IP in China: An Overview
and the Latest Developments
Giovanni Casucci
IP Litigator
China IPR SME Helpdesk External Expert
Brussels, 29 October 2015
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Today’s Speaker
Name: Giovanni Casucci
Firm: Bardehele Pagenberg
Location: Milan, Italy
Insert
Photo
Giovanni F. Casucci is the founder of the Italian branch of the Bardehele
Pagenberg. IP litigator in Italy since 1992. From 1999 to 2005 director of a
Master program in IP Management at the Politecnico of Milano University.
Since 2008, director of the Master program of ICE (Italian Trade Commission)
on IP and China (“Ideacina”) and member of the faculty of the MBA programs
of MIP Politecnico of Milano. Director of Centro Studi AntiContraffazione
Milano
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Agenda
• Legal Framework
• Patents
• Design
• Trademarks
• Enforcement
• Trade Fairs
• Take-away Messages
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EU and China
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EU and China
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Intellectual Property
EU
CHINA
EU China WTO
9 May 2000
IPR 1
(1999 - 2004)
IPR 2 (www.ipr2.org)
(2007 – 2012)
IP Key
(2013)
TRIPS Agreement – 1996
TRIPS Agreement – 2001
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Patents
EU
CHINA
Patents
- technical teaching protection
- examination through EPO
- 20 years from filing date
Patents
- technical teaching protection
- examination through SIPO
- 20 years from filing date
Utility Model
- different aim for each member state
- no examination
- 10 years from the filing date
Utility Model
- only for product innovation
- no examination
- 10 years from the filing date
Validity
- before any IP court OR
- before a centralised Court (Dual
System (i.e. Germany)
Parallel filing strategy
Validity
- before SIPO (Dual System)
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Case Study I: Chint / Schneider
2007
Wenzhou Court (Zhejiang province) assigned damages
to CHINT against Schneider about Rmb330m
(US$48mln)
Settlement at $23mln)
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Design
EU
CHINA
Duration
- 25 years (5 years renewal periods)
Duration
- 10 years (annual renewal)
(maybe 15 years from 2017)
Novelty (relative)
- 1 year grace period
Individual Character
Difference from prior art
Filing
- multiple filings
Novelty (absolute)
- 6 months priority
Individual Character
Substantial difference from prior art
Filing
- Individual shapes (option of
multiple filings only for the same
category – max 10)
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Duration
Unregistered
Design
Publication
3 years
Unfair
Competition
(only for the
effective first
sales markets )
Registration
EU
®
12
months
Grace5 years renewable x 5 times up to 25 years
On public
domain
Period
Registration
On public
domain
CHINA
Up to 10 years
NO Registration
©
EU up to 70 years post mortem
WORLD
On public
domain
CHINA / USA Up to 50 years post mortem
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Industrial Designs and Applied Art on
Commercial Products
Drawings of engineering designs and product designs are categorized as
“graphic works” under the Copyright Law and are copyrightable in China.
Work of applied art is also protected by the Copyright Law as work of fine art,
as long as the aesthetic features can be physically and conceptually separated
from the utilitarian features. In some cases, China’s Unfair Competition Law
can also protect such industrial designs.
“separability” ?
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Case Study II: Panda / Peri
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Trade marks
EU
CHINA
Pre-registration Use
Pre-registration Use
- de facto trademarks are protected
Format
- NOT admitted
Format
- Graphic
- Latin characters
Duration
- Graphic
- Latin characters
- Chinese characters
Duration
- 10 years (10 years periods renewal)
- Form filing date
Opposition
- 10 years (10 years period renewal)
- From the registration
Opposition
- against unlawful filings
- against unlawful filings
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Case Study III: Tenax Case 1
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Case Study IV: Tenax Case 2
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Enforcement
EU
CHINA
Civil proceedings
- specialised Courts (each member
State)
- injunctions & seizures
- damage recovery
- urgent proceedings (3/6 months)
- ordinary actions (2/3 years average)
(Germany and the Netherlands 1 year
average)
Civil proceedings
- Min San Ting (31 IP specialised Courts)
- full specialized IP courts in:
Beijing, Shanghai and Guangzhou
- injunctions and seizures
- damage recovery
- ordinary actions 1,5 year
Administrative proceedings
- SAIC
- only seizures and fines
- no damage recovery
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Enforcement II
EU
CHINA
Criminal proceedings
- only in case of evident
infringement
- no specialised Public prosecutors
Criminal proceedings
- rarely used
Customs
- Import and Export IP control
Customs
- Export and Import IP control
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Administrative Authority
www.saic.gov.cn
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Enforcement issues
A) Formalities
all documents shall be duly translated /notarized
B) Only the granted rights can be enforced
need to file Patents / Utility Models / Design timely
C) Choice between the Administrative / Civil
https://www.cov.com/~/media/files/corporate/publications/2015/07/sipo_is_reinforcing_its_role_in_patent_protection_in_china.pdf
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Case Study V: Silk Market
Beijing
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Case study VI: Ferrero Case
• 07/2003: FERRERO Spa summons
蒙特莎(张家港)食品有限公司
[“Méngtè shā (zhāngjiāgǎng) shípǐn
yǒuxiàn gōngsī“] for unfair
competition
• 02/2005: first instance decided
against Ferrero
• 01/2006: appeal decision in favour
of
Ferrero
with
damages
assignment about ￥700,000
• 03/2008:
Supreme
Court
confirmed the appeal decision just
reducing the damages
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Case study VII: New Balance Case
“GUANGZHOU, April 29 (Xinhua) -- A Chinese court has •
ordered an affiliate of U.S. sneaker maker New Balance
to compensate a Chinese citizen 98 million yuan (16
mln U.S. dollars) for infringing his trademark rights.
The court defied the "necessity" argued by the
U.S. company to use "Xin Bai Lun" instead of its
registered trademark "New Balance" in China,
as "Xin Bai Lun" is neither the translation or
transliteration of "New Balance."
The Guangzhou Municipal Intermediate People's Court
in south China's Guangdong Province also ordered New According to the court, the compensation amounted
Balance Trading (China) Co., Ltd. to stop using "Xin Bai to half of the profits the defendant made during the
Lun" to promote its products in China, the court told period the infringement took place.”
Xinhua on Wednesday.
http://news.xinhuanet.com/english/2015The verdict, issued on April 24, said the New Balance 04/29/c_134197000.htm
affiliate sold its products in the Chinese market under
the name "Xin Bai Lun," similar to the trademark "Bai
Lun" registered by a man surnamed Zhou in 1996.
Zhou also registered "Xin Bai Lun" in 2011. New
Balance failed to block the registration after raising an
objection with the Chinese trademark authority.
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Trade Fair Issues
Self regulatory options
• Rgulations of MACEF, Expocomfort, Marmomacc, Samoter
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Trade Fair Issues
International Regulation project
on trade fairs ?
China IPR SME Helpdesk Guide:
IP Strategy for European SMEs at Trade
Fairs in China
IPR2 Study
www.ipr2.org
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Takeaway messages
CHINA is rapidly growing in terms of quality of IP filing and prosecution as
well enforcement rules and practice, so the first approach will be on acquiring
knowledge about the opportunities offered (i.e. Administrative enforcement)
and being really aware about the current limits, i.e.
• For patents: the “relative novelty” requirement applicable still to
patents / utility models filed before the October 2009
• For trade marks: the lack of protection for unregistered trademarks
• For designs: the lack of grace period for novelty not consistent with
the EU Directive and the really limited term of protection (10 years)
and the need to consider copyright as alternative against identical
copies.
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China and South-East Asia IPR SME Helpdesks
Enquiry Helplines
Websites & Blog
E-learning &
Business Tools
Training Workshops
& Live Webinars
IP Guides &
Newsletters
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Enquiry Helpline
• IPR one-to-one consultations: E-mail, telephone,
face-to-face
• First-line advice on China countries IPR matters
• Confidential
• Delivered by China IPR specialists
• Available for EU SMEs and SME intermediaries
question@china-iprhelpdesk.eu
+86 (10) 64620892
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Information & Materials
• Library of publications:
– IP specific guides, incl. patents & trade marks
– Industry specific guides, incl. textiles, machinery, creative industries
– Business guides, incl. technology transfer
– Hong Kong and Macao Factsheets
• Quarterly Helpdesk newsletters
• Article placement
• Topical blog posts
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Training workshops & webinars
Workshops across Europe and China
• Addressing general IPR and industry specific IPR matters
• Trainings delivered in several languages
• Free one-to-one consultations
• Webinars: Save time by joining these interactive training sessions from
your own office or watch recordings online
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Online portal
• Practical IPR guides
www.china-iprhelpdesk.eu
• E-learning modules
• Case study catalogue
• FAQs
• Helpdesk newsletters
• Event information
• Latest blog posts
• Helpdesk videos
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The China IPR SME Helpdesk provides free, confidential, business-focused
advice to European Small and Medium Enterprises (SMEs) relating to IPR in
China
Helpdesk Enquiry Service / Training & Events: question@chinaiprhelpdesk.eu
Materials
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Helpdesk can add value to EU SMEs, please contact:
Telephone/Hotline: +86 (10) 6462 0892
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Feedback Questions Discussion
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