MONDAY, 18 OCTOBER 2021
New episode of Talking MARQUES
The MARQUES podcast is back with an episode looking at the work of the MARQUES Teams and a new tool designed to promote collaboration and project management.
In the podcast, Antony Douglass of Specsavers, MARQUES 1st Vice-Chair, describes the new project management tool and the benefits it offers to members of MARQUES Teams. The tool has been developed by MARQUES this year and was launched at the Team Leaders Meeting in September.
It enables Team members to share details of ongoing projects, and view those of other Teams, to help them identify opportunities for collaboration and to share information and resources where relevant.
Two Team chairs – Imogen Fowler of Hogan Lovells, Spain who chairs the Brands and Marketing Team, and Alexandra di Maggio of Novagraaf, France who chairs the Unfair Competition Team – also take part in the podcast.
They describe some of the recent and current projects being undertaken by Teams, and the opportunities for collaboration. They also set out how MARQUES Teams work, and how members can become more involved.
The three speakers all highlight the important role played by Team members in bringing their expertise to MARQUES projects, and especially by corporate members in identifying new challenges and trends where work is needed. The work of the Corporate Focus Group is particularly important in this respect.
This is the seventh episode to be broadcast, and more are planned for the next few months. If you would like to find out more, or have any suggestions for topics for future podcast episodes, please contact the MARQUES editor.
You can find out more about the 18 MARQUES Teams and two Task Forces on the website here.
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FRIDAY, 15 OCTOBER 2021
Beijing IP Court issues fines over fake evidence
On 10 September, the Beijing IP Court released six typical cases where it punished the relevant litigant participants and cancelled six trade marks for fake evidence in lawsuits against non-use cancellation appeal decisions. Haiyu Li and Tingxi Huo of the MARQUES China Team summarise and review the cases.
Case 1: Fabricating test reports and advertisement registration certificates, etc (Jingzhixingchu 2015-1165)
In the non-use cancellation case relating to the trade mark JIAJIA and its Chinese characters and Device, No 1486278, the third parties with surnames Li and Bai submitted test reports and business licences, but the trade marks in the copy and the original were inconsistent.
The third parties also submitted advertisement registration certificates in notarized form to prove that the copy was consistent with the original. However, the dates on the certificate were inconsistent and 29 February 2013 was not a date at all. The goods descriptions on the copy and original invoices were inconsistent, too.
The Court cancelled the trade mark and fined Li and Bai each CNY10,000 (US$1,550). This is the first case where the Beijing IP Court punished the conduct of fake evidence.
Case 2: Fabricating product photos, etc. in six non-use cancellation appeals (Jing73xingchu 2020-14664)
In this non-use cancellation case relating to the trade mark Ancient Tea Horse Road in Chinese and Device, No 3084001, the third party with surname Mao submitted fake product photos. The trade mark shown was Ancient Tea Horse Road in Chinese and Device, but the trade mark found for the commodity in a search on the Chinese Commodity Information Services Platform was a different trade mark.
In addition, the submitted invoices were found to be absent or different from the official record in terms of corporate names, tax payer IDs, products, and trade marks. The Court cancelled the trade mark and fined Mao for the fake evidence CNY30,000 (US$4,650) in all six cases.
Case 3: Fabricating invoices in the non-use cancellation appeal (Jing73xingchu 2020-13177)
In the non-use cancellation case relating to the trade mark Green Forest Hut in Chinese, No 8403409, the third party Jilin Green Forest Pro-Environment Technology Co, Ltd submitted invoices with an attached list of goods which were found to be inconsistent with the records in the national taxation system. The Court cancelled the trade mark and fined the company CNY10,000 (US$1,550).
Case 4: Fabricating invoices in the non-use cancellation appeal (Jing73xingchu 2020-13083)
In a non-use cancellation case relating to the trade mark ITSTYLE, No 9841494, the third party Anhui Xinghao Industrial Trade Co, Ltd submitted invoices indicating beauty masks and lotions, but the tax authorities’ platform indicated different goods, namely indoor slippers and electric horns, and the trade mark in dispute was not shown.
The Court cancelled the trade mark and fined the company CNY10,000 (US$1,550).
Case 5: Fabricating invoices in the non-use cancellation appeal (Jing73xingchu 2021-8597)
In the non-use cancellation case relating to the trade mark Mei Qi Lin in Chinese, No 10048229, Guangdong Qianfen Cosmetics Industry Co, Ltd. submitted five invoices, all indicating the disputed trade mark, whereas the tax authorities’ platform did not record the trade mark. The company explicitly confirmed the inconsistency and requested withdrawal of the evidence.
The Court ruled that though the company requested a withdrawal during the lawsuit, the fact that it had already submitted fake evidence could not be changed. Moreover, the request was not made until the administrative organ explicitly pointed out the fake evidence. The Court cancelled the trade mark and fined the company CNY10,000 (US$1,550).
Case 6: Fabricating invoices in the non-use cancellation appeal (Jing73xingchu 2021-3275)
In this non-use cancellation case relating to the trade mark BLACKDIAMOND, No 4579231, the third party with the surname Luo submitted two contradictory invoices in copy. Specifically, in the invoice copies with the same issuing date and number, the goods descriptions were different. In addition, one of the two copies was found out inconsistent with the official record in terms of goods. The Court cancelled the trade mark and fined Luo CNY10,000 (US$1,550).
All the six cases are related to trade mark non-use cancellation. In the non-use cancellation procedure, there is no cross-examination procedure, and some defects in the filed evidence of use cannot be effectively found by the examiners.
We always suggest the cancellation applicant actively participate in the cancellation appeals, in which the evidence filed by the owner to keep its registered trade mark valid would be procedurally served in copy to the opposite party requesting the cancellation. The cancellation applicant, with the help of professional local trade mark attorneys, can check the authenticity and validity of evidence piece by piece and help the appeal examiners to find the potential defects in the filed evidence.
In administrative proceedings, a court may, according to the severity of the scenarios, punish the party that fabricates, conceals, destroys, or produces fake evidence to hinder the court’s examination by giving admonishment, ordering the signing of a statement of repentance, imposing a fine of up to CNY10,000 or a detention of up to 15 days.
All the above six cases were administrative ones and the fine was limited to this small amount only (the maximum permitted). If a case grows into a criminal offence, the court may sentence the criminal to imprisonment.
Ms Haiyu Li and Mr Tingxi Huo are members of Chofn IP and the latter is a member of the MARQUES China Team
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THURSDAY, 14 OCTOBER 2021
ICC forum on climate action
Readers might be interested to know that the International Chamber of Commerce is hosting the Make Climate Action Everyone’s Business Forum from 1 to 13 November 2021 on the margins of COP26.
According to the ICC, the virtual Forum “will catalyse peer-to-peer discussions and frank exchanges between business leaders from small, medium-sized and multinational enterprises representing different sectors and jurisdictions; policymakers leading the UN negotiation process as well as local government representatives and UN agency heads”.
It aims to bring together more than 10,000 participants from over 100 countries and will be organised around five themes, focusing on critical issues to consider when developing the regulatory frameworks and incentives needed to enable rapid decarbonisation of the global economy.
To request a ticket, fill out the registration form on the ICC website. Thanks to the ICC for sharing this information with MARQUES members.
COP26 (the 26th UN Climate Change Conference of the Parties) is taking place in Glasgow, Scotland from 31 October to 12 November. It will bring parties together to accelerate action towards the goals of the Paris Agreement and the UN Framework Convention on Climate Change.
Note that the Icelandic Intellectual Property Office is also holding a conference on “IP and Sustainability: Innovation for a brighter future” in Reykjavik on 4 November. Attendance is free and open to everyone, and you can register online.
Sustainability and branding is an issue that MARQUES is continuing to focus on, with various projects underway. Look out for more details on the MARQUES media channels soon.
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MONDAY, 11 OCTOBER 2021
New unfair competition publications
Readers may be interested in some recent publications by the MARQUES Unfair Competition Team.
A new edition of the Look-Alike Chart has been published. This provides information on law and practice on look-alike products in a total of 47 jurisdictions, including most European countries as well as other important markets.
It has been updated to include developments since the last edition, which was published in 2020, and can be downloaded from the “Publications” page on the Team’s website.
The Chart is structured around 17 key questions/topics and has been compiled with the help of experts in each jurisdiction covered.
The Team has also added two new articles as part of its project on company names, trade names and other identifiers. These cover The Netherlands and Hungary and are written by Maarten Haak of Hoogenraad & Haak and Enikő Karsay of SBGK respectively.
The project now includes articles on 10 jurisdictions written by members of the Team, with more due to be added.
All of the articles on company names, trade names and other identifiers are collected in a special section of the Team’s page on the MARQUES website.
Note that access to Team publications is restricted to MARQUES members who are logged into the website. If you are not a MARQUES member, find out more about joining here.
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TUESDAY, 5 OCTOBER 2021
China’s SPC deters bad faith infringement claims
By ZHU Zhigang of the MARQUES China Team
On 3 June 2021, the Supreme People's Court of China issued its “Reply on the Issue of the Defendant's Request for Compensation for Reasonable Expenses on the Grounds of the Plaintiff's Abuse of Rights”.
The Supreme People’s Court’s Response provides that: “In an intellectual property infringement case, if the defendant submits evidence proving that the plaintiff’s lawsuit constitutes an abuse of rights and damages its legitimate rights and interests, and claims for compensation not just for the court costs, but also the fees of lawyer, accommodations and travelling expenses, etc., the people’s court shall support this claim in accordance with the law. The defendant may also sue separately and request the plaintiff to compensate the above-mentioned reasonable expenses.”
Bad faith and trade mark squatting cases
Bad faith infringement claims are closely associated with trade mark squatting. In recent years, trade mark squatters have brought more and more legal actions to force the real trade mark owner to either pay damages or purchase back the trade mark acquired in bad faith at very high prices.
Chinese courts have gradually developed a consistent practice to dismiss such cases on the basis of abuse of right by the trade mark squatter.
In the Ellassay case (2014), the Supreme Court ascertained that the principle of good faith, which applies to the act of filing and using trade marks, also applies to civil litigation. Therefore, a trade mark right acquired in bad faith cannot serve as a legal ground for an infringement claim.
In the Uniqlo case (2018), the Supreme Court dismissed the lawsuit of a plaintiff, who had registered more than 2,600 trade marks, and who, after having failed to sell one of the trade marks to the defendant, had started an infringement lawsuit nationwide. The court reiterated that filing so many trade marks without an intention to use them harmed the public interest. It affirmed that the lawsuit was an abuse of right.
The right owners fought back after invalidating the squatter’s trade mark and claimed the compensation of reasonable costs and even damages.
In the CPU case (2018), the Supreme People’s Court ascertained that Gongli Company was fully aware that CPU is a generic name in the industry but it still applied for a trade mark registration, and filed a trade mark infringement lawsuit against Keshun Company and malicious complaints with the local Administration for Market Regulation. Gongli Company was ordered to compensate Keshun Company’s reasonable expenses of RMB 160,500 ($25,000), including the attorney fee, notary fee, etc.
In the Bridgestone case (2018), the Suzhou Intermediate Court ruled that the cost of 291,343 RMB ($45,500), involved in safeguarding the trade mark rights, including trade mark opposition and following administrative litigation and infringement, should be paid by the losing defendant.
In the Bayer case (2018), the Hangzhou Intermediate Court went further and ordered the bad faith squatter to pay damages. The court considered that, by knowingly registering as a trade mark the logo for which Bayer enjoyed the copyright, and then filing massive online complaints against Bayer’s distributors, the bad faith squatter violated the principle of good faith. The court ordered the defendant to pay Bayer RMB 700,000 ($106,000) in damages.
Likewise, in the Brita case (2021), Brita, after successfully concluding all the administrative cases caused by the defendant, sued on the ground of unfair competition. Minhang District Court held that the defendant’s malicious pre-emptive registration of trade marks and abuse of trade mark administrative procedures (systematically challenging of Brita’s registrations or uses) violated the principle of good faith and business ethics and disrupted the order of market competition. The court affirmed that the defendant’s behaviour constituted acts of unfair competition and ordered the payment of RMB 2.8 million ($437,500) as damages.
New SPC Response
The new SPC Response tends to suggest that, when the real right owner is facing a bad faith infringement claim, it is possible, even before the trade mark acquired in bad faith is invalidated in the relevant administrative procedure – like in the Ellassay and Uniqlo cases – to argue the abuse of rights and ask the court to order the plaintiff to compensate for reasonable costs in association with this infringement lawsuit.
This Response should be sufficient to deter trade mark squatters from filing bad faith infringement claims.
It is hoped that the Supreme Court could go one step further and extend this practice to administrative procedures (oppositions and invalidations), and provide the victims of trade mark squatting with a means to recover their costs at the end of the administrative proceedings.
This should be possible, according to Article 61 of the Administrative Procedure Law (amended on 11 January 2014) which provides: "In an administrative litigation involving administrative licensing, registration, expropriation, and administrative agency’s rulings on civil disputes, where the parties apply to resolve the relevant civil disputes together, the people’s court may hear them together.”
If the applicant in the opposition or invalidation procedure, which is followed by an administrative litigation involving the registration of a trade mark, requests the recovery of its costs involved in the procedure, such civil claim should be treated and answered together with the decision on invalidation or refusal of the trade mark.
Recovery of costs should be granted whenever the litigious trade mark is found to have been filed in bad faith.
Contributed by Mr ZHU Zhigang, a partner and attorney-at-law with Wanhuida Law Firm, and a member of the MARQUES China Team
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MONDAY, 4 OCTOBER 2021
UAE joins Madrid System
The government of the United Arab Emirates deposited its instrument of accession to the Madrid Protocol with WIPO Deputy Director Generals Binying Wang and Hasan Kleib on 28 September.
The Protocol will enter into force for the UAE on 28 December 2021.
The UAE is the 109th member of the Madrid System, which covers 125 countries.
After Bahrain and Oman, it is the third Gulf Cooperation Country to join Madrid.
Read more, and watch a video about the accession, on WIPO’s website here.
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WEDNESDAY, 29 SEPTEMBER 2021
Closing the gender gap in IP virtual event
In the context of a decision taken by the Committee on Development and Intellectual Property, WIPO is organizing a series of sharing sessions on Women and Intellectual Property.
The sharing sessions aim to:
The third session, “Closing the Gender Gap in IP – Looking at Good Practices”, will take place virtually on 12 October 20201 from 12.30 to 14.30 CET. Panellists will share good practices in IP service delivery, design and analysis, in order to enhance women’s participation and contribution to the IP ecosystem.
Interpretation will be in English, French and Spanish. Find out more:
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