LEHMAN, LEE & XU
China IP Insights: Bringing You The Latest Developments in Chinese Intellectual Property Law
March 2010: Online Edition
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LEHMAN, LEE & XU
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China IP Insights: Bringing You The Latest Developments in Chinese Intellectual Property Law
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March 2010: Online Edition
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| SIPO Opens Green Channel for Shanghai Expo Technology |
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China's State Intellectual Property Office (SIPO)
has opened a green channel to fast track domestic examination of patent
applications related to research and development (R & D) projects at the
World Expo 2010 in Shanghai. The Expo opens in little over a month, but
SIPO has already implemented a priority system specifying the party, procedure
and requirements for this program.
Expo exhibitors and participants will also have
access to a dedicated, on-site intellectual property rights (IPR) service
center. The IPR center is scheduled to open in mid-April, and will assist
parties in resolving IPR disputes that arise in connection with the Expo.
In the case of complicated disputes, the IPR center can provide access
to government experts and professional lawyers.
With Beijing and Shanghai offices mere stones-throws
away from SIPO and Expo sites, respectively, Lehman, Lee & Xu welcomes
the opportunity to provide first-class intellectual property support to
participants at this exciting event.
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| Valve Company Wins Trademark Dispute Against Former OEM |
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A leading United States Valve Company recently
won a six-year dispute with its former original equipment manufacturer
(OEM) before the Trademark Review and Adjudication Board (TRAB). The Company,
a client of Lehman, Lee & Xu, previously sourced product from the Chinese
OEM, but contested payment after receiving an international shipment of
sub-standard goods. During subsequent negotiations regarding the shipment,
the OEM revealed that its affiliated entity had secretly registered the
Valve Company's trademark in China, and threatened to enjoin the Company's
activities in China.
The Company filed a dispute with the TRAB, based
on evidence of the Company's prior registration of an identical trademark
in the United States, and pre-existing relationship with the OEM (i.e.,
the registrant's bad faith). Finally, after more than five years with
no response, the TRAB returned its decision cancelling the OEM affiliate's
trademark registration. The Company now faces the challenge of itself
registering its trademark, which could take another several years of pendency
in the China Trademark Office (CTMO).
Although Lehman, Lee & Xu's client was ultimately
successful in cancelling the squatter's trademark, this case highlights
the importance of strategic registrations prior to commencing business
in China. Historically, the CTMO and TRAB have been unpredictable in evaluating
circumstantial evidence of bad faith and cross-border reputation, and
have heavily favored first-to-file applicants and registrants.
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| Chinese Auto Maker Wins "MG" Trademark Case Overseas |
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The Nanjing Automobile Corporation
(NAC) recently prevailed in its trademark infringement lawsuit against
British automotive company MG Sports and Racing Europe Limited (MGSRE)
before the British Supreme Court. NAC acquired rights to the "MG"
trademarks when it purchased key assets from the failing MG Rover Group
(the last domestically owned mass-production car manufacturer in the British
motor industry) in 2006; NAC has since revived the famous "MG"
brand in consumer automobiles.
MGSRE similarly acquired assets from MG Rover,
and claimed that such assets included rights to the "MG XPower"
brand. However, the British judge ruled that MSGRE's use of this brand
infringed NAC's trademarks, rejecting MSGRE's argument that NAC had not
successfully acquired the relevant trademarks. Accordingly, the Court
ordered MGSRE to cease all use of the trademarks.
As more Chinese companies invest abroad and acquire
valuable foreign brands, their awareness of intellectual property issues
is likewise increasing, both domestically and abroad. Intellectual property
enforcement by Chinese companies in foreign jurisdictions will continue
to strengthen the Chinese government's recognition and enforcement of
foreign-owned intellectual property rights domestically.
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| Cartier Files Lawsuit Based On Chinese and English Trademarks |
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French jeweller and watch manufacturer
Cartier SA has filed a lawsuit in Beijing No. 2 Intermediate People's
Court, accusing two Chinese defendants of infringing the company's registered
Chinese trademarks: "؟¨µطرا" "CARTIER" and "؟¨µدرا"
Cartier alleges that the defendants' use of these three trademarks on
ceramics and websites causes public confusion and, moreover, constitutes
trademark infringement and unfair competition. Cartier is seeking an injunction
and RMB800,000 (~US$120,000) in damages.
Cartier's case highlights the importance of formulating
a comprehensive trademark filing strategy in China, covering not only
key English-language trademarks, but key Chinese-language trademarks as
well. Composing and protecting a suitable Chinese-language trademark (e.g.,
a similar-sounding name, comprising positive and attractive Chinese characters,
while lacking unintended double meanings) can be a unique challenge. The
multilingual and multicultural trademark attorneys at Lehman, Lee &
Xu specialize in developing effective trademark portfolios for foreign
clients seeking to enter the Chinese market.
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| World of Warcraft Operator Withdraws Lawsuits Against Blizzard |
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The9 Limited (NASDAQ: NCTY), a Shanghai-based
online game operator, has withdrawn its software copyright lawsuit against
video game giant Blizzard Entertainment. The9 had held the exclusive license
to operate and distribute Blizzard's World of Warcraft (the largest online
game in the world) in China. However, last year Blizzard transferred the
license to another company in a move that cut The9's revenues by 92% and
sent the latter company's stock crashing. Since then, Blizzard and The9
have been locked in defamation disputes.
The9 recently added three claims of copyright
infringement based on localization property rights, such as "translation
and chinesization," but these claims have been cancelled for the
time being, possibly because of an objection to jurisdiction.
Where foreign companies enter into agreements
(e.g., license/distribution agreements) with local Chinese partners, it
is extremely important to address the ownership of intellectual property
rights. Lehman, Lee & Xu has a wealth of experience in intellectual
property and technology licensing, and has successfully assisted clients
in early-stage prevention of disputes through skilled and thoughful contract
drafting.
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| Latest Foreign Patent Grant Statistics from SIPO | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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The following table breaks down
foreign patent grants by applicants' country of origin, based on the lastest
China State Intellectual Property Office (SIPO) statistics. Despite increasing
numbers of foreign applications over the last decade, foreign patent grants
remain dwarfed by domestic patent grants, the latter numbering roughly
ten times the former for January 2010.
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| Newsbites | |
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Beijing Court
latest to reject domestic author's Avatar lawsuit
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WIPO report lauds
Nantong intellectual property enforcement
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Beijing's famed Silk Street
Market renovated to remove fakes
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New SIPO website contains data
on 33m international patents
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