From October 19 to 22, the 2024 International Association for the Protection of Intellectual Property (AIPPI) World Congress is set to take place in Hangzhou City, Zhejiang Province. The conference is themed "Balancing Protection and Innovative Development of Intellectual Property."

The highlights of the conference can be summarised in the following "three lots of":

Firstly, there are a lot of delegates participating in the conference. The total number of registered participants for the conferecne reached 2,259, marking a record high for attendance of the conference held outside Europe. Participants come from 92 countries and regions, of which more than 1,500 are registered outside mainland China (including regions of Hong Kong, Macao, and Taiwan, China). The number of countries and regions represented by the participants has reached an all-time high in the history of the AIPPI conference, showcasing a broad level of representation.

Secondly, there are a lot of diverse activities featured at the conference. Over 30 academic events, such as seminars, forums, and luncheons, are organized in the conference. The conference topics will cover various fields of intellectual property, including patents, trademarks, copyrights, and designs.

Thirdly, there are a lot of Chinese elements. In terms of delegates participating in the conference, over 700 intellectual property professionals from China registered for the conference. Among them, 14 guests from the China National Intellectual Property Administration (CNIPA), courts, enterprises, and IP service organizations will participate in discussions on related topics, marking an unprecedented level of Chinese participation.

(Source: http://ipr.mofcom.gov.cn/index.shtml)

On September 11, 2024, Taiwan Intellectual Property Office (TIPO) of China announced a draft amendment to certain provisions of the Patent Act and solicited public opinions within 60 days from the date of the announcement of the draft in order to address the booming development of emerging electronics industries.

In order to adapt to trends in international design protection, the main focus of this amendment is related to the portion concerning patents for design. The key points are listed as follows:

1. The restriction that image designs must be applied to an "article" is relaxed, and the scope of subject matter for patents for design is expanded to include images generated by computer programs or other electronic technologies. The acts of infringement on such patents for design are clarified, and relevant procedures for application, amendment, etc., are established (see Articles 121, 124, and 136 of the Amendment);

2. A multiple design system is introduced, allowing applicants to submit two or more similar designs in the same application while retaining the original derivative design system. If an applicant has multiple similar designs in one application, he/she shall specify one of the designs as the original one (see Articles 127, 129, 139, 140, and 141-1 of the Amendment);

3. The grace period for maintaining novelty of a patent for design is extended from 6 months to 12 months, but this extension does not apply to the publication in a patent gazette (see Articles 122 and 142 of the Amendment);

4. The time limit for filing divisional applications is relaxed. Currently, divisional applications must be filed before the reexamination of the original application is closed. The new rule allows divisional applications to be filed within 3 months after the date on which an approval decision for the original application or reexamination is served (see Articles 130, 134, and 141 of the Amendment);

5. It is clarified that patent ownership disputes shall be resolved through civil litigation and adjudicated by the courts. Relevant provisions that allowed ownership disputes to be raised as grounds for invalidation have been removed (see Articles 10, 35, 59, 69, 71, 119, 140, and 141 of the Amendment).

6. Transitional provisions are specified (see Article 157-5 of the Amendment)

(Source: Unitalen)

On August 29, 2024, the TIPO of China announced that the Accelerated Examination Program for Re-examination (AEPRe) of patent applications for invention will begin on September 1, 2024.

According to statistics, in 2023, the number of re-examinations of patents for invention in Taiwan, China, was 6,538, the average issuance period for the first Office Action (OA) was 10.1 months, and the average closing period was 13.1 months. According to the assessment of the TIPO of China, through the AEPRe, applicants can expect to receive examination results within 2 to 3 months.

To apply for the AEPRe, the following requirements need to be met:

1. Requirement for eligibility of the case：re-examination of the patent applications for invention where the reason for the rejection decision of the preliminary examination is "only some of the claims are rejected";

2. Requirement for the filing time: the applicant shall file an AEPRe request, which may be submitted online, within the period from "notified by TIPO that the invention application will soon be undergoing Reexamination" to "received first Reexamination OA"; and

3. Application of the eligible claim amendments: applicants shall make amendments according to Article 49 of the Patent Act of Taiwan, China, when submitting the request, and all of the amendments should conform with the following circumstances:

a. Delete claims that have grounds for rejection in the rejection decision of the preliminary examination; and

b. Re-write the claims that are not rejected in the rejection decision of the preliminary examination to independent claims.

The foregoing amendments shall be accompanied by adjustments in the numbering of the claims, the reference relationships, and the addition of new dependent claims.

(Source: Unitalen)

Case Brief

In October 2022, during the trademark monitoring, Unitalen noticed the preliminary examination announcement of a Thailand's trademark "" in Classes 05 and 10, with designated goods including "sexual lubricants; condoms." However, it was suspected to be a case of trademark squatting targeting a well-known domestic company specializing in mobile game peripherals. Upon our report on the monitored situation, the domestic right holder decided to file an opposition against the squatted trademark.

After the domestic right holder entrusted the case to us, we immediately formulated an opposition strategy for the right holder. In this case, since the opponent had no prior trademark rights in Thailand, the classes of the squatted trademark were utterly different from those of the opponent's main business and its domestically registered prior trademarks, and the product relevance was also low, in terms of the strategy, we suggested citing Article 8(9), which stipulates that "any mark which is contrary to public order, morality or public policy shall not be registrable" and Article 8(10), which stipulates that "a mark, which is identical with a well-known mark or so similar thereto that the public might be confused as to the origin of the goods shall not be registrable" of Thailand's Trademark Act as grounds for filing the opposition application.

Based on the aforementioned opposition clauses, we mainly submitted evidence of prior use, including distribution agreements and Letter of Authorization signed between the opponent and its distributor in Thailand, sales evidence from Thailand's e-commerce websites, photographs of exhibitions in Thailand, and promotional evidence from Thailand's video websites. In combination with certificates of domestic and overseas prior trademark registrations, company and brand introductions, etc., we claimed that the opponent is the true holder of the trademark and that its trademark has a high degree of popularity. At the same time, the trademark "" filed is entirely composed of the combination of the device portion "" and the textual portions "" and "" of the opponent's trademark, indicating that the application is not made by chance. The fact that the opposed party also squatted on trademarks of other Chinese entities further demonstrates its apparent malice.

In February 2023, the opposed party submitted a defense to the opposition. After examination, the Examiner upheld our opposition claims under Section 8(9) of the Trademark Act of Thailand. In the decision on opposition, the Examiner determined that the trademark marks of both parties were similar. Meanwhile, the evidence submitted by the opponent could demonstrate that the opponent already registered and used the mark involved in China and other overseas countries as early as 2018, establishing that the opponent is the actual right holder of the mark involved. The opposed party, on the other hand, applied for the mark as late as 2022 and did not provide any evidence in its defense to prove that its use of the trademark preceded that of the opponent. Based on the above, the Examiner concluded that the opposed party maliciously imitated and squatted on the opponent's trademark with knowledge of the opponent's trademark, violating public order, morality, or public policy. Therefore, the Examiner decided that the trademark in dispute shall not be registered.

Attorney's Comments

This case is a typical example of a successful cross-class opposition on goods with low relevance, achieved by claiming a violation of the public order, morality or public policy clause, despite the absence of prior trademark in Thailand.

Case Brief

Schneider Electric Europe (hereinafter referred to as Schneider Europe) licensed the registered trademarks "" and "施耐德 (Schneider)" approved for use on Class 9 circuit breakers, electric switches and other products to Schneider Electric (China) Co., Ltd. (hereinafter referred to as Schneider China) in which it invested. Schneider China has invested in multiple electrical production enterprises across the country, and most use "施耐德 (Schneider)" as their corporate name. The "", "施耐德 (Schneider)" and other series of trademarks have a high market reputation in the electrical industry and the market. Schneider China believes that the prominent use of the "施耐德（Schneider）" and "SCHNEiDER" marks of Suzhou Schneider Elevator Co., Ltd. (hereinafter referred to as Suzhou Schneider) constitutes trademark infringement, and its registration of a corporate name containing the "施耐德 (Schneider)" name and use of a domain name similar to the core element "Schneider electric" of the "" trademark constitutes unfair competition, so it filed a lawsuit in court, requesting that Suzhou Schneider stop the infringement, change the corporate name, compensate for losses, and eliminate the impact. Suzhou Schneider argued that the use of the mark involved was authorized by an overseas company, and there was no intent to freeride on the goodwill of the trademark. After trial, the court of the first instance held that the alleged behavior constituted trademark infringement and unfair competition and ordered Suzhou Schneider to immediately stop the alleged behavior, handle the procedures for changing the corporate name, compensate for losses of 40 million RMB and reasonable expenses of 150,000 RMB, and publish a statement to eliminate the impact. The High People's Court of Jiangsu Province held in the second instance that Suzhou Schneider was aware of the popularity of the trademark and the mark involved in the case, and signed a brand use agreement with an overseas company to obtain authorization for a mark similar to the trademark involved in order to freeride on the goodwill of the trademark involved. The first instance judgment was correct in its determination of trademark infringement and unfair competition. Taking into account the popularity and market value of the trademark involved, the subjective malice of Suzhou Schneider, the time and scale of the infringement, and other factors, the amount of 40 million RMB in compensation determined by the first instance judgment was not improper. The High People's Court of Jiangsu Province rejected the appeal in the second instance judgment and upheld the original judgment.

Typical Significance

This case is a typical example of severely punishing "free-riding," counterfeiting, and confusion behaviors. When there is sufficient evidence proving that the profits from infringement exceed the statutory maximum limit of compensation, the People's Court reasonably distributes the burden of proof and correctly applies the discretionary compensation method to determine the amount of compensation as appropriate, which effectively cracks down on market confusion behaviors that piggyback on the goodwill of others, significantly increases the cost of infringement, and fully reflects the clear judicial orientation of effectively strengthening the protection of intellectual property rights.

(Source of case: Supreme People's Court of the People's Republic of China)

Case Brief

The plaintiff is a copyright holder of a film and television work, the defendant A technology company is a provider of in-vehicle system application management services, the defendant B video company is a provider of the work infringing the copyright, the defendant C new energy company is an automobile manufacturer of a brand. The plaintiff claimed that the three defendants, without authorization, provided online Video on Demand service for its TV show in the in-vehicle video software APP terminal of the vehicles under the brand, infringing the plaintiff's right of Communication to the Public on Information Networks, and demanded that the three defendants stop the infringement, pay compensation for losses, and make apologies.

After the hearing, the court held that the B video software company uploaded the video infringing the copyright on to the network server of the in-vehicle video software terminal to provide users with playback services, infringing the plaintiff's right of Communication to the Public on Information Networks of the work involved. The A company, working with the B company, was responsible for the launch, presentation, and promotion of the in-vehicle video software APP terminal in the in-vehicle system of the vehicles under the brand, provided the membership package service, and charged money for the service. As a participant and beneficiary of supplying the work involved, the A technology company constituted a joint infringement with the B video company and shall bear joint liability with the B video company. The two defendants compensated the plaintiff for the economic loss and reasonable expenses totaling 50,000 RMB.

Typical Significance

The case is China's first copyright infringement case involving the "Internet of Vehicles". It was first ruled that the act of the in-vehicle system provider and the show provider conducting copyright infringement in the form of division of labor constituted joint infringement. This case provides an advantageous reference for the trial of copyright cases involving the "Internet of Vehicles." Also, it provides ideas for the trial of copyright cases involving the "Internet of Things" and other new scenarios, which will promote the healthy development of the digital economy.

(Source of case: Beijing Internet Court)

In grand commemoration of the 30th anniversary of the establishment of the China Trademark Association, the Association has reviewed and sorted out trademark cases from 1994 to 2024 and selected 31 classic trademark cases with benchmarking, demonstrative, and pioneering features annually. Therein, the trademark infringement case of "LAFITE" (拉菲), represented by Unitalen, was selected for having a final compensation amount of up to 79.17 million RMB by applying the rules of punitive damages. The case was awarded as one of the top ten intellectual property cases in China in the year of 2023 by the Supreme People's Court.

Read more: https://www.unitalen.com.cn/html/report/24051443-1.htm

On September 26, the Beijing Federation of Industry & Commerce held a news conference on the 2024 Beijing Top 100 Private Enterprises. It released the 2024 Beijing Top 100 Private Enterprises "1+4" List, i.e., "Beijing Top 100 Private Enterprises", "Beijing Top 100 Private Enterprises in Science and Technology Innovation", "Beijing Top 100 Private Enterprises in Cultural Industry", "Beijing Top 100 Private Small and Medium-sized Enterprises" and "Beijing Top 100 Private Enterprises in Social Responsibility". Unitalen Attorneys at Law, with its excellent business capabilities and great social image, was once again ranked in the "Beijing Top 100 Private Enterprises in Cultural Industry" list.