In the 2018 Survey on the Implementation of the PCT system in China conducted by China National IP Administration (CNIPA), it’s reported that:

(1)The PCT applications maintained a high growth trend, the number of PCT international patent applications from China in 2018 was 53,345, ranking second in the world.

(2)The geographical distribution of PCT applications and the distribution of technical fields remain concentrated; Geography wise, China's PCT applications in 2017 were still mostly from the regions such as Guangdong, Beijing and Jiangsu.

(3)The PCT applications are mostly filed through agency and by the means of electronic submission.

(4)The distribution of Chinese PCT applications entering the national phase is relatively concentrated in the fields of optics, semiconductors, audio-visual technology, digital communications, and computer technology. Among them, the proportion of optical, semiconductor, audio-visual technology and digital communication has exceeded 50%, and the optical field has reached 71.7%.

(5)The efficiency of using the PCT system, for some applicants, has improved significantly. From 2012 to 2014, the United States, Europe, Japan and South Korea remained as the main target countries and regions for China's PCT applications to enter the national phase. During the period, the average number of times for each Chinese PCT application to enter the foreign country’s national stage had increased from 0.78 to 0.85.

(Source: CNIPA website)

In 2018, China advanced steadily in the construction of IP powerhouses, both the quality and efficiency of IP review continued to improve, the average examination cycle for trademark registration was shortened to 6 months, the high-value patent examination cycle was reduced by 10%, and the total annual fee reduction for patents was 5.86 billion. yuan.

It’s reported that as of the end of 2018, China's domestic (excluding Hong Kong, Macao and Taiwan) invention patents reached 1.602 million, an increase of 18.1% over the last year, and the number of invention patents per 10,000 population reached 11.5. The number of applications for international registration of Madrid trademarks was 6,594, a year-on-year increase of 37.1%. A total of 2,380 GI products and 4,867 registered GI trademarks were approved. A total of 1,990 new varieties of agricultural plants and 405 new varieties of forestry plants were awarded, an increase of 34% and 153.1% respectively. The number of registrations of works and computer software copyrights reached 2.35 million and 1.1 million, respectively, an increase of 17.48% and 48.22%.

According to the 2018 Global Innovation Index Report released by the WIPO, China ranked 17th in the world and had been the only middle-income economy entering the top 20.

(Source: China Intellectual Property Information Network)

Case Background:

Beijing Lafayette Castle Hotel Co., Ltd., on its self-operated website, claims to be “a melting spot of wine culture, French architecture, sculpture and garden art; and an ideal venue for large-scale performance event, cocktail party, exhibition, high-end conference and Chinese or Western style wedding”. Lafayette Castle had applied for registration of a large number of “LAFFITTE”, “拉斐特” and “拉斐特城堡 CHATEAU LAFFITTE” in Class 43 “Residential (Hotels Homestay)” since 2007. Apparently, these trademarks are the copy, imitation and translation of the "Lafite" and "拉菲" trademarks owned by our client, Lafite. Lafite first initiated the invalidation request against the related trademarks registered earlier, including the Chinese “拉斐特” trademark.

However, the Trademark Review and Adjudication Board ruled against the invalidation request submitted by Lafite on October 8, 2015, they held that the disputed trademark “拉斐特” and the cited trademark “LAFITE” were observed with big difference visually in whole, and the services designated for use on of the disputed trademark differs greatly from the well-known products of “LAFITE” trademark, so it’s ruled to maintain the registration of “拉斐特” trademark. In refusal to the acceptance of ruling, Lafite filed a lawsuit with the Beijing IP Court.

Court decision:

The Beijing IP Court of the first instance and the Beijing Higher People's Court of the second instance all held that the “LAFITE” trademark had been famous enough to be recognized as “well-known” for wine products prior to the filing date of the disputed mark, May 17, 2007. Through many years of commercial business activities, Lafite, in reality, has established a strong connection between “拉菲” and “LAFITE”. The relevant public in China also refers to “LAFITE” as “拉菲”. Under this circumstance, the trademark “拉斐特” in this case is a copy, imitation and translation of the cited trademark “LAFITE”. The use of the trademark on the designated “buffet cafeterias, restaurants, residences (hotels, boarding houses), cocktail reception services, bars” and other services is misleading to the public, therefore the trademarks shall be declared invalid.

Typical meaning:

The typical significance of this case is that the disputed Chinese trademark is recognized as copy, imitation and translation of the well-known English trademark, and the well-known trademark is protected across class to the goods and services that are not closely connected.

Although the case is mostly about the application of the 3rd paragraph of Article 13 of the Trademark Law, it also involves the determination of the similarity of trademark, the unique correspondence between the Chinese and English trademarks, the determination of the protection scope of the well-known trademark, and the measurement of malicious intent of the trademark applicant. These issues must be considered in full in preparation for demonstration and proof, each of them is indispensable. 　　

This May, as a member of INTA, Unitalen attended the 141th INTA Annual Meeting with a delegation of 16 people in Boston.

On May 20, our Senior Partner, Ray Zhao, was invited by INTA to give a keynote speech at the session of “CM50 Interplay between Designs, Copyrights and Trade Dress – Overlapping or Coexisting”. Mr. Ray Zhao and the IP experts from South Africa, the United States, Argentina, and Spain exchanged and discussed the strategies and practices for the major IP such as design patents, copyrights, and trade dress in the main markets of the world. In addition, Ray Zhao introduced the relevant protection mechanisms in India and Japan, which is very similar to that of China. In this regard, he pointed out that in China, India or Japan, for the protection of trade dress, IP rights holders have multiple options for protection such as 3D trademarks, copyrights, design patents, etc., and should make full use of the advantages and disadvantages of various rights for the optimal protection.

May 21, Mr. Suwa, the director of the IP Center of Mitsubishi Electric Corporation and a delegation of Mitsubishi representatives visited Unitalen and presented a recognition medal to us for the appreciation of the contribution we had made in the past year to the Mitsubishi IP activities in China.

Unitalen President, Bradley Yu welcomed Mr. Susa’s visit and thanked Mitsubishi Electric for its trust in and support to Unitalen. It is reported that Unitalen is among the only two Chinese IP agencies that were awarded by Mitsubishi Electric Corporation in 2018.

From May 7th to 8th, the 8th China Competition Policy Meeting hosted by the State Administration of Market Supervision and the Hainan Provincial Government was held in Haikou, Hainan Province. The theme of this event is “Higher Level Openness and Competition Policy – From the Perspective of China Free Trade Zone/Freeport Construction”. At the same time, the China Market Supervision Roundtable - “Antitrust Law Enforcement Practice Development Forum”, hosted by the Development Research Center of the State Administration of Markets of China, was held during the meeting. Li Yongbo, senior partner of Unitalen, was invited to attend the forum and delivered a speech at the round table.

Li Yongbo had shared his views on the protection of industry through antitrust administrative law enforcement with case studies, to provide analysis of the LED industry, MOCVD technology development history, the domination in the related markets and competition status in the industry so as to draw the conclusion of monopoly business economy, revealing the importance of antitrust administrative law enforcement for industry protection.

May 6, the “Overseas IP Protection Forum” co-sponsored by Suzhou IP Office, Beijing Unitalen IP Agency Co., Ltd. and German ZSP Patent Office was successfully held in Suzhou.

Mr. Shi Weibing, the deputy director of the Suzhou Municipal Market Supervision Administration (IP Office) made an opening with the introduction of the current overseas patent applications status quo.Next, Dr Susanne Schollweck, partner of ZSP Patent Office in Germany, made a comprehensive analysis of the key issues of European patent application.

Then, Zhou Xinyan, the head of the International Trademark Department of Unitalen IP Agency, presented the analysis of the problems encountered by Chinese companies in applying for trademarks in Europe through detailed study of foreign trademark rights protection cases and overseas litigation cases, so as to help enterprises understand the direction of overseas court judgement, how to optimize the application and control the risk.

Finally, Tian Junfeng, the head of Unitalen Germany Branch, gave a detailed explanation of how to avoid product infringement at trade shows with case studies.