Two New Local Policies for Online Adjudication and Enforcement

Here are two new local policies on online adjudication and enforcement

From fellow Chinese IP blogger Song Haining, comes word of a draft Beijing Court Draft Guidance (for comment) on Adjudication of Internet IP Cases (北京市高级人民法院有关网络知识产权案件的审理指南 [征求意见稿]).Haining’s blog draws especial attention to Article 35 of this draft regarding unfair competitive acts in the on-line environment by misleading consumers away from a legitimate site by misappropriating or misusing information of a legitimate website under Article 2 of the Anti-unfair Competition Law.   The draft guidelines are divided into copyright, trademark and unfair competition sections.  My request: individuals who know how public comments may be filed on this draft, please post on the comments section below on this blog!

Also of interest is that Zhejiang Province has established a new online judicial tribunal to adjudicate disputes, particularly e-commerce related disputes.  The tribunal was first announced during the World Consumers Day commemorations in Zhejiang Province earlier in 2015. Zhejiang is of course home to Alibana and other etailers.

The Scotch Whisky Victory for Trademarks

On September 17, the Scotch Whisky Association announced a significant anti-counterfeiting victory in the Anqing Intermediate Court in Anhui Province.  The case is Scotch Whisky  Association vs. Anhui Guangyu Packaging Company Ltd., Wang Xuming and others (Trademark Infringement, First Instance) ,” 苏格兰威士忌协会与安徽广宇包装科技有限公司、王旭明等侵害商标权纠纷一审民事判决书.”(August 31, 2015) ((2015)宜民三初字第00024号).  The case is available on line at the Chinese court website.

This case appears to have involved the unauthorized printing of Scotch Whiskey packaging in the form of bottle caps, some of which appears to have been made available for sale on line through Alibaba.com.  The court awarded damages of 100,00 RMB, and injunctive relief.  The court found that the SWA had difficulties proving damages and therefor awarded what appears to be statutory damages, plus costs of 11,820 RMB.

Damages may seem quite low, but according to the CIELA database, the average damages for the eight trademark infringement cases in the food and beverage area that they collected in Anhui Province (where SWA likely had to bring the case) was 6,000 RMB.

The case has been picked up by the media.  One article in the spirits sector noted that it was the second victory for Scotch Whisky, in addition to some additional recognition of its GI in Africa. Another article linked the victory to the Scotch Whiskey’s “historical granting” of a “Geographical Indication in 2010”which is “fully backed by China’s government through the GI”.

Curiously, both of these articles refer, directly or indirectly, to the sui generis GI system which is administrated by AQSIQ and the Ministry of Agriculture, and failed to mention the role of trademark protection.  This might lead one to suspect that the protection arose under China’s sui generis GI system,which the SWA has been actively promoting. However, China’s trademark system is much more fully developed in enforcement by comparison to the sui generis GI system, which lacks the full panoply of TRIPS-mandated civil, criminal and border remedies that attach to trademarks as intellectual property that may be granted to, and owned and protected by individuals and enterprises.

As I read the civil decision, the basis for the civil enforcement action was the 2008 collective mark obtained by the Scotch Whisky Association in Trademark Class 33  (no. 5915031  for “ScotchWhisky”).  Information on sui generis GI protection was, however, accepted as evidence of proof of the fame of the mark, although it had been introduced for its distinctiveness (evidentiary group 2, in the court’s decision).

The court decision did not analyze in great detail issues such as the application of the newly revised trademark law, the role of statutory damages and proof of injury,  and the role of the bottle caps in the export trade.  A principal of the company,l Wang Xuming was, however, held jointly liable with the packaging company for paying damages.   The caps were, according to one media report, used to produce counterfeit whiskey for sale in Burma.

Information presented on police actions involving these defendants in prior years were accepted into evidence.  According to the English press reports, additional police investigations are also possible.

Altogether, this is a well-deserved victory for the SWA.  In addition to vindicating the role of the trademark enforcement system, the case showed the impact of such hot issues as the efforts to better coordinate civil, criminal and administrative enforcement actions, address on-line sales,  consider the impact of the new trademark law on pending cases, address transnational sales, successfully bring a case in the home court of a counterfeiter, and address those who contribute to the chain of counterfeit production.

Congratulations to the SWA and its team!

Note: Please send any corrections to the author (chinaipr@yahoo.com).  This article consists of the author’s personal opinion only.

Cardozo Law China Program September 24 In NYC

Cardozo Journal of International and Comparative Lawin association with the Fashion, Arts, Media & Entertainment (FAME) Center sponsored a program on The US & China: Perspectives on Brand Protection and Intellectual Property at 5 PM in New York City.  Here was the agenda:

5:30 p.m. Opening remarks by Dean Leslie

5:45 – 7 p.m. Panel 1: U.S. Issues for Chinese Businesses

Moderators

Geoffrey Sant  |  Special Counsel at Dorsey & Whitney LLP

Barbara Kolsun  |  Professor and Director of FAME at Cardozo School of Law

Panelists

Cindy Yang  |  Partner, Schiff Hardin LLP

Helen Su  |  Counsel, Alston & Bird LLP

Mark Cohen  |  Senior Counsel, U.S. Patent and Trademark Office and author of the China IP Blog

7:10 – 8:35 p.m. Panel 2: China Issues for U.S. Businesses

Moderators

Geoffrey Sant  |  Special Counsel at Dorsey & Whitney LLP

Barbara Kolsun  |  Professor and Director of FAME at Cardozo School of Law

Panelists  

Dan Harris  |  Founding Partner, Harris Moure and author of the China Law Blog

Cedric Lam  |  Hong Kong Partner, Dorsey & Whitney LLP

Ling Zhao  |  CCPIT Patent and Trademark Law Office and Cardozo LLM Student

Lara Miller  |  Associate Counsel, International AntiCounterfeiting Coalition

Stephen Lamar  |  Executive Vice President, American Apparel & Footwear Association

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Update from October 28 — Here’s a report on Cardozo Law School’s Semi-Annual Fashion Law Symposium:

Here is a link to a recording of the symposium.

The first panel addressed the issues that Chinese businesses face while entering the U.S. market. The speakers discussed the challenges that businesses based in China encounter when they file intellectual property claims in the United States, and the use of Section 337 remedies to address unfair competition, including design and patent infringements from China-origin goods.  Mark Cohen discussed the increase in “dueling cases” in recent years, including suits involving Vringo, InterDigital, SI Group, as well some lesser known cases such as the recent SDNY judgment in the Gucci case, and the Global Material Techs., Inc. v. Dazheng Metal Fibre Co., which involved US enforcement of a foreign money judgment contract claim, while adjudicating a trade secret claim.

The discussion during the second panel focused on the obstacles that U.S. brands face in China. The speakers analyzed the problems of on-line counterfeiting from such e-commerce providers as Alibaba, as well as the role of organizations such as the IACC (International AntiCounterfeiting Coalition) and the US government in its “Section 301” and “Notorious Market” reports.  Issues involving drafting of contracts and licensing agreements that include counterfeit and infringement clauses were also discussed.

Authors of summary: Anna Radke and Avery Nickerson, with additional edits by Mark Cohen.