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Latest IP Law News for China from Unitalen

Sep 8, 2009

The numbers of Software Copyright registration increased sharply in China

 
 
It is learned from China Copyright Protection Center that, under the impetus of China IP Strategies, the numbers of applications for registration of software copyright received by the Center amounts to 29, 804 during the first half of this year, up 112.9% over 13, 999 applications of the same period of last year. The numbers of granted software copyright amounts to 24, 748 at a rise of 100.4%. In the month of July, the numbers of registration are expected to exceed 6, 000.
 
 
“Rules concerning Trademark Assignment” released recently

 
 
In an effort to regulate trademark assignments, minimize disputes arising from trademark assignments and to stop false assignment of trademarks, China Trademark Office recently issued “Rules concerning Trademark Assignment” and brought into effect as of August 10, 2009, featuring the following changes:

1. When filing a trademark assignment application, the applicant shall further submit copies of the legal identification documents of the assignor and the assignee affixed with their respective corporate seals in original. Where CTMO holds any doubts against the identification documents, CTMO may require further notarization and legalization or the same.

2. Assignment documents in foreign languages shall be accompanied by Chinese translations executed by the applicant or the agency.

3. After formality examination of an assignment application, CTMO shall issue a filing receipt to the assignees and as well as those assignors residing in mainland China (excluding Hong Kong, Macao and Taiwan).

4. Where a trademark registrant finds his mark being applied for assignment by others without authorization and notifies the same to the CTMO in writing, or where the CTMO has doubts on the authenticity of an assignment application, the CTMO may issue a Notification to the assignor, requiring him to provide written explanations on the facts or submit if necessary a notarized copy of the assignment agreement, a notarized assignment declaration by the assignor, or other evidential documentary.

5. Where the trademark owner or interested party holds disagreement to the assignment of a trademark and requests the CTMO to suspend examination, a written application shall be filed with the CTMO accompanied by proofs of judicial case filing or other certifying documents. The CTMO may suspend examination on the assignment per application.

6. The owner of a trademark finding his mark being assigned by others without his authorization may lodge a civil lawsuit before People’s Court. The CTMO shall make a decision on the assignment in accordance with the Court’s judgment.

7. The assignee shall enjoy the exclusive right to use the trademark from the publication date of the assignment, and may not apply for re-assignment before obtaining the exclusive right. For assignment of trademark application, the assignee may not apply for re-assignment before receiving the approval notification of the first assignment.

 
 
GAPP: Further tighten approval and administration of imported online games

 
 
General Administration of Press and Publication (GAPP) recently issued a Notice on tightening the approval and administration of imported online games to further regulate the prior approval of publication of online games, and the approval, supervision and administration of imported online games authorized by overseas copyright holders, and lay down rules to regulate the exhibition activities related to the imported online games.

According to the Notice, the GAPP is the only government department empowered by the State Council to examine and approve imported online games authorized by overseas copyright holders. Enterprises engaged in the publication and operation of online games services in China are subject to prior approval of the GAPP and must obtain the Internet publication service license covering publication of online games. Any publication and operation services of online games provided by enterprises without a GAPP’s prior approval should be immediately banned. Without GAPP’s prior examination and approval, imported online games authorized by overseas copyright holders are prohibited for publication and operation in China.

In the games-related trade fairs, conferences, exhibitions and festival activities held in China, the display, demonstration, trading and promotion of overseas games shall follow the rules for examination and approval of imported online games and ought to pass GAPP’s examination in advance. Any offenders will be banned. And the organizers, operators and relevant companies shall bear responsibilities.

 
 
China: property preservation implemented for the first time in Karaoke halls’ copyright infringement case

 
 
It’s learnt from the China Audio & Video Copyright Association (CAVCA) that, according to a property preservation decision issued by Anhui Hefei Municipal Intermediate People's Court, the bank accounts of three karaoke halls in the city have recently been frozen in accordance with law. This is the first time property preservation is implemented during a law suit against Karaoke halls for infringing copyrights in China, marking the "ice-breaking" of intellectual property rights protection for Chinese music videos.

In early this July, a company in Beijing, as the broadcasting right holder, sued five karaoke halls in Hefei, requiring the defendants to stop using the infringing music videos and asking for a monetary compensation for losses up to RMB 120,000 (about USD17,566).

In mid-July, the plaintiff filed an application for property preservation for RMB150,000 (about USD21,958) or seizure of property of the same worth against each Karaoke hall in the legal proceeding with the Hefei Municipal Intermediate People's Court. The total amounts to RMB750,000 (about USD109,790). Meanwhile, the plaintiff provided guarantee. The property preservation was granted by the court and immediately executed by freezing bank accounts of the defendants.

Due to historical reasons, Karaoke operators in China never paid loyalty fees to copyright holders for many years for the music works they used. The situation of infringing copyrights is serious and common in Karaoke industry. The CAVAC, acting as the only channel to collect royalty fees from the domestic karaoke industry, provides assistance to copyright holders of audio-video works to collectively protect their rights.

 
 
China Supreme People's Court: some comments on solving IP disputes by non-litigation organizations

 
 
On August 4, 2009, the Supreme People's Court in China released some comments on setting up a dispute solving mechanism to connect litigation and non-litigation” ("Comments") in Beijing. Vice Director of Judicial Reform Office under the Supreme People's Court Jiang Huiling said, as IPR disputes are often related to professional issues, people's courts at all levels should not only strengthen trainings for judges, but also guide and urge non-litigation organizations to participate in dispute resolution and improve the ability of examination and mediation.

The comments clarify that, the civil and business dispute reconciliation agreements reached by interested parties after mediation by administrative organs, commercial mediation organizations, industry mediation organizations, and other mediation organization, are with the nature of a civil contract. And all interested parties must obey and implement the agreements. Besides, interested parties can apply to people's courts with jurisdiction to determine the validity of the reconciliation agreements. Once a reconciliation agreement is affirmed valid by a court, any party can request the court for compulsory execution according to laws and regulations, if the other party refuses to fulfill the agreement.

Jiang said people's courts at all levels will cooperate with relevant departments to develop an alternative dispute resolution mechanism, enlarge the qualification scope of mediators, improve mediation mechanism, boost the effective connection between litigation and non-litigation proceedings, perfect coordination among various dispute solution modes, and set up a mechanism to solve contradictions caused by the connection of litigation and not-litigation proceedings.

 
 
Commercializing Patents Asia 2009 to be Held in Shanghai in September

 
 
Commercializing Patents Asia 2009 will be held in Shanghai from September 29 to 30, 2009. The subject matter of the conference is: maximizing the value of your patents through effective patent portfolio management, monetization and enforcement strategies.

Turning intellectual property information into real value is essential in increasing an organization’s competitiveness and is deployed as a strategy to improve cash flow. This is especially the case for research-intensive companies and individual IP owners worldwide. Patent strategy development, portfolio management, capitalization of IPR, patent protection & patent enforcement outside traditional markets are high on the agenda for Asian companies and global MNCs who are establishing Asia-Pacific R&D centres in the high-tech, electronics, biotechnology, pharmaceutical, telco, oil & gas and automotive industries.

In the conference 17 of the world’s top patent filers will be sharing their experiences in turning intellectual assets into profit. The speakers include Jari Vaario from Nokia Group, Minsuk Choi from Samsung Electronics, et al..

China's Supreme People's Court Issued a Significant Opinion Re Injunctions

Jun 9, 2009

Managing Intellectual Property has reported a significant Opinion on Certain Issues Under the Current Economic Situation.  The Court has held that  lower courts can consider remedies other than injunctive relief where "halting the relevant act would cause a major imbalance in the interests of the parties, or would run counter to the public interest or would in fact be unforceable."

Some commentators believe that the Court is providing an opening that limits patent infringement enforcement in provinces such as Guangdong and Zhejiang, in order to save jobs in these areas. 

A Good Blog Discussing General IP Issues in China Is:

May 11, 2009

IP Dragon:

http://ipdragon.blogspot.com/

Will China Be the Next Japan of the Patent World?

Apr 29, 2009

Patent Hawk has an interesting comment on China's participation in the patent systems around the world, at:

http://www.patenthawk.com/blog/2009/04/china_ascendant.html#more

The Chinese government is bankrolling at least some PCT filings by Chinese companies.  The most prolific PCT filer in the world is now a Chinese company, Huawei Technologies.  China is well on its way to becoming the next Japan and, perhaps, the holder of the largest national portfolio in the world.

Chinese Companies Battle for Trademark Rights Outside of China

Apr 27, 2009

Last week, Okai, a Chinese owned supermarket company, lost its German registration of the Wangzhihe mark, under a cause of action of unfair competition.  The Wangzhihe mark is well known in China and is owned by Wangzhihe.  However, Okai registered the mark in Germany.  Wangzhihe was not successful in using German trademark law to challenge Okai's registration and had to resort to unfair competition. 

In Canada, two Chinese companies have applied for trademark registrations for marks owned by more than 60 Chinese companies, including Bank of China and China Investment Corporation. 

Schneider settles landmark patent infringement dispute with Chint Group

Apr 17, 2009

On April 16, Zhejiang High Peoples Court declared that the patent infringement dispute between Chint Group and Schneider Electric Group Co., Ltd. and Schneider Electric Low Voltage (Tianjin) Co., Ltd. is settled with Tianjin Schneider paying more than RMB 150 million to Chint Group. Moreover, Chint Group and Schneider Electric Group reached a series of compromise agreements worldwide. 

 

 

 

Chint Group lodged a lawsuit against Tianjin Schneider to Wenzhou Intermediate Peoples Court in July, 2006, alleging the circuit breaker products manufactured by the latter infringes its utility mode patent No. 97248479.5 and asking the latter to stop infringing actions and compensate it with RMB 50 million. In February, 2007, Chint Group increased the compensation to RMB 3,350 million based on the presumed profits of Tianjin Schneider with reference to its sales volume of previous years. Tianjin Schneider lost the case in the first instance and was ordered to pay damages of more than RMB 330 million to the plaintiff and to stop manufacturing the infringing products. Tianjin Schneider then launched an appeal to Zhejiang High Peoples Court.  

 

 

 

Following Chint Groups litigation, Tianjin Schneider filed an invalidation request with the Patent Reexamination Board of the State Intellectual Property Office. The Board decided the patent of Chint Group is valid. The decision was appealed to Beijing No. 1 Intermediate Peoples Court, and the judgment of the latter was appealed to Beijing High Peoples Court. On March 26, 2009, Beijing High Peoples Court rendered the final decision, maintaining the validity of the patent.

 

 

 

Based on the worldwide compromise agreements concluded by Tianjin Schneider, Schneider Electric Group and Chint Group, Tianjin Schneider and Chint Group achieved the following agreements: Tianjin Schneider compensates Chint Group with RMB 157.50 million wihin15 days, and Chint Group has the right to apply for execution the judgment of Wenzhou Intermediate Peoples Court if Tianjin Schneider fails to make full and due payment.

 

 

 

Deshan Li, Ph.D

Vice PresidentPartner

Patent Attorney, Attorney at Law

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