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LimeGreenIP News

Deanna Wong

Posts by Deanna Wong

China’s OEM jurisprudence 1.5 years after the Pretul case: OEM use may still infringe upon Chinese trademarks

Original equipment manufacturing (OEM) is a business model whereby a trademark owner orders its products from a manufacturer, often located abroad, who manufactures and supplies products branded with the purchasers marks instead of his own marks. In China, which is often branded “the factory of the world”, OEM is big business. However, from a trademark

A step in the right direction: China’s TRAB launches new trademark review hearing system

Under the Chinese Trademark Law, the Trademark Review and Adjudication Board (“TRAB“) decides on review procedures filed against decisions by the Trademark Office. Up to date, these TRAB review procedures were strictly written procedures. Even though the possibility of holding a hearing was written into the existing legislation, hearings were in practice never held. This

China: Whose voice is it? – The arbitral award is out… but the case is not concluded…

The Hong Kong International Arbitration Center (“HKIAC”) has recently issued its final award in the trademark litigation saga surrounding “The Voice of China” – which we first discussed here. This case is high-profile and interesting, because it involves parallel arbitral and judicial procedures (including a rare preliminary injunction) about the ownership of the rights in

Beijing IP Court celebrates 2nd anniversary amidst praise for its professionalism, expertise regarding foreign litigation and higher damages for IP infringement

Founded as one of three specialised Chinese IP courts in 2014 (see here and here), the Beijing IP Court has just completed its second and most challenging year to date. According to a recent report, throughout 2016, the Court witnessed increasing amounts of high-tech cases, cases involving foreign entities, and cases in which enormous damage

New specialized IP Tribunals unveiled in economic powerhouses Wuhan, Nanjing, Suzhou and Chengdu.

Following the largely successful establishment of the specialized IP Courts in Beijing, Shanghai and Guangzhou (see our articles here and here), the Chinese Supreme People’s Court has recently also given the green light for the establishment of specialized IP tribunals in large inland cities Wuhan, Nanjing, Suzhou and Chengdu. It is hoped that the establishment

Every cent counts: China slashes certain IP application fees as of 1 April

Reduced filing fees finally come to China! On 15 March 2017, the National Development and Reform Commission and Ministry of Finance jointly issued a notice (财税 [2017] No.20, “Notice”) to reduce filing fees for various IP registrations.  The reduced fees came into force on 1 April 2017. The reduced or waived administrative fees will certainly be beneficial for

“Swiss” certification mark opposition – Hong Kong court finds actual use likely to confuse

Hogan Lovells represented Federation of the Swiss Watch Industry FH (“Federation”) in a successful appeal against a decision of the Hong Kong Registrar of Trade Marks in an opposition involving the “Swiss” certification mark[1]. Importantly, the Court’s decision confirms the public interest in ensuring that certification marks are given the necessary protection in Hong Kong.

China: President-Elect Trump winning trademark battles?

Background. President-elect Donald Trump has joined the ranks of celebrities such as Allen Iverson, Michael Jordan -and even James Bond (!)- in taking up the hatchet against China’s notorious trademark squatters. These trademark squatters typically use and abuse the first-to-file rule: i.e. the first person to file for a mark (and not use a mark,

China: piercing the corporate veil in IP infringement cases?

In China, the legal personality of limited companies generally protects shareholders and legal representatives (i.e. the Chinese equivalent of a managing director) from debts entered into, or liabilities imposed on a company. This principle is also known as the “corporate veil”. However, in a recent trademark infringement case, the Jiangsu Higher People’s Court held that

China: Whose voice is it?

The Beijing IP Court recently issued a widely discussed preliminary injunction against Canxing (上海灿星文化传播有限公司) in a trademark dispute about the name of a famous TV program “the Voice of China”/”中国好声音”. In its first preliminary injunction since its establishment in December 2014, the Beijing IP Court ordered Canxing to immediately cease the use of the name

A welcome trend: China’s Supreme People’s Court rules damages should be proportional to fame in trademark infringement cases

In a recent appeal, China’s Supreme People’s Court (“SPC“) found in favour of Michelin against Sen Tai Da and related parties (“Sen Tai Da“) for trademark infringement. The SPC’s decision is significant in that it authoritatively confirms the emerging trend to take the reputation of a mark into account when determining the level of the

No place to hide in Chinese cyber space – new rules regulate online advertising

On 4 July 2016, the State Administration of Industry and Commerce (“SAIC“), the regulatory body charged with enforcing, among other things, the People’s Republic of China Advertising Law (revised with effect from 1 September 2015) (“Advertising Law“) released the Administration of Online Advertising Interim Measures (“Interim Measures“; in Chinese <互联网广告管理暂行办法>), which will come into effect

More efficient and effective administrative trademark actions in China

The Chinese State Administration for Industry & Commerce (“SAIC”) has recently launched a new initiative, allowing foreign trademark owners to designate a Mainland China-based contact person for their registered trademarks. Foreign trademark owners who take advantage of this service should benefit from more efficient and effective administrative trademark enforcement. Currently, when local bureaus of the

The big picture on IP litigation in China

The Supreme People’s Court (“SPC”) recently released its White Paper on Judicial Protection of IPR, 2015 (“中国法院知识产权司法保护状况(2015), “White Paper”), containing statistics on IP litigation in China. Significantly, the statistics also contain the first conclusive data on the operation of the specialized IP Courts in Beijing, Shanghai and Guangzhou, over a year after they started accepting

Towards a Greater Chinese Firewall? – China issues new draft domain name rules

On 25 March 2016, the Chinese Ministry of Industry and Information Technology (the “MIIT“) issued Draft Rules on the Administration of Internet Domain Names (“Draft“) and issued a call for comments. The Draft has raised serious concerns among the public and the international media. In this article we summarize the key changes in the Draft,

China: Kung Fu Panda’s ‘merchandising right’ knocks out trademark squatter

The Beijing Higher People’s Court recently rejected a trademark application for the word mark “Kung Fu Panda”, filed by a trademark squatter, which was opposed by animation studio DreamWorks. Interestingly, the rejection was primarily based on DreamWork’s ‘merchandising right’. This is one of the most recent and strongest recognition of a merchandising right as a

China: Moncler carries the day and takes home a whopping 3 million RMB in statutory damages

Moncler, a Franco-Italian fashion brand famous for its shiny, fluffy winter coats, has recently achieved a significant victory before the Beijing IP Court. Moncler is in fact the first claimant to obtain the increased maximum statutory damages of RMB 3 million (approximately US$ 470,000) since the new Trademark Law came into force in May 2014

China’s SAIC tightens its grip on online advertising in its newest Draft Measures

Given the lower level of government scrutiny and the widespread use of (mobile) internet, online advertising has become very popular in China. However, in the wake of China’s new Advertising Law, the State Administration of Industry and Commerce (‘SAIC’) has now turned its attention to the online environment, recently issuing its Draft Interim Measures for

China’s SAIC sharpens its blades for its 2015 “Red Shield Net Sword” enforcement campaign.

China’s State Administration of Industry and Commerce (“SAIC”) has recently announced that it will launch its annual online piracy crackdown campaign, which is –rather cryptically- called the “Red Shield Net Sword Campaign” (红盾网剑专项行动). The campaign promises to take a heavy hand against online sales of counterfeit and sub-par goods, and will mainly target infringements on

Specialized IP courts in China are open for business

As we reported earlier in Specialized IP Courts in Beijing, Shanghai and Guangzhou: Paving the way to more efficient IP litigation?, on August 31, 2014, China’s Standing Committee passed a decision concerning the establishment of specialized IP courts in Beijing, Shanghai and Guangzhou. These three jurisdictions were not picked at random; they are three of

China’s administrative litigation law amended – slowly moving towards greater rights for market participants?

“Strengthening the rights of plaintiffs challenging administrative conduct… is thus a step in the right direction… for both the IPR and antitrust fields” Introduction In 2013, China’s legislative branch decided to amend the ALL. The main aim of the revision seems to be removing a range of procedural obstacles that plaintiffs face when bringing administrative lawsuits.