A Hot Tale of Cool Teas

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Just recently the lunar calendar passed into the period of “Grain Rain”((谷雨, guyu) in China.  This is a time of increasing temperature and high humidity, which is ideal for growing grains.  The temperature also means that humans begin to swelter, and it is time to drink herbal “cooling teas” (涼茶, liangcha).

Cooling teas are now engaged in their own seasonal battle – one might say it is ambush marketing with Chinese solar calendar characteristics.

The preeminent cooling tea is likely 王老吉Wanglaoji, which originated in the Qing dynasty, nearly two hundred years ago. The owner of that mark in China is a state owned Chinese enterprise in Guangdong.  However, the formula, which has been handed down for generations, is arguably in the hands of another brand, Jiaduobao 加多宝 which used to be a licensee of Wanglaoji.  Jiaduobao also apparently has the support of the descendant of the founder.  Not only the name, and formula but also the distinctive red can has arguably been imitated.

Which one, then, is the most authentic?

Passengers entering and exiting Beijing last week through the old airport terminal saw the two companies going head to head, both claiming that they were “authentic.”   The scene was replayed with marketing reps of the streets of Beijing, offering discounts and giveaways…

In the pictures above from the Beijing airport, Jiaduobao is pictured on the left, Wanglaoji on the right, both claiming authenticity.

On Being Recognized an “IP Champion”

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I am going to take a moment from my usual blogging about IP developments and China IP trivia to blog about another favorite topic.

Me.

The US Chamber of Commerce honored me a few days ago with their IP Champion Award.  This is the second year of this award program. 

The video and the program book of the whole event can be found here (my introduction and speech begin at about 2:26): http://www.theglobalipcenter.com/IPchampions/.  The press release is here: http://www.theglobalipcenter.com/2014-intellectual-property-champions-awarded-at-2nd-annual-ip-champions-conference/

As I mentioned in the award ceremony, no one person can make changes by themselves.  For everything I have done, I am profoundly thankful to others in governments and industry and academia who shared the same goals or offered their support and counsel.   The list of people would include many professors and colleagues, in both the US and Chinese governments. and of course also in industry. 

And I also believe that each person who reads this blog, also helps on this path…

Thank you!

What the Supreme People’s Court’s Data For 2013 Shows

During this past week, when world IP day is celebrated (April 26), the Supreme People’s Court once again released its white paper on Intellectual Property Protection by the Courts, available on line at the website of former Chief Judge Jiang Zhipei: http://www.chinaiprlaw.cn/file/2014042732499.html (English) and http://www.chinaiprlaw.cn/file/2014042732497.html (Chinese).

The data shows some interesting developments.

Growth Has Slowed Down And Foreigners Continue to Play a Relatively Small Role.  The increase in the number of first instance civil cases received by all the local people’s courts have fell from the previous year’s growth rate of 45.99% to 1.33%, to about 90,000 cases.   Newly received first instance administrative and criminal cases have also seen a changed trend, from prior year increases of 20.35% and 129.61%, to a decrease of 1.43% and 28%.  Despite these trends, the number of first instance civil cases of intellectual property disputes involving foreign parties has grown, with  a year-on-year increase of 18.75%. This still amounted to only a slight increase in the percentage of foreign related IP cases in the Chinese courts dockets, or 1,697 out of 88,286, a growth to 1.9% of the civil docket from last year’s 1.6%.

Trademark Cases, Licensing Cases and AML Cases Showed Growth. There were 9,195 patent cases, 5.01% lower than 2012; 23,272 trademark cases, 17.45% higher; 51,351 copyright cases, 4.64% lower; 949 cases involving technology agreements, 27.21% higher; 1,302 cases involving unfair competition (of which, 72 were first instance civil cases involving monopoly disputes), 15.94% higher.  No data was released on civil trade secret cases.  The decline in patent disputes and increase in technology transfer cases is somewhat surprising, as one would expect growth in both areas in light of the rapid growth in China’s patent office and in China’s desires to become more innovative.

Provisional measures still are rarely granted.  The courts accepted 11 cases involving application for preliminary injunction relating to intellectual property disputes; 77.78% were granted approvals.  One hundred and seventy three applications for pre-trial preservation of evidence were accepted, and 97.63% were granted approval, and 47 applications for pre-trial preservation of property were accepted, and 96.97% approved.

Of course, one might ask if approval rates for provisional measures are so high, why then are applications for preliminary injunctions only about .01% of the total of disposed cases? The answer seems to be that cases are being rejected in the Case Filing Division of the courts, as I have previously discussed (https://chinaipr.com/2012/03/24/case-filing-in-chinas-courts-and-their-impact-on-ip-cases/).   Still there have been some positive signs: the Civil Procedure Law amendments provide for a more expanded role for the courts, the courts granted provisional measures in trade secret cases, and Beijing’s newly established in Beijing Third Intermediate Court, which has jurisdiction over the Beijing headquarters of many multinationals and a large foreign docket, may also play an active role.

Foreigners Continue to Play an Active Role in Administrative Litigation.  In 2013, the local courts accepted 2,886 intellectual property-related administrative cases of first instance, which was basically no change from last year. Of those accepted, the breakdown by intellectual property branch and percentage change compared to last year is as follows: 697 patent cases, 8.29% lower; 2161 trademark cases, 0.51% higher;  3 copyright cases, no change from last year; 25 cases of other categories, 66.67% higher.   Among the disposed first instance cases, those involving foreign parties or Hong Kong, Macao or Taiwan parties were 45.23% of the concluded intellectual property-related first instance administrative cases (1,312).

Criminal Cases Continue to Decline, Trade Secret Cases Are Relatively Few.  In 2013, new filings for intellectual property-related criminal cases of first instance handled by local courts, were reduced by 28.79% to 9,331 cases.   Trademark and trademark-related cases dominated amongst the disposed cases (4,957).  Amongst the non-trademark cases, 1,499 cases involved copyright infringement, and 50 cases involved infringement of trade secrets, or about 1% of disposed cases.

Transparency In Published Decisions Is On the Increase.  As at end 2013, 61,368 legally effective written judgments for intellectual property disputes issued by the people’s courts of all levels have been published.  By comparison the CIELA.CN database has analyzed about 25,877 cases as of today.

The SPC is Also Actively Participating in Trade Talks.  The SPC has sent representatives to participate in intellectual property work groups meetings between China and the United States, Europe, Russia and Switzerland, as well as in international meetings on negotiations of China-Switzerland and China-Korea free trade agreements.

SAIC Solicits Comments on New Well Known Mark Provisions

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The website of the State Council Legislative Affairs Office made the draft of the proposed changes to the SAIC rules on well known trademarks《驰名商标认定和保护规定》(修订征求意见稿) available for public comment on April 14 through its “ministerial rules” website portal, at: http://www.chinalaw.gov.cn/article/cazjgg/201404/20140400395679.shtml.  Comments are due May 13, 2014.

These proposed rules clarify prior practice, and also require greater reporting and coordination.  For example, it requires reporting of a well known trademark infringement cases and greater supervision of these cases throughout the SAIC system, and provides for withdrawal of well known mark recognition if the recognition was granted based on false pretenses, in addition to supporting existing CTMO and TRAB procedures in this regard, and providing for rectification by supervising AIC’s when well known mark recognition was inappropriately granted at lower levels.  It also notes that not all factors identified in the Trademark Law (Art. 14.1) and implementing regulations regarding recognition of well known marks need to be proved in order for well known mark status to be determined.

Attached are non-official translations of the draft rule and the official explanation, as provided by USPTO.  Note also that these are ministerial rules, not State Council regulations, lest an undue hierarchical importance be attached to them: SAIC solicit opinions on revision of Provisions on Recognition and Protection of Well-known Trademarks.

 

 

 

 

 

 

 

 

SAIC Issues TM Law Transition Rules

Not very far behind the Supreme People’s Court’s April 10 Judicial Interpretation, the State Administration for Industry and Commerce (SAIC) has published its transitional rules for implementation of the new trademark law, which comes into effect May 1, 2014. These transitional rules were published online on April 18. These rules are generally consistent with the April 10 JI.

Apart from important rules regarding applicable substantive and procedural rules for trademarks filed before May 1, the rules also stipulate the applicable law regarding administrative infringement actions.  Generally speaking, if the infringing behavior occurred before May 1 but continued to occur after May 1, the new law will be applied.  In addition, new product packaging and advertising for “well-known trademarks” should be in compliance with the new law effective May 1.

 

 

Appellate Decisions in Huawei vs. Interdigital Made Available by Guangdong High Court (revised)

The Guangdong High Court recently made the important 2013 second instance decisions in Huawei vs. Interdigital (2013) Yue Gaofa Minsan Zhougzi No.305, 306), available in a redacted form (Chinese language only).  Here are the links:

http://www.gdcourts.gov.cn/gdcourt/front/front!content.action?lmdm=LM43&gjid=20140417024309113155 (No. 305)

http://www.gdcourts.gov.cn/gdcourt/front/front!content.action?lmdm=LM43&gjid=20140417030902158689 (No. 306).

These cases involved abuse of dominance, pricing and licensing obligations for standards essential patents.

Last year, the Federal Circuit Bar Association along with USPTO and Chief Judge Rader of the Federal Circuit, amongst others, held extensive discussions with Chinese IP judges on the importance of making non-confidential versions of its opinions available, including introducing judicial and administrative (USPTO, USITC) procedures that facilitate the publication of non-confidential versions of final decisions.  In those discussions, we were mostly told that there was no-mechanism for publishing non-confidential versions of court decisions.  I had also previously blogged about this, requesting that a non-confidential version of the case is released in order to better inform the public.

This is an important step by the Guangdong High Court that could ultimately facilitate greater transparency in a wide range of IP (and hopefully non-IP) cases, including trade secret cases, patent cases, licensing and contractual disputes, where confidential information may have been disclosed by the parties as a critical part of the case and publication would otherwise have not been available.

The Shenzhen Intermediate Court, which was the court of first instance, has not yet made a redacted version of its decision publicly available.   However, as I noted in my earlier blog, several of its judicial officials have written on the case (See Ye Ruosi, Zhu Jianjun and Chen Wenquan, Determining Whether Standards-SEP Holder Abuse Its Dominant Position, Electronics Intellectual Property, Mar. 2013).

 (posted by Amanda Ma, further edited by Mark Cohen on April 27, 2014)

SPC Published Its Judicial Interpretation in Advance of New TM Law Implementation

The Supreme People’s Court has issues a new Judicial Interpretation to guide the courts in implementing China’s new Trademark Law, which goes into effect May 1, 2014.   The JI was issued on April 10, 2014.  The SPC Judicial Interpretation Concerning Questions on Jurisdiction and Use of Appropriate Law After the Decision of Implementation of the Revision of the Trademark Law (最高人民法院关于商标法修改决定施行后商标案件管辖和法律适用问题的解释), essentially mandates use of the new law for cases arising after May 1, 2014, as well as reaffirms the jurisdiction of the various courts in administrative appeals and recognition of well known marks.