This is a monthly newsletter published on the 16th of each month to inform UK stakeholders of recent developments in the Chinese IP environment. The content is collected from publically available sources, where information is often available in Chinese only. Please feel free to forward this newsletter, and contact Su.Hong@fco.gov.uk to be added to/removed from the distribution list. A pdf version is available on the Embassy’s IP webpage.
UK IPO Chief Executive visits China, senior Chinese trade marks delegation visits London
Sean Dennehey, Chief Executive of the UK Intellectual Property Office, visited Beijing, Guangzhou and Chengdu from December 5-9. Mr Dennehey met with counterparts in China’s IP agencies and participated in a number of public events. The trip was immediately followed by a visit to the UK by Vice Minister Liu Junchen of the State Administration for Industry & Commerce (SAIC) for further exchanges on trade marks. Highlights from the visits included:
· Agreement for 2017 bilateral workplans between the UK IPO and the State Intellectual Property Office (SIPO, on patents and designs), State Administration for Industry & Commerce (SAIC, on trade marks) and the National Copyright Administration of China (NCAC).
An agreement between the China-Britain Business Council (CBBC) and Chinese e-commerce platform JD.com to reduce online counterfeiting;
New IP guidance for British companies operating in China’s booming education sector;
UK participation as “Country-of-Honour” in a major Copyright Expo and conference in Guangzhou, including holding the 17th UK-China IP Salon;
A UK-China Trade Marks Summit in London, opened by UK Minister of State for Energy and Intellectual Property Baroness Neville-Rolfe and SAIC Vice Minister Liu Junchen;
The latest in a series of CBBC-Alibaba roundtable meetings, with Alibaba Group Partner Jessie Zheng presenting and answering questions from UK rights holders and industry groups.
Intellectual property outcomes of the UK-China Economic & Financial Dialogue
The 8th UK-China Economic and Financial Dialogue (EFD) was held in London on Thursday November 10. The EFD was co-chaired by the UK’s Chancellor of the Exchequer Philip Hammond and Chinese Vice-Premier Ma Kai. The full policy outcomes form the EFD are published here (in English) and here (in Chinese). The section covering IP (at paragraph 54 in the above links) included agreements on patents and designs, trade marks, copyright and IP & e-commerce. The full IP text is copied below:
The UK and China recognise the important role of intellectual property (IP) in promoting technological innovation and economic growth. Both sides will work together to continue to provide better services for users of IP systems and the public from both countries.
Both sides agree to strengthen IP cooperation and mutual understanding, and help British companies protect and enforce IP in China and Chinese companies protect and enforce IP in the UK.
Both sides recognise the great success of the annual UK-China IP Symposium. The 2017 UK-China IP Symposium will be held in the UK and will further promote understanding of IP systems and business concerns and facilitate mutually beneficial commercial and technological exchanges.
i. The UK and China have agreed to hold exchanges on improvements to the patent and design systems, IP in emerging technology fields, IP operation (including IP finance, valuation and commercialisation) and other topics of mutual interest.
ii. Both sides value cooperation in the field of trade-marks, and will continue to exchange views on the registration and enforcement of trade marks. Exchanges will cover Geographical Indications (GIs) and collective/certification marks; and changes to trade mark practice in China that will tackle systemic, bad-faith applications.
iii. The UK and China will continue to exchange information on a range of copyright topics, including collective licensing, sports broadcasts and Artist Resale Right. The UK will participate as Country-of-Honour at a major international copyright exhibition in Guangzhou in December 2016.
China will urge copyright owners and broadcasters to timely perform their respective obligations in accordance with the Interim Measures for Payment of Remuneration by Radio and Television Stations for Broadcasting Sound Recordings.
Following exchanges earlier this year, the UK and China recognise the potential evidence burden for rights owners in administrative enforcement against online copyright infringement. Both sides will work together to promote flexibility where necessary (e.g., on proof of copyright ownership for large numbers of works) to enable effective online copyright protection.
iv. The UK and China re-confirm their commitment to cooperate on IP protection on e-commerce and social network platforms. Both sides recognise progress from recent UK-China industry initiatives and will continue to support these where appropriate, to achieve the shared goal of a more favourable IP environment, increasing consumer confidence in ecommerce.
In particular, the UK and China are willing to discuss notice-and-takedown mechanisms; appropriate deployment of pre-emptive measures (or filters); and smooth links between on- and off-line enforcement.
TRADE MARKS & GEOGRAPHICAL INDICATIONS:
Partial victory for Michael Jordan in the QIAODAN trade mark case
The Supreme People’s Court has overruled a decision by Beijing High People’s Court in a high-profile case involving retired basketball player Michael Jordan. The Court supported the cancellation of a Chinese character mark corresponding to Michael Jordan’s name. The mark had been registered by the Chinese company Qiaodan Sporting Ltd. The Court accepted that the Chinese character version of Mr Jordan’s personal name had achieved a certain level of reputation in China, and so should be protected from unauthorised third party registration. However, the Chinese company was allowed to maintain ownership of the QIAODAN trade mark in roman script. More here (in Chinese).
COPYRIGHT & CREATIVE INDUSTRIES:
Notice on online literature piracy
The National Copyright Administration of China (NCAC) has published a Notice on Copyright Protection for Online Literature, which came into effect as of November 11, 2016. The Notice makes a distinction between Internet service providers (ISPs) and Internet Content Providers (ICPs) in terms of liability. NCAC plans to establish a list of platforms, aiming to identify infringing websites and clarify the licensing situation for online publications on legitimate sites. More here and here (in Chinese).
PATENTS, INDUSTRIAL DESIGNS & INNOVATION:
Patent Examination Guidelines updated, new provisions on business models, software and biological data
The State Intellectual Property Office (SIPO) has published proposals to update Patent Examination Guidelines. Areas that will be updated include provisions covering business model patents, inventions involving computer programmes and supplementary submission of biological test data in chemical patent applications (an important part of the examination process for pharmaceutical patents). More here (in Chinese).
OTHER ENFORCEMENT & TRADE SECRETS:
Court awards large damages, costs in patent case
The Beijing Intellectual Property Court has awarded damages of RMB 50 million (approx. £6 million) in damages and costs in a patent infringement case. The case concerned USB technology to enable secure online transactions. The damages award was the highest since the Court was established two years ago, and included RMB 49 million damages and RMB 1 million for legal costs. The Court calculated the damages based on profits to the infringer, using evidence provided by the plaintiff and banks, which were end-users of the infringing technology. The defendant did not submit evidence to enable an alternative calculation. More here (in Chinese).
If you would like any further information on any of the above matters or to discuss Embassy support for your company in China please contact Su Hong (Su.Hong@fco.gov.uk).