MIP held its IP in Asia Forum at Le Meriden Piccadilly, London, on 23 June 2016.

The first talk gave an overview of trade mark protection in China. Dr Guan Tang, a senior lecturer at Queen Mary University of London, looked at the academic view. She noted that there are three key dimensions to Chinese trade mark law; (1) the public interest in promoting a socialist market economy, (2) consumer rights, and (3) the rights of the proprietors of trade marks, and that there appears to be a conflict between the requirement of promoting a socialist market economy and protecting right holders. Next on the agenda was a review of the recent revisions to Chinese trade mark law. In this regard, the key points were the speeding up of the examination procedure, extending the scope of protection (sound marks are now registrable), tackling IP squatting and allowing for higher damages and penalties. Whilst it is Dr Tang’s opinion that the current enforcement of trade mark rights in China remains unpredictable and has not significantly improved, the law is now better written such that there is hope for the future provided it is managed correctly.

We then moved to Xiaolin Dang and Yang Zhang of Beijing Sanyou to consider recent cases and the key factors in ensuring the broadest protection in China. In this regard, Mr Dang urged the audience to advise clients to (1) file trade marks as soon as possible, (2) consider the relevant goods and services and the sub-classes, (3) file for the Chinese translation or transliteration as these are often registered by opportune third parties and (4) ensure that all evidence of use and reputation in China is maintained.

For the second talk, Guoxu Yang of CCPIT Patent and Trademark Law Office gave a presentation on the patent section, discussing recent civil, criminal and administrative cases, as well as the judicial interpretation on infringement matters which became effective as of 1 April 2016. It was interesting to note that the number of enforcement cases have increased dramatically in respect of all areas of IP in China in the last few years, with over 100,000 actions in 2015.

Aimin Huo of CCPIT Patent and Trademark Law Office looked at the general Chinese IP strategy and highlighted that China intends to be seen as a country of innovation. The annual report suggests that the number of trade marks filed are up by 25%, for example. The overall impression is that the IP environment is improving but there are still challenges with infringers. In this regard, Mr Huo advised that there were numerous options available to fighting counterfeiters and infringers, such as negotiation, mediation, contract management, criminal investigations, administrative proceedings and litigation, to name a few. It cannot be said enough, those entering the Chinese market must be proactive in order to maintain the upper-hand.

James Graham of Tyco gave an interesting in-house perspective on Chinese trade mark protection and understanding the trade mark process in China. In this regard, he stated that ensuring adequate coverage was of most importance, along with taking the proactive step of monitoring the Register and conducting regular sweeps of e-commerce websites. Essentially, all tools available in China should be utilised when protecting your brand. Jillianne Osborn of Vodafone reiterated Mr Graham’s comments but noted that there was no ‘one size fits all’ solution.

After a quick spot of networking and tea, we considered the issue of damages in infringement. This was a common topic throughout the talks on China as damages are considered to be low and off putting to those who potentially wish to take action in China. Statistics indicate that the majority of successful infringement cases only allowed for statutory damages (94%). Roya Ghafele, executive director of Oxfirst, noted that it is worrying that there is no clear calculation of damages in China, which often means it is not fair for either party. Qing Ge of Liu Shen & Associates  noted that damages was a problem, but that they should not be considered an obstacle to taking action if required.

Xiaoning Xu of Liu Shen & Associates  highlighted that Chinese companies are increasing their R&D expenses and encouraging development. These Chinese companies are also realising the benefit of IP protection as a valuable asset, which often means that foreign companies are being left behind as they hesitate on what to do. This was confirmed by Ms Ge who stated that Chinese companies and individuals are now considering IP as a long term investment.

We then moved on to Japan, where Yoichi Watanabe of Seiwa Patent & Law considered the revisions to patent law and gave an overview of recent case law. The key changes to patent law being that it is possible to file a post grant opposition, which is cheaper and faster than an invalidation action, and the rights in IP now belong to the employer rather than employee. It was also noted that it is difficult to succeed in patent infringement cases due to the need to satisfy the five requirements of the Doctrine of Equivalents – only 12% of cases have been successful in the period of 2004 to 2015.

Nami Togawa of Seiwa Patent & Law looked at trade marks in Japan and noted that Japanese trade mark applications are increasing. This is likely due to the fact that non-traditional trade marks such as colour, sound, motion, hologram and position marks, are now registrable. Since April 2015, there have been over 1000 non-traditional marks filed, with only 43 registering. To assist with registering non-traditional marks, Ms Togawa recommends building up a portfolio of marks and applying to register non-traditional marks in combination with an already registered mark. In addition to non-traditional marks, the requirements to prove acquired distinctiveness on the basis of earlier use have also relaxed, as well as the examination of slogan marks.

South Korea was the next topic on the agenda and Hyun Sil Lee of FirstLaw provided us with an overview of the patent law revisions already in effect and those soon to be in effect. The revisions already implemented allow a patent to be filed in English, with the Korean translation to follow 14 months later. There is also an extra month allowed for the Korean translation of a PCT filing. The revisions effective from 30 June 2016 primarily relate to the refunding of fees and related timelines, with the revisions effective from 1 March 2017 concerning the deferral period (from 5 to 3 years) and allowing the Examiner power to reopen examination after the notice of allowance. Won Sang Lee of FirstLaw considered the position of indirect infringement in South Korea and provided a review of recent case law.

After another bout of networking and tea, we considered IP commercialisation and monetisation under a sharing economy in China. Sean Cummings of Keltie emphasised that the two key words ‘sharing’ and ‘money’ and highlighted that it is what you do with IP that counts. It was noted that the sharing economy is expanding rapidly in China, with 50million people working in the sharing economy (5% of the population) and an estimated worth of $300billion.

Edmont Rao of WTOIP discussed how the WTOIP platform seeks to combine IP and innovation and allow for commercialisation of IP from the beginning stages.

An interesting debate took place between the panel of Sean, Mr Rao, David Pinsker, project manager at German Innovation & Science Forum Tokyo, and James Nurton, managing editor of MIP, as to the benefits and pitfalls of such a platform. It was noted that whilst innovation is great and to be encouraged, anything that makes it easier to commercialise IP will also bring about issues, such as confidentiality and who owns the relevant rights.

Finally, Jamie Rowlands of Gowling WLG and Haibin Xue, General Counsel at Hexago, discussed how to deal with repeat infringers in China and alternative dispute resolutions. The issue of why there is a problem was considered and how to prevent infringers from continuing to operate reviewed. Whilst Jamie looked at the methods to use once an infringement had taken place, Mr Xue took the view that prevention, rather than protection, was the best method in China.

To summarise, the key words of the day were ‘innovation’ and ‘progress’, and it was certainly a great opportunity to discuss the recent updates in law and cases in China, Japan and South Korea (and take one’s mind off Brexit for a short while).

Charlotte Wilding 30 June 2016