IP in China: An Overview and the Latest Developments

Giovanni CasucciIP Litigator

China IPR SME Helpdesk External Expert

Brussels, 29 October 2015

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Name: Giovanni CasucciFirm: Bardehele PagenbergLocation: Milan, Italy

Giovanni F. Casucci is the founder of the Italian branch of the Bardehele Pagenberg. IP litigator in Italy since 1992. From 1999 to 2005 director of a Master program in IP Management at the Politecnico of Milano University. Since 2008, director of the Master program of ICE (Italian Trade Commission) on IP and China (“Ideacina”) and member of the faculty of the MBA programs of MIP Politecnico of Milano. Director of Centro Studi AntiContraffazione Milano

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Today’s Speaker

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• Legal Framework

• Patents

• Design

• Trademarks

• Enforcement

• Trade Fairs

• Take-away Messages

Agenda

EU and China

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EU and China

Intellectual Property

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EU CHINAEU China WTO

9 May 2000

IPR 1 (1999 - 2004)

IPR 2 (www.ipr2.org)(2007 – 2012)

IP Key(2013)

TRIPS Agreement – 1996 TRIPS Agreement – 2001

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Patents

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EU CHINAPatents- technical teaching protection- examination through EPO- 20 years from filing date

Utility Model- different aim for each member state- no examination - 10 years from the filing date

Validity - before any IP court OR- before a centralised Court (Dual

System (i.e. Germany)

Patents- technical teaching protection - examination through SIPO- 20 years from filing date

Utility Model- only for product innovation- no examination- 10 years from the filing date

Parallel filing strategy

Validity - before SIPO (Dual System)

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2007

Wenzhou Court (Zhejiang province) assigned damages to CHINT against Schneider about Rmb330m

(US$48mln)

Settlement at $23mln)

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Case Study I: Chint / Schneider

Design

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EU CHINA

Duration- 25 years (5 years renewal periods)

Novelty (relative)- 1 year grace period

Individual CharacterDifference from prior art

Filing - multiple filings

Duration- 10 years (annual renewal)(maybe 15 years from 2017)

Novelty (absolute)- 6 months priority

Individual CharacterSubstantial difference from prior artFiling- Individual shapes (option of multiple filings only for the same category – max 10)

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Duration

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Grace

Period

12 months

Registration

5 years renewable x 5 times up to 25 years

Unregistered Design

3 years Unfair Competition (only for the effective first

sales markets )

Publication

CHINA

EU

Registration

Up to 10 years

On public domain

NO Registration

EU up to 70 years post mortem

CHINA / USA Up to 50 years post mortem

WORLD

®

©

On public domain

On public domain

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Industrial Designs and Applied Art on Commercial Products

Drawings of engineering designs and product designs are categorized as “graphic works” under the Copyright Law and are copyrightable in China. Work of applied art is also protected by the Copyright Law as work of fine art, as long as the aesthetic features can be physically and conceptually separated from the utilitarian features. In some cases, China’s Unfair Competition Law can also protect such industrial designs.

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“separability” ?

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Case Study II: Panda / Peri

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Trade marks

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EU CHINA

Pre-registration Use

- de facto trademarks are protectedFormat- Graphic- Latin characters

Duration- 10 years (10 years periods renewal)- Form filing dateOpposition

- against unlawful filings

Pre-registration Use- NOT admittedFormat

- Graphic - Latin characters- Chinese charactersDuration - 10 years (10 years period renewal)- From the registrationOpposition

- against unlawful filings

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Case Study III: Tenax Case 1

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Case Study IV: Tenax Case 2

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Enforcement

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EU CHINACivil proceedings- specialised Courts (each member State) - injunctions & seizures- damage recovery- urgent proceedings (3/6 months)- ordinary actions (2/3 years - average)(Germany and the Netherlands 1 year average)

Civil proceedings- Min San Ting (31 IP specialised Courts) - full specialized IP courts in: Beijing, Shanghai and Guangzhou- injunctions and seizures- damage recovery- ordinary actions 1,5 year

Administrative proceedings- SAIC - only seizures and fines - no damage recovery

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Enforcement II

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EU CHINACriminal proceedings- only in case of evident infringement- no specialised Public prosecutors

Customs- Import and Export IP control

Criminal proceedings - rarely used

Customs- Export and Import IP control

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Administrative Authority

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www.saic.gov.cn

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Enforcement issues

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A) Formalities all documents shall be duly translated /notarized

B) Only the granted rights can be enforced need to file Patents / Utility Models / Design timely

C) Choice between the Administrative / Civil

https://www.cov.com/~/media/files/corporate/publications/2015/07/sipo_is_reinforcing_its_role_in_patent_protection_in_china.pdf

Case Study V: Silk Market

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Beijing

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Case study VI: Ferrero Case

• 07/2003: FERRERO Spa summons 蒙特莎 ( 张家港 ) 食品有限公司 [“Méngtè shā (zhāngjiāgǎng) shípǐn yǒuxiàn gōngsī“] for unfair competition

• 02/2005: first instance decided against Ferrero

• 01/2006: appeal decision in favour of Ferrero with damages assignment about ￥ 700,000

• 03/2008: Supreme Court confirmed the appeal decision just reducing the damages

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Case study VII: New Balance Case

“GUANGZHOU, April 29 (Xinhua) -- A Chinese court has ordered an affiliate of U.S. sneaker maker New Balance to compensate a Chinese citizen 98 million yuan (16 mln U.S. dollars) for infringing his trademark rights.

The Guangzhou Municipal Intermediate People's Court in south China's Guangdong Province also ordered New Balance Trading (China) Co., Ltd. to stop using "Xin Bai Lun" to promote its products in China, the court told Xinhua on Wednesday.

The verdict, issued on April 24, said the New Balance affiliate sold its products in the Chinese market under the name "Xin Bai Lun," similar to the trademark "Bai Lun" registered by a man surnamed Zhou in 1996.

Zhou also registered "Xin Bai Lun" in 2011. New Balance failed to block the registration after raising an objection with the Chinese trademark authority.

• The court defied the "necessity" argued by the U.S. company to use "Xin Bai Lun" instead of its registered trademark "New Balance" in China, as "Xin Bai Lun" is neither the translation or transliteration of "New Balance."

According to the court, the compensation amounted to half of the profits the defendant made during the period the infringement took place.”

http://news.xinhuanet.com/english/2015-04/29/c_134197000.htm

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Trade Fair IssuesSelf regulatory options• Rgulations of MACEF, Expocomfort, Marmomacc, Samoter

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Trade Fair Issues

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International Regulation project on trade fairs ?

IPR2 Studywww.ipr2.org

China IPR SME Helpdesk Guide:IP Strategy for European SMEs at Trade Fairs in China

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Takeaway messages

CHINA is rapidly growing in terms of quality of IP filing and prosecution as well enforcement rules and practice, so the first approach will be on acquiring knowledge about the opportunities offered (i.e. Administrative enforcement) and being really aware about the current limits, i.e.

• For patents: the “relative novelty” requirement applicable still to patents / utility models filed before the October 2009

• For trade marks: the lack of protection for unregistered trademarks• For designs: the lack of grace period for novelty not consistent with

the EU Directive and the really limited term of protection (10 years) and the need to consider copyright as alternative against identical copies.

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China and South-East Asia IPR SME Helpdesks

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Enquiry Helplines

IP Guides & Newsletters

E-learning & Business Tools

Training Workshops& Live WebinarsWebsites & Blog

Enquiry Helpline

• IPR one-to-one consultations: E-mail, telephone, face-to-face• First-line advice on China countries IPR matters• Confidential• Delivered by China IPR specialists• Available for EU SMEs and SME intermediaries

question@china-iprhelpdesk.eu+86 (10) 64620892

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Information & Materials

• Library of publications:– IP specific guides, incl. patents & trade marks– Industry specific guides, incl. textiles, machinery, creative industries– Business guides, incl. technology transfer– Hong Kong and Macao Factsheets

• Quarterly Helpdesk newsletters• Article placement• Topical blog posts

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Training workshops & webinars

Workshops across Europe and China• Addressing general IPR and industry specific IPR matters

• Trainings delivered in several languages

• Free one-to-one consultations• Webinars: Save time by joining these interactive training sessions from

your own office or watch recordings online

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Online portal

• Practical IPR guides

• E-learning modules

• Case study catalogue

• FAQs

• Helpdesk newsletters

• Event information

• Latest blog posts

• Helpdesk videos

www.china-iprhelpdesk.eu

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The China IPR SME Helpdesk provides free, confidential, business-focused advice to European Small and Medium Enterprises (SMEs) relating to IPR in

China

Helpdesk Enquiry Service / Training & Events: question@china-iprhelpdesk.eu MaterialsOnline Services -www.china-iprhelpdesk.eu

For more information about our services and how the China IPR SME Helpdesk can add value to EU SMEs, please contact: Telephone/Hotline: +86 (10) 6462 0892

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Feedback Questions Discussion

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