in 2001, … Continue reading

China Releases Draft Patent Law Amendment

Photo of Justin Davidson (HK)Photo of Stanley NgBy Justin Davidson (HK) and Stanley Ng on Posted in Patents
On 3rd July 2020, the National People’s Congress (NPC) of the People’s Republic of China released a second draft of proposed amendments to the PRC Patent Law for public consultation. In response to opinions from various government authorities and experts, the second draft incorporates several important changes of note: Partial design protection The draft includes … Continue reading

Implementation of the Madrid Protocol in Hong Kong

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)By Justin Davidson (HK) and Phoebe Poon (HK) on Posted in General, Trademark
On 19 June 2020 Hong Kong gazetted the Trade Marks (Amendment) Ordinance, paving the way for the application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) in Hong Kong.  This follows on from the outcome of a public consultation conducted back in 2014. Currently, there are 106 … Continue reading

Singapore leads the way on promoting its IP Hub

Photo of Justin Davidson (HK)Photo of Jeremiah ChewBy Justin Davidson (HK) and Jeremiah Chew on Posted in General, Trademark
The Intellectual Property Office of Singapore (IPOS) made headlines recently when its Chief Executive, Daren Tang, was appointed as the next Director-General of the World Intellectual Property Organisation with effect from 1 October 2020 (see this link for more information). As Chief Executive of IPOS since November 2015, Daren has earned accolades for several initiatives … Continue reading

Could the use of Punitive Damages be the way forward in China?

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)By Justin Davidson (HK) and Phoebe Poon (HK) on Posted in Counterfeiting, General, Trademark
In September 2019, the Shanghai Pudong District People’s Court awarded triple punitive damages to Balanced Body Inc., which according to the Shanghai government news report was the first such award for a Shanghai Court to a foreign plaintiff. Background Balanced Body is a provider of Pilates equipment and education and holds PRC trade mark registrations … Continue reading

Amendment to Chinese Trade Mark Law on bad faith trade mark applications with no intention to use

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)By Justin Davidson (HK) and Phoebe Poon (HK) on Posted in Trademark
Complaints regarding the growth of bad faith trade mark applications in China have been raised for a while now.  The existing Trade Mark Law in China does not readily imply bad faith on trade mark applicants with no genuine intention to use. On 23 April 2019, the Standing Committee of the National People’s Congress passed … Continue reading
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