New Guiding Case on Enterprise Name Protection

The Stanford Guiding Cases project has recently released a translation of an IP-related case on enterprise name protection, Tianjin China Youth Travel Service v. Tianjin Guoqing International Travel Agency, A Dispute over an Unauthorized Use of Another Enterprise’s Name.

The Stanford website describes the case as involving the protection of an abbreviated enterprise name that has been widely used externally for a long period of time and that functions as a trade name, and protecting against keyword purchases by a business operator who uses that enterprise name without authorization causing the public to be confused and misidentify the enterprise.

The court relied upon relevant provisions of the Civil Law, the Anti-Unfair Competition Law and the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Handling of Unfair Competition Civil Cases (2006).  In holding that the abbreviated enterprise name also functions as a trade name, the court also noted that the Communist Youth League Tianjin Committee had issued a certificate stating that “Tianjin Qinglü” was the abbreviated enterprise name of Tianjin China Youth Travel Service, a State Owned Enterprise and that the name had been adopted by media outlets.  This guiding case was decided by the Tianjin High Court, which ordered compensation of 30,000 RMB, an apology and enjoined further infringing conduct.

This case offers potentially useful guidance for foreign-invested enterprises whose trade names enjoy market visibility and are known to the relevant public.  These trade names may be deemed an “enterprise name” and enjoy protection from unfair competition.  Foreign companies often have trade names thrust upon their trademarked product or enterprise names when the Chinese consuming public believes another name may be more appropriate (e.g., Wrigley’s “green arrow” gum).  This case may offer some guidelines for developing strategies to protect those names from enterprise name “squatters,” including in the on-line environment.

US-China Business Council Ranks IP as a Top Five Concern

The US-China Business Council recently released its annualChina Business Environment Survey Report (http://uschina.org/reports/uscbc-2014-china-business-environment-survey-results). Intellectual property enforcement climbed theranks to number 2, just after concerns over competition with Chinese companiesin China. Companies positively noted certain IP developments, including more administrative actions, greater attention to the IP legislative framework and China’s incipient efforts at developing specializedIP courts.

Forty-nine percent of the respondents indicated that criminal enforcement was not a viable option, and only eight percent of the respondents indicated that criminal enforcement was a successful channel – the lowest of any enforcement channel.

There were other top 10 concerns that related to IP, including concerns over uneven enforcement of the laws and AML enforcement, transparency and national treatment.

Other concerns related to IP include technology transfer (ranked 11th), antitrust enforcement(ranked 22nd), and innovation policies (ranked 24th). Sixty-two percent of companies report that they are concerned about transferring their technology to China, particularly as it relates to the protection of intellectual property rights and proprietary information and the enforcement of technology licensing agreements. Forty-eight percent of the companies also surveyed said that they limited R&D activities in China due to China’s IP environment.

Clearly, IP and licensing concern sare impacting China’s ability to attract cutting-edge technology from foreign companies.

IP Position in Econ Section of US Embassy

The US Embassy in Beijing has extended its search for a local staff economic specialist position with an IPR focus, with a starting salary of 218,000 RMB/year and excellent benefits. The deadline listed has been extended to October 27. The announcement is found at: http://photos.state.gov/libraries/china/913634/wangcx3/VA-Economic%20Specialist.pdf. The listing is found at: http://beijing.usembassy-china.org.cn/positions-open-to-locally-employed-staff.html. The point of contact for applications is: USEmbassyBJHR@state.gov

New Draft Trademark JI Published for Comment

The Supreme People’s Court published today, October 15, a draft judicial interpretation for public comment: “Decision of the SPC Regarding Practical Questions in Trial of Trademark Validity Administrative Cases” (最高人民法院关于审理商标授权确权行政案件若干问题的规定. See: httphttp://www.chinacourt.org/law/detail/2014/10/id/147963.shtml.://www.chinacourt.org/law/detail/2014/10/id/147963.shtml. This is one of two planned JI’s to implement the revised trademark law. The second JI will consider trademark infringement matters. Comments on this draft are due by November 15.

Two Programs in Two Days This Week in California and Ohio

The seminar US and China Intellectual Property Dialogue – Latest Developments of Intellectual Property Law and Enforcement will be held this Thursday, October 2, 2014 at the Hyatt Regency, Santa Clara.  Additional information is also at http://svipla.org/event-1712495 or via email from info@chinaIPfund.org.  The program will include such notables as former PTO Director Bruce Lehman, former SIPO Commissioner Gao Lulin, Former SIPO DG of Law and Treaties, Yin Xintian, and John Cabeca and Elaine Wu from USPTO. It is free of charge, including breakfast, lunch, and coffee breaks with cocktail reception to follow.

The next day, on October 3, the University of Toledo Law School will be sponsoring another all day programDoing Business in China: A Legal and Commercial Review”.  The fee is only $35.00 and also includes a solid bench, including Tom Moga, Peter Yu, Elizabeth Lai Featherman and me talking about IP issues.  CLE credit is available.

IP Position in Beijing with Marks & Clerk

Marks & Clerk (www.marks-clerk.com), an International IP Boutique firm, is recruiting for a Patent Attorney in its Beijing office.

The applicant will need to have:
• Minimum a Bachelor’s (preferably a Master’s or Ph.D.) degree in chemistry, biotechnology, or a related discipline
• Fluent in both written and spoken English and preferably Mandarin Chinese
• Background in Patents (at least 1-3 years in prosecution and/or drafting)

The firm advises that it offers:
• A competitive salary package and benefits
• A friendly environment that positively encourages a work/life balance
• Training and career development

Those interested in this position should send a cover letter and a resume in English to: JCleeve@marks-clerk.com.

China Business Law Association – New York Upcoming Meeting with Chinese IP Delegation in NYC

This announcement is from the Chinese Business Law Association in New York City (http://cblalaw.org/):
Join a very high-level PRC delegation for a roundtable discussion on IP legislative developments:
 
The delegation includes:
  • Members of the Ministry of Commerce, including the Americas division, the Law and Treaties Division and the IP Leading Group.
  • Two Judges from the Supreme People’s Court
  • Standing Committee of the National People’s Congress, Deputy Directors of the Legislative Affairs Commission
  • State Administration for Industry and Commerce, Director of Division of Anti-Unfair Competition
  • Legislative Affairs Office of the State Council
  • Procurator, Supreme People’s Procurate of the PRC
  • Chief Officer, Enforcement Division, National Copyright Administration of China
  • State Intellectual Property Office
  • Chief Officer, Legal Affairs, China Food and Drug Administration
  • Deputy Chief Judge, Beijing No. 1 Intermediate People’s Court

 

Note that I will be moderating this discussion.
 
Co-Hosts:
  • Chinese Business Law Association
  • The Fordham IP Institute

 

NOTE: The delegation speaks excellent English, but translators will also be available.
 
EVENT ONE: AN INTIMATE ROUNDTABLE DISCUSSION AT FORDHAM LAW SCHOOL
Friday, September 19, 2014
4:00 to 5:30 PM
At Fordham Law School, Costantino Room
150 W. 62nd Street, between Columbus & 10th Avenues
FREE but RSVP is required. 
 
EVENT TWO: DINNER AND DISCUSSION
Friday, September 19, 2014
6:00 to 6:30 PM – Social networking
6:30 to 8 PM – Dinner and informal discussion
Seats are very limited.  Please RSVP immediately. 
Attendees will be responsible for cost of their own dinners (approximately $100).  Please bring a check.
 
Register by emailing events@cblalaw.org and specify which event(s) you would like to attend.