India: Microsoft Cross Licensing
Last Updated: 12 October 2018

Article by Rishabh Tripathi
Khurana and Khurana

Microsoft grants licenses to companies under fair and reasonable terms. It is important for the company claiming license to adhere with the Microsoft’s IP licensing policy. The process for granting license is non-exclusive and is based on “commercially reasonable” terms i.e. terms under which other technology industry license is granted. Microsoft entered into more than 1200 licensing agreements under commercially reasonable licensing terms with more than 700 of the world’s most dynamic and innovative companies. Generally, Microsoft reserves the right to grant license with certain limitations while accepting the application for licenses. The companies after obtaining license can use the licensed technology in their products, subject to the terms and conditions specified in the licensing agreement. It allows the companies to download product and keys, access all the information in one location, view the relationship summary and licensing summary details, review the status of enrollments and review and consume other software assurance benefits.

India: Fashion & Intellectual Property
Last Updated: 12 October 2018

Article by Paras Khurana
Khurana and Khurana

“Fashion is not something that exists in dresses only. Fashion is in the sky, in the street, fashion has to do with ideas, the way we live, what is happening.” – Coco Chanel

Fashion industry is at an all-time high and the present size of the market is a $US1 Billion. Many established players together with new designers are operating within the market. One of the key factors leading to the growth of successful fashion houses and of the fashion industry in general is the brand consciousness and the bond which is shared between the customers/clients and the fashion houses. The bond that fashion houses develop with their clients can be attributed to the popularity of their logos or house marks. Consequently securing these logos becomes paramount for these fashion houses.

China: Wexin Changes Not Only Lives but also the Rules of Game
Last Updated: 11 October 2018
Article by Xiaojun Guo
CCPIT Patent & Trademark Law Office

On April 20, 2016, the Beijing High Court made the finial judgment on the Weixin (Wechat in English) trademark opposition case, upholding the decision of the Trademark Review and Adjudication Board (TRAB), which refused registration of the trademark application for Weixin by a Chinese company Trunkbow Asia Pacific (Shandong) Co. The judgment essentially hints that Tencent Inc. owns the Weixin trademark and can continue using the Weixin trademark for its instant messaging service initiated in earlier 2011, which by the end of the third quarter of 2015, had obtained 650 millon monthly active users (for both Weixin and Wechat). Trunkbow applied for registration of Weixin trademark on November 12, 2010, about two months earlier than the initiation of Weixin instant messaging service by Tencent, on computer software and communication services.

China: Re-Analysis of “PRETUL” Retrial Case in terms if Infringement Judgment Criterion

Last Updated: 11 October 2018
Article by Xiaomeng Dong
CCPIT Patent & Trademark Law Office

The plaintiff (hereinafter “FOCKER”) was the owner of the registered mark “PRETUL” in China. It alleged that the defendant (hereinafter “YAHUAN”, a Chinese company) had infringed its trademark rights by using same or similar mark “PRETUL”. The “PRETUL” branded padlocks manufactured by YAHUAN were all entrusted by “TURPER” (a Mexican dealer) and all its manufactured padlocks were only for exportation to Mexico. On November 26, 2015, the China’s Supreme People’s Court (“SPC”) rendered a civil judgment on this retrial, affirming that the OEM manufacturer’s act of using the trademark in issue did not constitute trademark infringement because it did not qualify as trade mark use in the sense of article 48 of the Trademark Law (2013 version). The SPC overruled the finding of trademark infringement in the first instance (Intermediate Court of Ningbo) and in the second instance (High court of Zhejiang).

India: Amended Patent Procedures in Vietnam

Last Updated: 10 October 2018
Article by Deepika Sharma
Khurana and Khurana

Vietnam amended its Intellectual Property Laws in the form of Circular No. 16/2016/TT-BKHCN which came into force on 15th January, 2018

The amendments done in patent procedures were mostly related to application rules, patent applications, and examination procedures.

India: Implementing Artificial Intelligence at the Patent Office

Last Updated: 10 October 2018
Article by Shrimant Singh
Singh & Associates

Intelligence – undoubtedly the biggest virtue of humans over all other species – has evolved in true sense in last one decade where we have seen not only accumulation or growth of intelligence but also conferring of the intelligence to Machines by humans. Such is the power of “artificial intelligence” that in certain protocol related decisions based on Gigabytes of data evaluation, the machines possessing “artificial intelligence” is out performing humans by great margins. The performance is even better if we consider bulk data evaluations, which leads us to think about implementing artificial intelligence for issues relating to fact-based decisions or tasks but to be performed in very large numbers. This thought resulted in Governments also now considering effective mainstream use of blockchain, artificial intelligence (AI) and machine learning (ML) in their public processes that are otherwise manual or part-automated.

China: Not Simply Renamed – “SIPO” Becomes “CNIPA”

Last Updated: 7 October 2018
Article by Han-Mei Tso
Osha Liang LLP

On September 3, 2018, the State Intellectual Property Office of China announced on its website1 that the English name of the Chinese governmental body has changed from the “State Intellectual Property Office” (“SIPO”) to the “China National Intellectual Property Administration” (“CNIPA”). Accordingly, the agency’s English abbreviation of the bureau has changed from “SIPO” to “CNIPA” as well. The website domain has also been changed to http://www.cnipa.gov.cn/.

At the beginning of 2018, the Chinese government reorganized SIPO to centralize the administration of patents, trademarks, geographical indications of origin, and layout design of integrated circuits. As a result, efficiency of the administration of intellectual property affairs has greatly improved. Before the reorganization, patent matters were handled by SIPO; trademark matters were handled by the State Administration for Industry and Commerce; copyright matters were handled by the National Copyright Administration; and matters relating to geographical indication of origin, i.e., a property right similar to trademarks that was handled by the General Administration of Quality Supervision, Inspection and Quarantine of the People’s Republic of China (“AQSIQ”). For example, the AQSIQ’s administration was previously separate from the trademark administration.

China: Top 10 Things To Watch Out For In Your China Distribution Agreement
Last Updated: 5 October 2018
Article by Jamie Rowlands and John Chung

Gowling WLG

In this edition of our series on doing business in China, we discuss some issues to consider before a foreign seller enters into a distribution agreement with a Chinese party acting as the Seller’s distributor (the “Distributor”), to market and sell the Seller’s products and/or services on the Chinese market.

China: Court Awards Well-Known Mark To Unilever’s Pond’s, Scrubs Copycat’s Registration
Last Updated: 5 October 2018
Article by AFD China Intellectual Property

AFD China Believing the registration of No. 7185184 “??” (note: Chinese characters same with Pond’s) trademark (the opposed trademark) by Jiangsu Yancheng Youshang Advertising Company damaging the interests of its mark Pond’s, the Netherlands-based Unilever sought justice in Chinese authorities and courts that would eventually last eight years.

The Beijing High People’s Court recently made a final judgment determining that No.529659 trademark “??” (the reference mark owned by Unilever) qualified as a well- known trademark, rejecting the appeal from the Trademark Review and Adjudication Board (TRAB) and revoking its reexamination decision approving the opposed trademark for registration. Now the TRAB has to take a de novo look at the case.

The opposed trademark was filed by Youshang Advertising on February 1, 2009, designating to be used on Class 32 goods including water and drinks. After preliminary examination, the Trademark Office (TMO) published the opposed trademark on April 20, 2010. Unilever filed an opposition request to the TMO on July 22, 2010, alleging that the reference mark had qualified as a well- known mark for its performance in cosmetics for facial use in China and the registration and use of the opposed trademark would mislead the public and dilute the distinction of the reference mark.

According to file, the reference trademark was approved for registration in September 1990 by TMO, certified to be used on Class 3 goods including cosmetics for facial use.

On July 3, 2012, the TMO rejected the registration of the opposed trademark. The disgruntled Youshang Advertising lodged a reexamination request to the TRAB on August 17 of the same year. On March 13, 2014, the

TRAB made a reexamination decision that the mineral water and other goods on which the opposed trademark was designated for use differed greatly from those of the products such as cosmetics for facial use on which the reference trademark was famous and the registration of the opposed trademark would not easily cause confusion or misidentification among the relevant public. Accordingly, the TRAB approved the registration of the opposed trademark.

Unilever then brought the proceedings to Beijing No. 1 Intermediate People’s Court. After hearing, the court held that the reference mark constituted a well-known mark based on its use on goods such as cosmetics for facial use

and if the opposed trademark was used on mineral water as a registered trademark, it would make the public believe that there was a specific association between the above- mentioned products and Unilever, thus damaging the company’s rights and interests. Therefore, the court made a first-instance judgment on September 26, 2017, revoking the reexamination decision by the TRAB and asked it to make a de novo decision.

The TRAB then appealed to Beijing High People’s Court.

Beijing High held that the trademark “??” had been used and promoted in China for many years since 1994. Its wide use and the track record of being protected for multiple times were enough to prove that it had constituted a well-known trademark on products such as cosmetics for facial use. Beijing High upheld the first-instance judgment on the same ground.

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Japan: Dennemeyer Talks IP: New Types Of Trademarks In Japan
Last Updated: 1 October 2018
Article by Dennemeyer

Dennemeyer Group

Starting from April 1, 2015, the Japanese Trademark Act has been revised to allow registration of non-traditional trademarks. After three years, applications are still difficult to file, mainly due to the problematic examination process and filing methods. Kazuya Sekiguchi, Japanese and European Patent Attorney, sheds some much needed light on this subject.

A qualified patent attorney for both the JPO and the EPO, Kazuya Sekiguchi can handle Japanese and European cases directly and independently. Working from the Dennemeyer & Associates Munich office, he drafts patent/utility model applications, prepares responses to office actions and conducts appeals in front of the Japan Patent Office (JPO) and the European Patent Office (EPO).

China: On Differences Between The Patent Law In Mainland China And Taiwan
Last Updated: 28 September 2018
Article by AFD China Intellectual Property

AFD China

Taiwan and Mainland China have always been closely connected with each other. And along with the increasingly close communication in terms of economy and culture, more and more enterprises pay their attention to the Taiwan market. And as a result, the number of patent applications filed by citizens of mainland China is increased day by day.

The Patent Law in Taiwan has been amended for thirteen times, and the newly amended version has been taken effect as of May 1, 2017. Here we would like to share several obvious differences between the latest Patent Law in Taiwan and Mainland China with you.

I. Correction to patent documents

Articles 67, 120, and 139 of the Taiwan Patent Law stipulate respectively the right of patentees to correct the patent documents of an invention, utility model or industrial design patent. In other words, after the patent certificate is obtained, patentees still have the opportunity to make necessary adjustment to their patent documents which issued officially. Of course, there are restrictions on such post-grant amendments so as to avoid the patentee to widen the protection scope or seek protection for what are not disclosed in the initial application documents. The post-grant amendments would only be allowed if it were to: deleting claims, narrowing down the protection scope, correcting errors or mistranslations, and explaining unclear contents recorded thereof. Once the correction is approved, the updated patent documents will be announced again to the public, and the patent term is still reckoned from the filing date.

According to the relevant provisions of the Chinese Patent Law in the Mainland, once a patent is granted, the applicant will not be allowed to make modification to their patent documents which means the requirements for the applicants to review the application documents are stricter in mainland of China during the examination process. In practice, generally no modification would be allowed after the grant announcement made to the public. If there are indeed problems and/or errors in the patent documents, patentees may only be able to try to modify them by activate the invalidation procedures.

Compared with the Chinese Patent Law, the Taiwan Patent Law is more considerate. It gives opportunities to the patentees to allow them to solve the problems which they identified after the patent issued. It not only makes the authorized version of the patent documents become more completed and accurate, but also reduces the level of the risk on subsequent infringement and invalid legal issues. At the same time, from the jurisprudence perspective, patent rights are a part of the civil rights and therefore the right holders have the right to possess, use, profit and dispose his rights. Such a disposal of rights should include not only assigning, gifting, abandoning but also modifying, adjusting, deleting of the “possession” i.e. the patent(s). Considering the social justice, the law restricts the exercise of this right and imposes necessary restrictions to maintain the fairness of patent prosecution and the credibility of patent announcements.

In order to better protect the rights and interests, same time to avoid possible legal dispute within Taiwan, those who obtained a patent in Taiwan and have the demands of modifying the patent documents may consider making the amendment within the allowable scope of the Taiwan Patent Law. Especially when encountering invalidation procedures initiated by others, the patentees can make a request to make further amendments. The amendment request will be examined together with the invalidation request and might bring a more desired result.

II. Conversion of patent type

According to the Chinese patent law, applicants are required to select the type for his/her patent application at the beginning as when filing the application. They need to ensure in which type he/she would like to seek protection for his/her invention-creations – invention, utility model or design. Once it is selected, it cannot be changed. Such requirements are aimed to improve the working efficiency of the examination since the examination will be assigned to the suitable department according to the type of the patent at the very beginning.

In parallel, according to Article 108, 131 and 132 of the Taiwan Patent Law -, applicants are allowed to change the type of a patent application during the prosecution. To be specific, the applicants are allowed to: 1) convert an invention patent application to be either a utility model or a design patent application; 2) convert a utility model patent application to be either an invention or a design patent application; convert a design patent application to be either a utility model or a derivative design patent application (the latter one is a special patent type in Taiwan);

Regarding the timing of the conversion, the applicants shall ensure that the request is submitted before the notification of granting a patent is delivered. In other words, if patent right is already obtained, no conversion will be allowed. Where the decision of the patent office is to reject the application, the request of conversion shall be made within 2 months from the date on which the decision of rejection is delivered for invention and design applications; or 30 days for utility model applications.

Regarding the protection scope, the applications after conversion shall not go beyond the scope disclosed in the initial description, claims or figures, i.e. it is not allowed to enlarge the scope of a patent application by changing the type of the patent application. In the meantime, the subject matter of the claims shall be in conformity with the specific requirement of the patent type after the conversion. For example, it is not allowed to protect method in a utility model patent application.

When applying for Taiwan patents, the applicant shall take in account of his/her business strategy, the overall arrangement of patent protection, and the prosecution process and may use patent conversion to obtain the desirable result.

III. Conflicting application and novelty determination

Conflicting patent applications refer to patent applications that conflict with earlier-filed but not yet published patent applications by the same or a different applicant.

According to relevant provisions of the Chinese Patent Law, conflicting application destroys novelty, regardless of who is the applicant of the conflicting application. Therefore, if an applicant wants to file patent applications in the Mainland, he/she should try to use priority claiming to impair or avoid the risk where his/her latter application would lose novelty due to his/her early conflict application(s).

The Taiwan Patent Law explicitly indicates different opinions on conflicting applications. To be specific, it is stipulated that an early patent application will not destroy or undermine the novelty of a latter patent application if these two patent applications are owned by the same applicant. In other word, if a patent application is filed to seek protection for further development on the basis of an early innovation for which a patent application has been filed previously, even if the latter patent application does not claim priority to the previously filed patent application, such an early patent application will not destroy the novelty of the latter patent application.

IV. Time limitations

There are many differences in terms of time limitations during patent prosecution process between the Patent Law in Mainland China and the Patent Law in Taiwan. For instance, in mainland China, the certified copy of the priority is required to be filed within three months from the date on which the application is filed; while in Taiwan, it shall be filed within 16 months from the earliest priority date. Regarding the request for substantive examination, the applicant is the only person allowed to submit the request in the Mainland; while in Taiwan, anyone can submit the request, the patent examination authority will inform the applicant if the request is not filed by him/her.

China: Lines In Chinese Design Patent Applications
Last Updated: 28 September 2018
Article by AFD China Intellectual Property

AFD China

Dash lines, dot-dash lines, and shadow lines are frequently used for illustrating designs and defining bounds in mechanical drawing. Accordingly, many applicants use such lines to present a product for which he/she seek protection in an industrial design patent application.

Dash lines are discontinuous lines drawn with dots or short lines. According to National Standard GB/T 4457.4-2002 Mechanical Drawings – General Principles of Presentation – l two types of dash lines, namely fine dash lines and thick dash lines, are mainly used in technical drawings. Fine dash lines are used to represent edge lines and contour lines which are invisible or hidden. Thick dash lines are used to indicate which part allows surface treatment.

Dot-dash lines are frequently used in engineering drawings. Such lines consist of dots and short lines in succession, and are divided into fine dot-dash line, thick dot-dash line and fine double dots-dash line according to the National Standard. Fine dot-dash lines are mainly used to draw axis, symmetrical centerline, reference circle (lines), center lines of the pore distribution and cutting lines; thick dot-dash lines are usually used to define a range; fine double dots-dash lines are mainly used as the contour lines to indicate adjacent auxiliary parts, moving part’s extreme position, pre-formation shape, pre-cutting structure, traces, the manufactured product in blank drawing, specific areas, projection tolerance zone, processing structure, interrupt line and etc.

Shadow lines are not described in the National Standard. In general drawings, shadow lines are mainly used to indicate the shadow formed when light is projected onto solid object and present the three dimensional status of the solid object.

Pursuant to related provisions of the Patent Law of China, figures of a design patent application shall be drawn in conformity with the national standards regarding technical drawings and mechanical drawings. The shape of a design shall be drawn in well-proportioned solid lines. Shadow line, indicatory line, dash line, center line, dimension line, or dot-dash line is not allowed to be used. If any aforesaid lines are used in the figures of a design patent application, the Examiner will issue the Notification to Make Rectification and point out that “the figures cannot clearly show the industrial design of the product claimed in the design patent application, which is not in conformity with the provisions of Article 27.2 of the Patent Law” and request the applicant to either delete such lines or change them to solid lines. In practice, in order to strive for the greatest possible scope of protection, it is recommended that the applicant file the same set of views of a design described in dot lines twice (one set as a similar design of the other) in one design patent application so as to reserve the opportunity of implementing both ways of amendment to obtain two similar industrial designs later. In the case the applicant misses such a filing strategy, he/she can amend the dot lines through one of the above ways and try to amend through the other way by filing a divisional application to seek for a more comprehensive protection.

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