To read News & Cases from China: July 2021, please click here.
CNIPA Releases Revised Patent Examination Guidelines (Draft for Comment)
The CNIPA has issued draft revisions to the Patent Examination Guidelines aimed at ensuring the effective implementation of the amended Patent Law that came into effect on 1 June 2021.
The main contents of this revision include:
- Provisions for the improvement of the industrial design system: (a) the application document requirements and review standards for partial designs and graphical user interface products, (b) the examination of obvious differences in industrial designs, (c) the priority for domestic design patent applications; and, (d) the submission and review procedures of international industrial design applications, etc;
- Procedural provisions relating to the Patent Cooperation Treaty, involving invocation and accession, priority restoration, addition, correction, etc.
- Provisions on patent term compensation, involving patent authorization term compensation and drug patent term extension.
- Provisions on patent open license, involving the proposal and withdrawal of open license declaration, the registration and announcement of open license, the effectiveness and filing of open license implementation contract, the handling of fee reduction procedures, etc;
- The relevant provisions on the examination of invalid cases in the early resolution mechanism of drug patent disputes, involving the submission of requests and supporting documents, examination sequence, examination basis, examination status and notice of conclusion;
- The relevant provisions on dealing with emergencies such as epidemic situations, involving the grace period without losing novelty and ex officio extension of the time limit;
- The relevant provisions to improve the examination quality and efficiency, involving the examination of obvious inventiveness of utility models, the examination of invention patent applications for computer programs, ex officio examination in the reexamination and invalidation procedures, the provisions on the parties to ownership disputes to participate in the invalidation procedures, the further improvement of the delay examination system, and judgments and examples that violate the principle of good faith;
- In order to implement the relevant provisions of the requirements of "reforms to streamline administration, delegate power, improve regulation, and upgrade services", it involves matters related to the patent evaluation report, allowing the submission of colour drawings, simplifying the submission method of abstract drawings, exceptions to compulsory agency entrustment, simplifying the divisional application procedures, simplifying the requirements for the submission of sequence tables, etc;
- The relevant provisions on institutional reform, involving the adaptive modification of the expression of the Patent Reexamination Board, etc.
SPC Issues Interpretation on Several Issues Concerning Application of the Anti-Unfair Competition Law (Draft for Comments)
The Supreme People's Court has issued the Interpretation on Several Issues Concerning the Application of the Anti-Unfair Competition Law (Draft for Comments) to assist in the determination of civil disputes arising from acts of unfair competition in accordance with the Civil Code, the Civil Procedure Law and the Anti-Unfair Competition law. The deadline for feedback is September 19, 2021.
The main modifications include: an explanation of various key terms including ‘unfair competition’, ‘business ethics’, ‘other operators’, ‘influential signs’, ‘decoration’ and "’forcibly jump link’ in the Anti-Unfair Competition law; clarifies the scope of Article 2; supplements the provisions relating to the protection of commercial signs; and provides guidance as to the application of provisions relation to unfair competition on the Internet.
At the end of the draft, the Supreme Court also clarifies various procedural matters such as jurisdiction and limitation of actions.
此次征求意见稿对《反不正当竞争法》的“不正当竞争行为” “商业道德” “其他经营者” “有一定影响的标识” “装潢” “强制进行目标跳转”等名词进行解释。
Tianhe Culture Ordered to Pay Compensation of 99.76 Million Yuan (approx. US$ 15.43 Million for Breach of Copyright Collecting Agency Contract)
Tianhe Culture and its subsidiaries are authorised by China Audio-Video Copyright Association(CAVCA), China’s collective management organisation (or copyright collecting or performing right society), to collect karaoke copyright royalties. In November, 2018, CAVCA brought an action against Tianhe Culture in the Beijing Intellectual Property Court, claiming that, since the fourth quarter of 2016, it had been embezzling the copyright usage fees through the use of related companies. At the same time it executed its arbitrary dissolution right to terminate its cooperation with Tianhe Culture.
Tianhe Culture argued that the agreements it had entered into with CAVCA were cooperative agreements in nature, rather than simple entrustment contracts, which meant that CAVCA did not have an arbitrary dissolution right.
On 29 July 2021, the Court delivered its judgment. It held that the agreement between the two parties had been appropriately terminated by CAVCA and that, during the performance of the contract, Tianhe Culture and its subsidiaries had engaged in continuous and malicious breaches, deliberately delaying settlement, intercepting copyright fees, etc., which had serious consequences for CAVCA. In addition to being required to pay the correct copyright fees to CAVCA, Tianhe Culture should bear liability for breach of contract.
The Court ordered Tianhe Culture to pay arrears of copyright license fees and interest of 95.3 million yuan (approx. US$ 14.75 million) to CAVCA, interest of 4.13 million yuan (approx. US$ 639,324) due to delayed payment of copyright, and damages for economic loss of 330,000 yuan (approx. US$ 51,084).
Schneider Protected its Trademark and Won A Compensation of 3 Million Yuan
施耐德中国公司与2019年发现东恒公司在其经营的网站首页、信息标题等处使用使用 “施耐德” 字样，其等产品链接和产品介绍中使用 “施耐德” 标志。施耐德中国公司认为，东恒公司在明知其行为构成商标侵权的情形下重复侵犯施耐德中国公司商标权，主观恶意明显。故施耐德中国公司诉至朝阳法院，请求法院判令东恒公司立即停止侵权并赔偿其经济损失300万元。东恒公司辩称，涉案网站由第三方公司独立制作、运营，涉案侵权行为系双方2013年经法院调解后未及时整改所致。
Schneider Awarded Compensation of 3 Million Yuan (approx. US$465,00 ) for Trademark Infringement
In 2019, Schneider Electrics (China) Co., Ltd. (Schneider) became aware that Hangzhou Dongheng Electrics Co., Ltd (Dongheng) was using the word ‘Schneider’ on its website, and the ‘Schneider’ logo in product links and information. Both the word and the logo were registered trademarks belonging to Schneider China.
Schneider commenced trademark infringement proceedings in the Beijing Chaoyang District Court (Chaoyang Court), seeking an order that Dongheng immediately stop the infringement and pay compensation of three million yuan (approx. US$ 465,000). Dongheng argued first that it was not responsible for the website on which the marks were used - it was independently produced and operated by a third-party company.
Chaoyang Court held that the ‘Schneider’ logo used by Dongheng infringed both Schneider Company’s word and logo marks. Dongheng had an ICP (Internet Content Provider) license in relation to the infringing website, and was responsible for content published on the website. It was therefore responsible for any trademark infringement occurring on the site. The Court ruled that it should pay compensation of three million yuan (approx. US$ 465,000).