NEWSLETTER - Lecome Intellectual Property Agent Ltd

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NEWSLETTER - Lecome Intellectual Property Agent Ltd
NEWSLETTER
December, 2015
IP News in Brief
Floor 16, Tower B, Indo Mansion,
No. 48-Jia Zhichun Road, Haidian District,
Beijing 100098, P. R. China
T : +86-10-5873 3366
F : +86-10-5873 3399, 5873 3202
E : [email protected]
IP News in Brief
Audi Safeguards Trademarks in China
Audi Safeguards Trademarks in
China
The 9th China Patent Week
Opens
China NAC and WIPO sign MOU
to Cooperate in All Respects of
Copyright
Focus
Experts: China making progress
in IPR protection
Private equity firm makes a bet
on innovation
Case
FREDDIE MAC wins trademark
dispute
Audi Group recently brought a Beijing-based
automobile service company to Beijing Shi
jingshan People's Court, on grounds of
unauthorized use of their registered
trademark and infringement was constituted.
The Court has heard this case.
Audi Group recently discovered that Beijing
Zhonghan has illegally printed trademarks of
"Audi", "Four-ring figure" and "奥迪" on their
promotion materials, staff business cards, and
even decorated their company with the marks
above without authorization. Audi Group held
that Beijing Zhonghan has infringed their
registered trademarks.
Beijing Zhonghan argued that they indeed
used the Audi trademarks in relative materials,
and they also used the Benz and BMW
trademarks, but this usage just let the
consumers know they can offer repair and
maintenance service for corresponding
brands. The consumers are aware that Beijing
Zhonghan is just a third-party automobile
service company, not a licensed Audi 4S shop.
As a result, Beijing Zhonghan fairly used these
marks and no infringement was constituted.
Audi Group held that Beijing Zhonghan had
many choices to demonstrate their service
scope, for example the Chinese trademark "奥
迪" could play a role, they don't have to use the
English trademark Audi and the Four-ring
SHENZHEN
The 9th China Patent Week Opens
Main events
Existing materials show that Audi Group
entered the Chinese market and registered
"Audi", "奥迪"and "Four-ring figures" as
trademarks in China. Now, these marks are in
valid state. The defendant Beijing Zhonghan
Fangsheng automobile service company (
hereinafter called Beijing Zhonghan)was
founded in 2007, and its business covers
vehicle maintenance, repair, sales and
accessories sales. Beijing Zhonghan's previous
name was Chengcheng Zhong'ao automobile
service company.
Nokia’s patent claims rejected
BEIJING
figure. Meanwhile, Beijing Zhonghan has
printed the marks mentioned above on the
billboards, glass doors, ceilings, promotion
materials and business cards. All these
materials will cause confusion among the
public, these have been beyond fair use
and infringement was constituted.
On November 30th, the 9th China Patent
Week opened throughout the country
themed boosting IP utilization and
protection to aid mass entrepreneurship
and innovation. The main internet event
was launched in China Intellectual
Property Network (www.cneip.org.cn). The
website designed and developed the
publicity platform, established relevant
independent
database,
to
comprehensively display SIPO's effort on
assisting entrepreneurship and innovation,
as well as local activities and patent work
throughout China during the week.
As of November 30th, the web users could
log on the website to get the latest
information about the event. In parallel,
the web users would also receive daily
news about the policy, service companies
and achievement of entrepreneurship and
innovation from the website.
It is said that this year's event is practical in
service and fruitful for effect. The main
internet event focused on the need of mass
entrepreneurship and innovation. The
event integrated IP service resources to
improve companies' services level.
Especially in terms of publicity, the event
makes full use of website to spread and
display IP event took place in the patent
week and intensify exchange and
interaction with web users via new media.
In addition, during the Chinese Patent
Week of this year, China Intellectual
Property Network (www.cneip.org.cn)
NEWSLETTER December, 2015
www.lecome.com 2
would
display
the
throughout the country.
achievement
According to the SIPO, just like the previous
China Patent Week, this year's Chinese
Patent Week continued to strengthen
interaction mode through the path of new
media. The main network event became the
new platforms for diverse activities, fast
delivery, and mass information to realize
the good comprehensive effect of China
Patent Week activities.
Local events
Beijing
During the 9th China Patent Week, Beijing
carried out a variety of activities according
the
theme.
Intellectual
property
administration by law training, enterprise
patent information utilization capacity
building forum, Chinese pharmaceutical R
& D and patent protection dialogue, the
second
micro-channel
knowledge
contests and other activities were held.
Shanghai
During the 9th China Patent Week,
Shanghai held a series of activities
including enterprise intellectual property
management
system
standards
implementation lecture, patent supply
and demand matchmaking and so on. In
addition, during December 1 to 2, the 12th
Shanghai
Intellectual
Property
International Forum co-sponsored by the
Shanghai Municipal People's Government
and the World Intellectual Property
Organization was held in Shanghai.
Liaoning
In the 9th China Patent Week, Liaoning
Intellectual Property Office focused on
enterprise needs, took full use of
universities and research institutes as
patent sources, and carried out patent
technology exhibition and trade, training
seminars, IP law aid and other activities to
promote transforming and implementation
of a number of patent technologies, to
effectively solve practical IPR problems in
innovation and entrepreneurship, and to
effectively improve public awareness of
intellectual property.
Sichuan
Sichuan launched a series of activities
BEIJING
SHENZHEN
including publicity of IP policy, training
course on commercialization of S&T
achievements of college in Western China,
hearing patent infringement case. 21
cities and counties in the province carried
out some activities around the theme of
the event.
Hunan
During the week, Hunan demonstrated
patent technologies and present patent
products at the national patent
technology (Changsha) exhibition center.
The
consultation
of
trading,
commercialization, implementation and
utilization of relevant technologies was
carried out as well.
China NAC and WIPO sign MOU to
Cooperate in All Respects of Copyright
The National Copyright Administration of
China (NAC) and World Intellectual
Property Office (WIPO) signed the
Memorandum of Understanding on
Further
Strengthening
Bilateral
Cooperation between NAC and WIPO
(hereinafter referred to as “MOU”). Both
sides
announced
to
conduct
comprehensive cooperation in the field of
copyright.
According to the MOU, both sides will
build on the current communication and
cooperation to enhance copyright
publicity and personnel training, to
promote high-level and peer-to-peer
exchanges, paving the way for future
cooperation.
WIPO is a self-financing organization of
United Nations with 188 member states.
The Chinese government acceded to it in
1980.
Beijing
Treaty
on
Audiovisual
Performances (hereinafter referred to as
“Audiovisual Treaty”) is a milestone in the
past cooperation between China and WIPO.
A diplomatic meeting on the protection of
audiovisual performances was convened
by WIPO in Beijing in June, 2012, which
resulted in the conclusion of Audiovisual
Treaty. It is the first international copyright
treaty over the past two decades, and also
marks the first international copyright
treaty concluded in China.
At the time of accession to WIPO, the
copyright industry of China had not
come into being, Yan Xiaohong, Deputy
Commissioner of National Copyright
Administration, said in an interview. But
since then copyright industry has gone
through
law
amendment
and
improvement.
Beside Audiovisual Treaty, WIPO exerted
many efforts in China, including the
training of professionals and setting up
of a golden prize for creative copyright,”
said Yan.
Noting the current development trend
of copyright protection, Director
General of WIPO Francis Gurry said with
the emerging internet, global creative
industry has undergone dramatic
change, so does the way creative
industry share with others. Bilateral
cooperation
is
thus
becoming
increasingly important.
Focus
Experts: China making progress in IPR
protection
China has achieved remarkable results
in the protection of intellectual property
rights
(IPR)
ever
since
the
implementation of the Outline of the
National Intellectual Property Strategy
in 2008, according to industry experts.
Lu Wei, a senior research fellow and
director-general of the department of
techno-economy at the Development
Research Center of the State Council,
noted that more than 15 IP-related laws
and regulations have been passed and
revised since 2008 by the National
People’s Congress and the State Council.
She added that the introduction of more
severe punishments, such as increasing
the upper limit of infringement
compensation from 500,000 yuan
($78,000) to 3 million yuan, have also
helped deter people from breaking the
law.
According to Lu, law enforcement
NEWSLETTER December, 2015
www.lecome.com 3
mechanisms have also been improved
throughout the country via stronger
judicial and administrative enforcement
capabilities, while special tribunals to
handle IP infringement cases have been
established in Beijing, Shanghai and
Guangzhou, Guangdong province.
Statistics from the Supreme People’s Court
showed that there were 130,000 IPR
litigations in the country in 2014, a
year-on-year rise of nearly 20 percent, an
indication that a growing number of
companies are leveraging the stricter laws
to protect their inventions.
“Such tightened restraints and the ability to
utilize intellectual property rights are
helping firms become more productive,”
said Lu, during the Shanghai International
Intellectual Property Forum on Dec 1. She
added that the new laws and regulations
have also encouraged more companies to
file for patents, with more than 60 percent
of the applications coming from enterprises.
“A number of companies owning core IPs,
such as Huawei Technologies and ZTE
Corporation, which are both leading
Chinese brands in mobile communications,
have emerged. They now take up two of the
top five seats in the world with regard to
the number of patents protected by the
Patent Cooperation Treaty,” she said.
Wang Jingchuan, chairman of the Patent
Protection Association of China, added that
despite the slowdown in the Chinese
economy, the number of applications for
trademark registration have risen by more
than 21 percent last year, with those
pertaining
to
computer
software
copyrights growing by 33 percent.
“China has entered an active period of
innovation and the percentage of its
expenditure on research and development
in GDP has grown continuously in the past
years,” said Wang, who also serves as
director of the advisory committee for the
State Intellectual Property Office.
“China’s research and development
expenditure now account for 20 percent of
the world’s, while the number of scientific
research personnel in the country make up
19 percent of the total around the globe,”
BEIJING
SHENZHEN
said Wang.
He pointed out that this long-term
investment in science and technology, as
well as efforts in IPR protection have in
turn
brought
about
notable
achievements,
referring
to
the
emergence of the country as a world
leader in sectors such as the
manufacturing of high-speed railways
and extra-high voltage products.
Despite the progress made, Lu believes
that more can still be done — such as
hiring more elite talents for the scientific
research and high-end technological
industries — as she said that the country
is still a huge importer of technology and
IP. According to statistics from UN
Comtrade, an international trade
statistics database, the amount of
imported tech in China in 2013 stood at
71 percent, still a high figure despite it
being a 10 percent drop from 2001.
Wang added that the protection of
intellectual property rights will be a
constant challenge as hi-tech sectors and
new business models continue to
emerge, saying: “Online piracy and IP
violations
enabled
by
digital
technologies and Internet applications
have shown new characteristics and law
enforcers must take them into account
and come up with new solutions,” he said.
Private equity firm makes a bet on
innovation
Idinvest program designed to support
forward-thinking companies in China
and France
A European company is intent on seizing
the opportunities created by China's new
five-year plan which aims to sustain
economic growth and double GDP and
incomes by 2020 from the 2010 level.
The 13th Five-Year Plan (2016-20) will
also put greater emphasis on innovation
and greater international collaboration.
Idinvest Partners, the Paris-based private
equity firm that was founded in 1997,
funds innovative small and medium-sized
enterprises at all stages of development.
It manages nearly 6 billion euros ($6.5
billion) in assets in France and elsewhere
in Europe, according to Christophe
Baviere, the company's president.
In recent years, China has ramped up
collaboration with Europe as part of its
Belt and Road Initiative. Baviere predicts
more equity capital will flow between
the two, "and while France is currently
underrepresented
in
Chinese
investments, balancing phenomena are
expected in the coming years".
Idinvest has set up Chance, a
China-France cross-border investment
program dedicated to supporting
innovative SMEs. The program signed its
first investment agreement with China
International Industry & Commerce Co
Ltd in Toulouse in July, witnessed by
Premier Li Keqiang and Prime Minister
Manuel Valls.
"SMEs are key players in French
innovation, accounting for 43 percent of
French expenditure in research and
development, featuring a strong
dynamism in intellectual property. More
than 18 percent of all patent applications
were by French SMEs between 2012 and
2014," Baviere says.
He adds that France came third overall in
a Reuters survey on the most innovative
nations, behind the United States and
Japan, and that many French enterprises
have made Forbes' list of the world's 100
most innovative companies.
Yet while French SMEs may be among the
most innovative in Europe, Baviere says
China is without doubt a new land for
innovation, as evidenced by a series of
laws and programs to support innovative
companies, such as offering tax relief to
shareholders in high-tech SMEs.
The Chance program focuses on key
sectors including finance, health, digital
technology and the environment, which
Baviere says correspond with the
priorities and challenges facing China's
market and government over the next
decade.
"The Chinese government intends to
NEWSLETTER December, 2015
www.lecome.com 4
accelerate the country's access to related
technologies, either via commercial
foreign
agreements,
technological
foreign partnership or via foreign
investment," he says. China is moving
away from being the workshop of the
world, he says, "and is turning into a huge
consumer market, longing for services,
technology and high-end products."
Chance has been designed to give
Chinese investors access to high-quality
investment vehicles and provide French
SMEs access to the equity capital they
need to grow internationally. Baviere
believes the program will create jobs in
China and France, as well as create value
in China by developing solutions for
major problems.
A unique aspect of the program is that it is
dedicated to indirect and minority-stake
Chinese investment. Looking at recent
majority-stake Chinese investments in
France, Baviere says: "Some acquisitions
did not go as smoothly as expected. There
may be a strong political and social
reluctance toward Chinese takeovers, and
post-merger integration is constrained."
An October report by Boston Consulting
Group says global mergers and
acquisitions by Chinese companies are
growing at a rate of 35 percent a year ($26
billion last year), with Europe the main
target. However, only 67 percent of these
M&As are completed.
Baviere says this is because the best
targets, technology and know-how are
not for sale on the open market, and
speculates that there is underlying
mistrust of Chinese intentions.
The Chinese also undervalue the need for
synergy, intercultural management and
good
labor
relationships
when
implementing mergers, he adds.
Cases
FREDDIE MAC wins trademark dispute
Recently, Beijing Higher People’s Court
made the final judgment that, the
trademark “房地美” (hereafter as the
questioned trademark) registered by
BEIJING
SHENZHEN
Henan Qi Du Real Estate Agency Co., Ltd
(hereafter as Qi Du) constituted similar
trademarks used on the same or similar
service with the English trademark
FREDDIE MAC(hereafter as the cited
trademark) by Federal Home Loan
Mortgage
Corporation(hereafter
as
Freddie Mac). The higher court’s final
judgment maintained the original court’s
ruling and dismissed Qi Du’s claims of
trademark registration of ”房地美”.
Before that, FREDDIE MAC questioned for
constituting similar trademarks of both
trademarks.
After
examination,
Trademark Review and Adjudication
Board
(TRAB)
under
the
State
Administration
for
Industry
and
Commerce of China (SAIC) rejected the
registration of the questioned trademark.
The case was brought to administrative
proceedings.
The questioned No“6554134” trademark “
房地美” was approved through the
preliminary examination in June 2010.
Freddie Mac challenged the questioned
trademark in Sept. 2010. In May 2012, the
Trademark Office (TMO) Of SAIC approved
the registration of the questioned
trademark.
The disgruntled plaintiff submitted review
of the registration of the mark to TRAB. In
Oct 2013, TRAB cancelled the registration.
Qi Du then brought the case to Beijing
No.1 Intermediate People’s Court.
In 2014, the court rejected the claims
made by Qi Du and upheld TRAB’s ruling.
Qi Du then appealed to Beijing Higher
People’s court.
The higher court held that current
evidence is sufficient to testify“房地美” is
a form of translation of “FREDDIE MAC”
and the two marks have a corresponding
relation. The cited trademark has enjoyed
some reputation on financial service such
as mortgage loan. Meanwhile , the
questioned trademark“房地美” is the
same as the Chinese translation of
“FREDDIE MAC”. In view of the cited
trademark’s distinctiveness and high
reputation, the usage of two marks could
easily mislead the consumers who tend to
think the questioned mark has some
association with the company “FREDDIE
MAC”.
For the reasons above, the court made the
final judgment.
Nokia’s patent claims rejected
Recently, Shanghai No.1 Intermediate
People’s Court made a decision in the first
instance involving patent infringement
dispute of Nokia Corporation (hereinafter
as Nokia). The Court held that, Nokia
lacked of factual and legal basis on its
standard essential patents for its
interpretation in the scope of patent
protection, and therefore, mobile phones,
involved in the case, of Shanghai Huaqin
Communication
Technology
Co.
(hereinafter as Huaqin Company), were
beyond the scope of Nokia’s patent
protection, and the Court rejected the
claims of Nokia.
It is reported that, in this case Nokia
accused mainly for its involved patent
claims 4, which defines its units saving
location data as “location area”.
In the case hearings, the court made an
analysis on the concept of “location area”
and “cells” in Nokia’s patent documents in
accordance with the Patent Law and the
interpretation by Supreme People’s Court.
In this case, Nokia referred all areas with
management functions collectively as
“location areas” in the patent document,
which was not in consistent with the
definition of “location area” in relevant
industry standard.
In the decision, the court held that Nokia’s
interpretation of the disputed patent had
a significant expansion, meaning its loss
of the standard basis for the disputed
patent,
which
led
to
inherent
contradictions with Nokia’s claims that the
disputed patents were its standard
essential patents. Therefore, the court
made the decision. Some industry experts
said that, the court identified whether the
disputed patents were Nokia’s standard
essential patents, which is an active try by
China’s courts on identifying standard
essential patents in judicial proceedings
on related patents.