On October 17, the decision on amending the Patent Law of the P.R.C. of China was voted and passed at the 22nd Standing Committee Meeting of the 13th National People's Congress. The newly revised Patent Law will come into force on June 1, 2021.

This revision of the Patent Law mainly includes three key areas:

First, to strengthen the protection of the legitimate rights and the interests of patentees, which includes increasing patent infringement indemnity, such as one to five times of punitive damages for deliberate infringements, as well as raising the statutory compensation limit to five million yuan; the improvement in provisions concerning burden of proof and the administrative protection for patent; the addition of provisions concerning principle of good faith, the patent right period compensation system and the early settlement procedures for drug patent disputes, etc.

Second, to facilitate the implementation and application of patents, including improving the service invention system, adding a new patent open licensing system, and strengthening patent conversion services.

Third, to improve the patent authorization system, including further improving the system for industrial design protection, extending the grace period for the application of the novelty, and perfecting the patent right evaluation reporting.

(Source: www.nipso.cn)

The China National IP Administration (CNIPA) and the European Patent Office (EPO) will launch a two-year pilot project, under which the nationals and residents of China will be able to choose the EPO as the international search authority for international applications filed in English under the Patent Cooperation Treaty (PCT).

The pilot will be launched on this December 1. The number of PCT applications submitted to the CNIPA or the WIPO as the receiving offices will be capped at the maximum amount of 2,500 in the first year and 3,000 in the next year.

(Source: www.CNIPA.gov.cn)

According to the "Patent Prosecution Highway (PPH) Project Agreement between the China National Intellectual Property Administration (CNIPA) and the Saudi Intellectual Property Office (SAIP)" , the CNIPA and SAIP kicked off the pilot PPH project on November 1, 2020, which will for three years, expiring on October 31, 2023.

Under the pilot project, SAIP applicants can submit the PPH request to CNIPA according to the "Procedure for Submitting a PPH Request to the CNIPA under the China-Saudi PPH Pilot Project"; and CNIPA applicants can submit the PPH request to SAIP in accordance with the "Process for Submitting a PPH Request to the SAIP under the China-Saudi PPH Pilot Project".

(Source: www.cnipa.gov.cn)

Recently, Unitalen helped our client Dekor won an administrative litigation case before the Beijing IP Court, concerning the invalidation of the "濟象" (pronounced as “Jixiang”) trademark (the "disputed trademark") registered in Class 19 for "wood floor" goods.

Case Summary:

Dekor Group, the plaintiff, is the prior right holder of "圣象"(pronounced as "Shengxiang") as both trademark and business name, and enjoys the exclusive right to use the registered trademark in Class 19 for "flooring" goods. Their "圣象" brand has been recognized as a well-known trademark in China many times since 2005.

The disputed trademark also registered in Class 19 in this case was filed on May 13, 2010 for "wood, plywood, floor wood, veneer, plywood, flooring, wood pulp board for construction, fiberboard, resin composite board, wood floor" and other goods, and approved for registration on May 14, 2011. The registrant of the disputed trademark first added the "wood floor" item by changing the business scope of the company, and then carried out trademark infringement through the locally registered affiliated company with business name as "圣象" ("Shengxiang").

In July 2019, Dekor Group filed a trademark invalidation request against the disputed trademark with the Trademark Office, which, however, was ruled to maintain the registration of the disputed trademark on May 30. Dekor Group thus entrusted Unitalen to the administrative lawsuit for invalidation of the case.

Court’s Ruling:

The collegiate panel supported Dekor's proposition based on the second paragraph of Article 13 and the second paragraph of Article 41 of the 2001 Trademark Law and held that:

1.The Dekor Group was established in 2002. After the continuous use of the "圣象" wooden floor and the publicity it has obtained, the "圣象" trademark has constituted well-known trademark for use on "flooring, wood floor" goods prior to the application for the registration of the disputed trademark in 2010.

2.Although the disputed trademark has been registered for more than five years, its registration can be considered as the act out of "bad faith" through the actual use in production and sales, as well as the related trademark infringement cases conducted by the registrant of the disputed trademark and its affiliated companies, as the operators in the same industry.

3.The "flooring, wood floor" and other goods approved for use by the disputed trademark has overlapped with the goods approved for use by the plaintiff’s cited trademark. The registration and use of the disputed trademark on these goods can easily mislead the relevant public and cause harm on the interests of the well-known trademark registrant.

Therefore, the court found that the application for registration of the disputed trademark on the "flooring, wood floor" goods has infringed on the Dekor’s well-known trademark right in violation of the provisions of Paragraph 2 of Article 13, paragraph 2 of the Trademark Law.

Typical Significance:

This case is a typical civil case for trademark cross protection. Unitalen lawyers have done sufficient proving in regard to the clause of "the owner of a well-known trademark is not subject to a five-year time limit for maliciously registered trademarks", which focused on demonstrating the fact that the plaintiff's trademark has constituted well-known trademark and the malicious behavior of the registrant of the disputed trademark constituted in actual use. The Beijing IP Court of the first instance ruled the victory of this case, based on the judicial guidelines of the Supreme People's Court in relevant cases, applying the provisions of Paragraph 2 Article 13 of the 2001 Trademark Law. 　　

On October 10, a group of delegates led Shan Liubing, the Deputy Director of the Preliminary Examination and Process Management Department of the Patent Office of the CNIPA visited our firm. Li Deshan, our Chief VP and Xi Bing, the Head of our International Patent Process Department received the group.

Mr. Shan expressed appreciation to our patent process management work and collected the feedback from our attorneys in regard to patent electronic patent filing system, PCT application and prior examination practices. It’s mentioned by Mrs. Shan that the feedback from agencies will provide valuable reference for the office to improve their preliminary examination and process management work, as well as the implementation of the Patent Law.

On October 31, the China Fashion Industry IP Conference co-hosted by the China Trademark Association and the China Fashion IP Protection Center of the China Fashion Designers Association was held in Beijing. Unitalen Senior Partner, Zhao Lei was invited to attend and act as the host of the conference.

This conference coincided with the first anniversary of the establishment of the China Fashion IP Protection Center. The conference shared the work results of the center and released the future development plan. More than 30 prominent guests of fashion groups, leading online and offline platforms, IP law firms and media from home and abroad, plus more than 150 fashion industry professionals gathered together to share their eexperience in the protection of IP rights in fashion industry, and conduct in-depth discussion on how original fashion brands can make good use of IP to enhance their market competitiveness, as well as how to reduce trade frictions by building a cohesive IP system.

It’s also announced at the conference the establishment of the Working Committee of the China Fashion Industry IP Protection Center. Mr. Zhao Lei, on behalf of Unitalen, received the letter of appointment as the member of the Expert Advisory Committee.