In the latest update from the MARQUES China Team, Ling Zhao examines the newly adopted Civil Law of the People’s republic of China.

On 28 May, the Civil Law of the People's Republic of China was officially adopted, and it will come into force on January 1, 2021. This is a milestone in the history of civil legislation in China.

There are seven parts and 1260 articles in the Civil Law, which are general principles, property rights, contracts, personality rights, marriage and family, inheritance, tort liability and supplementary provisions.

As a kind of private right, intellectual property belongs to civil law. Although intellectual property does not appear in the Civil Law as an independent chapter, there are many provisions related to intellectual property and technology contract in the Civil Law.

Punitive damages for IP infringement

In order to strengthen the protection of IP rights and to increase the cost of infringement, the Civil Law stipulates that the owner of the infringed right can request punitive damages if the infringement is conducted intentionally and the circumstances are serious.

Article 63 of the China Trademark Law, which was revised and came into force in 2013, clearly stipulates punitive damages in trade mark infringement for the first time. The draft amendment to the China Patent Law published by the Standing Committee of the National People's Congress on 4 January 2019 also provides for punitive damages. Article 17 of the Anti-Unfair Competition Law of 2019 stipulates punitive damages. And punitive damages are stipulated in Article 53 of the draft amendment to the Copyright Law published by the Standing Committee of the National People's Congress on 26 April 2020.

The Supreme People's Court plans to draft the "Interpretation on Several Issues on the Application of Law Concerning Punitive Damages for Intellectual Property Infringement" in the first half of 2021.

The introduction of punitive damages into IP infringement disputes will help improve the protection of intellectual property rights, promote technology progress and innovation, and build a healthier market for investment. The implementation of the Civil Law is not just a declaration to strengthen the protection of civil rights. It opens a new era.

Ling Zhao is a member of CCPIT Patent and Trademark Law Office and the MARQUES China Team

Webinars hosted by the EUIPO Academy are taking place on Tuesdays throughout June. The topics are:

• Disclosure of design on the internet – Convergence Programme 10 (2 June)
• Boundaries of IP exclusive rights in entertainment content (9 June)
• Artificial intelligence (16 June)
• Design decisions of the EUIPO Boards of Appeal (23 June)
• Decisions of the trimester of the GC and CJEU (30 June)

The webinars all start at 10.00 am Alicante time and last for up to one hour. Full details, including information on how to register, are available on the EUIPO Academy Learning Portal.

On the same page, you can find links to recorded webinars, including those from May 2020.

WIPO has announced the launch of a new business online service, called WIPO PROOF. It will provide tamper-proof evidence of the existence at a point in time of any digital file, including data sets, in any format.

Introducing the service, WIPO Director General Francis Gurry said: "In a highly dynamic global economy where value is increasingly based on human activity enabled by digital technologies and big data, it is critical to be able to prove that you were in possession of your intellectual asset's digital files. WIPO PROOF helps innovators and creators better protect their digital outputs and represents a significant step in expanding WIPO's suite of services that meet the demands of the digital economy."

In its press release, WIPO said that data files containing valuable content can easily fall prey to misuse or misappropriation. This content can include trade secrets, scripts, musical scores, other creative works, research results, large data sets, artificial intelligence algorithms or any business record.

All of these things should be treated as intellectual assets to be independently and securely documented at every stage of development, regardless of whether they eventually become formal IP rights. WIPO PROOF enables you to create evidence of an asset's digital files at each specific point in time.

WIPO describes it a "a sort of digital notary service" to complement patent, trade mark, design, GI and other services.

WIPO PROOF provides services including:

• Token (unique digital fingerprint): from Sfr20
• Premium PDF certificate: from Sfr20
• Bundles of WIPO PROOF tokens: from Sfr190
• Online verification: free

Find out more in the WIPO press release, which includes a speech by Francis Gurry, or visit the dedicated WIPO PROOF page. A flowchart showing how the service works can be seen here.

Look out for analysis of WIPO PROOF from the MARQUES Teams soon.

EUIPO has announced the details of the Trade Mark and Design Education Programme for 2020-21. Registration is open from 18 May until 30 June 2020 or until the 60 places have been filled.

You can find out all the details of the Programme, including the Rules of Governance, Implementing Rules, Programme of Studies and Calendar, and apply on the dedicated page on the EUIPO website. It states:

The EUIPO Trade Mark and Design Education Programme (ETMD EP) is a training programme for intellectual property practitioners. It is a practical programme, delivered by EUIPO staff, leading IP professionals and academics. The ETMD EP focuses on the interaction between the EUIPO and IP practitioners in trade mark and design registration and prosecution.

The programme will be held in English only and will run from September 2020 to June 2021, with approximately 150 hours of tuition, combining e-learning, webinars and two 3-day workshop sessions at the EUIPO in Alicante, Spain. It concludes with final examination consisting of both a written and an oral exam, the latter will take place at the EUIPO in Alicante, successful candidates will be awarded an EUIPO certificate.

About two-thirds of the programme will be via e-learning or live-streaming but three visits to Alicante will be required, including for the final exam. The course requires about five hours’ work a week, depending on experience and circumstances.

The programme is delivered by EUIPO experts and IP practitioners. Testimonials from participants in the first edition are available on the website.

Note that the application form must be accompanied by a copy of your ID or passport and your EUIPO User Account username. You will also be required to provide proof of payment of the tuition fees of €1,500.

MARQUES and Corsearch hosted a webinar on “Brand Protection in a Time of Turmoil: Future Strategies for the Defence of Your Brand” on 14 May.

The webinar was convened by Daniel Bennett of Corsearch and featured four in-house IP counsel: Petra Herkul, DSM, Dieuwerke van der Schalke, Jacobs Douwe Egberts, Alper Demirci, Toyota Motor Europe and Susana Fernandez Martin, Inditex.

Impact on brands

Introducing the webinar, Daniel presented some research on the impact of COVID-19 on consumer behaviour, manufacturing, shipping of products etc and asked the question: what will be the impact on brands going forward? He predicted that online interaction and e-commerce will become even more important as a result of the pandemic.

Daniel also said that COVID-19 has already had an impact on brand protection. A rise has been reported in crimes such as financial fraud and cybercrime as well as counterfeiting across industries, with fake drugs and devices attracting media attention. A recent survey by WTR magazine found that 50% of respondents reported an increase in online counterfeiting.

Moreover, the counterfeiting challenge is likely to increase with the reopening of China and expected rebound in manufacturing. This could be “a potential disaster” for many Western brands, said Daniel, particularly as mature economies in lockdown are relying on e-commerce: “With overall revenues down, brands are fighting for every sale online.”

Focus on online

Most of the webinar consisted of a Q&A with the four in-house counsel participants, and there were also a few questions from the audience. The speakers addressed the impact of the pandemic on issues such as counterfeits, knockoffs, advertising campaigns, parts and accessories, domain names, parallel imports and ingredient branding.

They agreed that the closure of physical markets had led to a doubling of online efforts, in particular to create intelligence about threats and target them effectively. But they added that the pandemic had also prompted innovative ideas on doing business differently, including new means of selling products, flexible working and even donations such as free coffee.

Other topics discussed included: the importance of communicating the benefits of brand protection internally, and how best to do that; maximising the effectiveness of budgets; learning about online stores and platforms; and integrating online and offline channels.

Stay alert

Looking to the future, the speakers agreed that online commerce presents risks but were broadly optimistic that enforcement solutions would emerge, including through Blockchain and artificial intelligence. They also expressed hope that harmonisation would increase, and tools, technologies and partners would evolve to support brand protection.

Given the expected growth of online commerce, and new competition (including illicit competition), brand owners will need to stay alert: fraudsters can adapt quickly so brand owners must adapt too to ensure they can protect their most valuable assets.

Listen to a recording of the webinar here. Look out for announcements about future webinars on the MARQUES events page.

Nick Wood of the Cyberspace Team provides the latest update on developments at ICANN.

Bottom-up, consensus-based policy making is an uncertain process. ICANN has been working at it for 20 years now, trying to balance the interests of commercial, non-commercial, business and IP owners. It does not get any easier.

MARQUES participates via the IPC (Intellectual Property Constituency) in the process, feeding in ideas, trying to shape discussions to protect brand owner interests. Currently one of our members, Flip Petillion, sits on ICANN’s GNSO Council, its 21-member policy-making body. Other members of the Cyberspace Team can frequently be found around midnight on calls and web conferences.

In early May, MARQUES submitted comments on two of ICANN’s policy initiatives of importance to our members.

The gTLD Rights Protection Mechanism (RPM) review

An ICANN Working Group (WG) has been reviewing RPMs in gTLD registries, most of which were introduced since the 2012 new gTLD round.

The WG overran its planned two-year period by two years. What seemed relatively simple – reviewing the effectiveness of RPMs in the 2012 round of new gTLDs – turned into a nightmare including:

•      A lack of subject-matter expertise – the wrong tone was set early when one of the three co-chairs (from an academic background) asked: “why do trade marks need protection?”

•      A review member who threatened legal action against other members before being removed

•      Market research efforts that proved inconclusive – in the end it fell to a small member of very hard-working experts on the IPC to rescue the initiative.

MARQUES’ comments – submitted through a fiendishly cumbersome online questionnaire of almost 200 questions with word limits – called for improvements in some areas: for example, financial deterrents for cybersquatting and for geographic indications to be included in the Trademark Clearing House. Where consensus could not be reached, we called for maintaining the status quo – i.e. no change rather than tinkering with established practice.

The second part of the WG’s review of RPMs will start later this year, focussing on the UDRP. The UDRP is so important that we need to be at the top of our game to prevent the tinkering of non-commercials and academics from undoing the only cross-border, cost-effective mechanism for resolving bad faith domain registration. We have 20 years of jurisprudence to protect.

The Expedited Policy Development Process (EPDP) on the Temporary Specification for gTLD Registration Data

In anticipation of GDPR in May 2018, ICANN restricted access to gTLD Whois data.

By doing so, key registrant details were removed from the public record of registration for gTLDs including .com, making the task of tracking abusive registrants almost impossible.

A working group convened by ICANN’s GNSO Council – the EPDP team – is working on a framework for replacing access to non-public registration data. This includes, crucially, a System for Standardised Access/Disclosure (SSAD) for accredited users, including brand owners.

Chaired with an iron fist by a former Under-secretary of State in Latvia – Jānis Kārklinš – it is moving much quicker than the RPM review. Valid concerns have been raised that important issues – notably data accuracy – are being sidelined due to pressure to complete the current phase of work on time (the current Chair is available only until 30 June 2020).

However, the EPDP’s high-level recommendations, supported by MARQUES, are moving us towards an SSAD with the accreditation of users including law enforcement, brand owners and cybersecurity researchers. Clear and coordinated guidance from European Data Protection Authorities on the legal impacts of such a model will be very welcome to ensure the system works.

Nick Wood is Executive Chairman of Com Laude/Valideus and a member of the MARQUES Cyberspace Team and MARQUES Council.

Read more news from the Cyberspace Team here.

The EUIPO has today (15 May) published a Guidance Note on the end of the extension of time limits.

In a video message, EUIPO Executive Director Christian Archambeau provided an update on the current situation at the Office.

He also updated users on the Office’s use of videoconferencing during the current COVID-19 crisis, and confirmed that the first virtual Stakeholder Quality Assurance Panel meetings will begin next month.

EUIPO’s staff has been teleworking since 16 March, in accordance with the state of emergency declared by the Spanish government. Mr Archambeau gave details on the first phase of the Office’s return plan, to be carried out in full compliance with health and safety advice.

Guidance Note

The comprehensive Guidance Note covers:

• Extension of time limits in ex parte and inter partes proceedings (Article 68 EUTMDR and Article 57 CDIR)
• Suspension of proceedings (Article 71 EUTMDR)
• Continuation of proceedings (Article 105 EUTMR)
• Restitutio in Integrum (Article 104 EUTMR and Article 67 CDR)

All the EUIPO information is available in full here. MARQUES has also compiled links to relevant information from other IP Offices, available at marques.org/covidlinks