HongFang Law HFL

22/02/2023

The Concept, Legal Provisions, and Judicial Protection Status of Geographical Indication Trademarks

The Concept and Origin of Geographical Indications
A geographical indication is not a legal term generated from China, but a concept accepted under the Agreement on Trade-Related Aspects of Intellectual Property Rights (hereinafter referred to as the “TRIPs Agreement”) after China’s accession to the WTO. Geographical indications are, for the purposes of this Agreement, identifying goods as originating in the territory of a member, or a region or locality in that territory, where a given quality, reputation, or other characteristics of the goods is essentially attributable to its geographical origin. From this definition, the concept of geographical indication consists of two parts: goods originating in the territory; the quality, reputation, and other characteristics of the goods are essentially attributable to their geographical origin.

read more on the link below:

The Concept, Legal Provisions, and Judicial Protection Status of Geographical Indication Trademarks The Concept and Origin of Geographical Indications A geographical indication is not a legal term generated from China, but a concept accepted under the Agreement on Trade-Related Aspects of Intellectu...

19/01/2023

Analysis of Trademark Infringement in Parallel Importation

I. Parallel Imports
Parallel importation refers to that when a trademark is protected in more than two countries, people legitimately purchase the goods bearing the registered trademark from the market of a country that allows the sale and then put the goods into the market of another country that protects the trademark through entry inspection without the consent of the trademark owner. In conclusion, parallel importation shall meet the following conditions:

1. The rights holders have the legal rights to the trademark affixed to the goods in both the exporting and importing countries.
2. Parallel imports shall be genuine goods with trademarks attached.
3. The trademark owners of the exporting country and the importing country are substantially the same.
4. Without the consent of the trademark owner.
5. Parallel imports enter China through normal and legitimate customs supervision procedures.


To read more on the topic:

Analysis of Trademark Infringement in Parallel Importation Authors: Bryce Bao, Olivia Ma I. Parallel Imports Parallel importation refers to that when a trademark is protected in more than two countries, people legitimately purchase the goods bearing the registered trademark from the market of a coun...

07/12/2022

The Right of Name Protection in Trademark Prosecution in China

Case Background & Analysis I
Court File No.: (2016) ZGFXZ No.27 Trademark No. 6020569 “乔丹” (QIAO DAN in Pinyin form) Cancellation Case (Class 28)
Born in New York, USA, Michael Jeffrey Jordan (hereinafter referred to as “Jordan”) is a former American men’s basketball player and shooting guard known as the “God of Basketball”. As one of the greatest basketball players in history, he was inducted into the Naismith Memorial Basketball Hall of Fame in 2009 and the top 75 players in NBA history in 2021.

In April 2007, Jinjiang Maike Shoes Plastic Co., Ltd. filed an application for trademark No. 6020569 “乔丹” (read as QIAO DAN, in Chinese characters, hereinafter referred to as the “Disputed Trademark”). The Disputed Trademark was approved for registration in March 2010 and was designated “balls for games; body-training apparatus; arrows; machines for physical exercises; cuffs”, etc. in Class 28. In August 2011, the Disputed Trademark was assigned to QIAO DAN Sports Co., Ltd. (hereinafter referred to as “QIAO DAN Company”). But the SPC and Jordan had the last laugh in the end...

Our team reviews the case at hand and up to their rightful conclusion, with recommendations on how to safeguard one's rights. If you want to read the whole piece, please check out the complete article on our website.


https://www.hongfanglaw.com/en/news/right-of-name-trademark-prosecution-in-china/

07/12/2022

Legal 500 Leading Firm 2023 ~ HFL

HongFangLaw is delighted to share with all colleagues and clients that the firm has been ranked as a Leading Firm in the Legal 500 2023 on the APAC rankings for our practice area in Intellectual Property Protection, for the second year in a row.

Legal 500 is the largest independent international survey of the legal market and is recognized as the authoritative guide to law firms in the world. An annual publication, achieving rankings in the directory, is increasingly competitive and based on research that includes client feedback as well as detailed submissions from law firms.

As always, we have continued working towards international recognition for our great team. With our twenty years of experience in intellectual property protection, we are steadily pursuing the best service practice to protect our client’s intellectual property portfolios. We are glad to have been recognized by Legal 500 again as one of the leading firms in China.

The year 2022 was a successful and busy period for the team, and we had several successful litigations and significant enforcement cases, especially in the fields of trademark and copyright, as well as anti-counterfeiting enforcement.

Furthermore, we had a change in leadership, with the addition of 5 new partners, promoted from our senior counsel team. This has increased our productivity and will surely benefit our clients and colleagues greatly moving forward.

Legal 500 has also recognized our partners Eric Su and Xu Zhang and has given an honorable mention to our other partners Kevin Xu, Bob Zhang, and Shirley Lin as “key lawyers”.

As we previously shared in April and May, this year, a few of our cases have been selected as part of the top practices in litigation and enforcement in Chinese courts and QBPC, it is always encouraging to see our practice become better with time, and we feel rewarded in seeing how also international institutions recognize HongFangLaw as one of the leading firms in China.

This will be a new stepping stone for our amazing team, and we will always work towards performing a better service for our clients and ensuring that their rights are protected in the Chinese market environment.

14/09/2022

Hongfang’s support brings Treasury Wine Estates Ltd (TWE) to a Win in the Supreme Court’s Retrial

After helping Treasury Wine Estates Ltd (TWE) to get its trademarks “奔富” and “Penfolds” recognized as well-known trademarks in China, our firm, Shanghai Hongfu Law Firm, once again represented Treasury Wine Estates Ltd (TWE)’s affiliate, Southcorp Brands Pty Limited (the trademark holder of “奔富” and “Penfolds”), to win a favorable judgment in the “奔富酒园” trademark invalidation retrial ruled by the Supreme People’s Court. Starting from filing an application for trademark invalidation against the Disputed Trademark “奔富酒园” to the Supreme People’s Court issuing a retrial judgment, the case went through twists and turns and lasted seven years. The case eventually ended with the Supreme People’s Court “giving the final word”, supporting our grounds, revoking the second-instance judgment, upholding the first-instance judgment, and declaring the Disputed Trademark No. 11157214 “奔富酒园” invalid.

If you want to know more, check the story on our website.

Hongfang’s support brings Treasury Wine Estates Ltd (TWE) to a Win in the Supreme Court’s Retrial 【Case Summary】 After helping Treasury Wine Estates Ltd (TWE) to get its trademarks “奔富” and “Penfolds” recognized as well-known trademarks in China, our firm, Shanghai Hongfu Law Fir...

07/03/2022

Can you protect a patent Technical Solutions which were disclosed Prior to the Official Application?

Our team explores this issue in our latest update:

Remedies to Protect a Patent Technical Solutions which were Disclosed Prior to the Official Application The technical solutions should be novel, and creative to be granted as a patent by law, and any improper disclosure prior to the patent application would bring negative effects to the novelty and....

17/01/2022

HongFangLaw is delighted to share with all colleagues and clients that the firm has been ranked as a Leading Firm in the Legal 500 2022 on the APAC rankings for our practice area in Intellectual Property Protection.

Legal 500 is the largest independent international survey of the legal market and is recognized as the authoritative guide to law firms in the world. An annual publication, achieving rankings in the directory is increasingly competitive and based on research that includes client feedback as well as detailed submissions from law firms.

We have always worked towards international recognition for our great team, with our twenty years of experience in intellectual property protection we are steadily pursuing the best service practice to protect our client intellectual property portfolios. We are glad to have now been recognized by Legal 500 as one of the leading firms in China.

The Year 2021 was a successful and busy period for the team and we had several successful litigations and significant enforcement cases, especially in the fields of trademark and copyright, as well as anti-counterfeiting enforcement.

As we previously shared in March and April, a few cases have been selected as part of the top practices in litigation and enforcement in Chinese courts, it is always encouraging to see our practice become better in time, and we feel rewarded in seeing how also international institutions have begun to recognize HongFangLaw as one of the leading firms in China.

This will be a new steppingstone for our amazing team, and we will always work towards performing a better service for our clients and ensuring that their rights are protected in the Chinese market environment.

17/12/2021

Copyright Protection for Works of Applied Art

A work of applied art, as the name suggests, considers its artistry and practical applicability. With the economic development and the continuous improvement of people’s aesthetic requirements, products are designed with a greater emphasis on originality, and designers have therefore created many unique designs. In practice, product design can be protected through a variety of patterns such as industrial design, three-dimensional trademark, unique trade dress for influential products, and work of applied art. We will discuss relevant legal provisions on work of applied art, the elements and evidence of ownership, with a view to the judicial protection of work of applied art in China, such as the case of SOCIETE JAS HENNESSY & CO. v. Guangdong Kalaer Wine Co., Ltd. on the infringement of copyright.

Check the whole case report on our website:

SOCIETE JAS HENNESSY & CO. v. Guangdong Kalaer Wine Co., Ltd. A work of applied art, as the name suggests, considers its artistry and practical applicability. With the economic development and the continuous improvement of people’s aesthetic requirements, products are designed with a greater empha...

29/11/2021

The Intellectual Property Working Group (IPWG) of the Italian Chamber of Commerce in China, will host a webinar on “Protect Your Brand Against Infringement and Counterfeiting - From Investigation to Action” on December 15th, 2021, starting from 4:00 pm (China Standard Time) / 9:00 am CET.

Federico Bartolini, our team BD Manager, will be one of the speakers at the event, representing our HFL team, and will focus on how to carry out an anti-counterfeiting investigation in a (cost) effective manner and which are the enforcement options once evidence material is collected.

If interested please join us at the event, more info on how is in the flyer attached.

08/11/2021

A conversation about the NFT from Curry’s Avatar and its copyrights

Recently, a piece of news titled “Curry Paid $180,000 for a Profile Photo” spread like wildfire and quietly climbed into the top search. While some onlookers exclaimed that Curry is rich and willful, quite a few fans changed their profile photos to the same, saying that they have used the $180,000 profile picture without paying anything.

As an intellectual property practitioner, apart from being an onlooker, I paid more attention to the avatar that Curry purchased, which is an increasingly popular NFT. Here I’d like to take this opportunity to talk about NFT.

NFT stands for “Non-Fungible Token”, whose opposite concept is the fungible token, namely the Bitcoin that we are familiar with. Fungible tokens represented by Bitcoin are characterized by being interchangeable and splittable, while non-fungible tokens are just the opposite, being neither interchangeable nor splittable. Each NFT is unique in the blockchain.

At the same time, it is because of this attribute that the presence of NFTs has increased in multiple fields such as securing intellectual property rights, financial instruments, digital art, and collections. With the help of blockchain technology, every NFTized content has a unique identity and attribute, and can only be enjoyed by one collector.

The ape image purchased by Curry comes from the famous Bored Ape Yacht Club in the NTF market, which has 10,000 global limited ape image NFTs. These apes are different in clothing, headwear, fur, facial expressions, etc., and each one is unique. The ape image purchased by Curry is expensive because of the rareness of its eyes and clothing. Therefore, in the eyes of the masses, Curry just bought a picture of an ordinary ape as his profile photo, but in fact, Curry bought a unique art collection. Even though the masses have duplicated tens of thousands of these ape images, the ape picture owned by Curry is the only “authentic” one.

So, when Curry purchased the ape image, did he also purchase the copyright of the image at the same time? Does it mean that Curry has obtained the copyright of the ape image so that he can exercise a copyright claim on it? The answer is negative.



read the whole article on our website:

Recently, a piece of news titled “Curry Paid $180,000 for a Profile Photo” spread like wildfire and quietly climbed into the top search. While some onlookers exclaimed that Curry is rich and willful, quite a few fans changed their profile photos to the same, saying that they have used the $180,0...

17/09/2021

Law Application on TM Opposition

Views on the Expatiation of Deception and Confusion Clause in Trademark Opposition from Case Monet

Case summary:

In recent years, an increasing number of applications for the registration of trademarks containing “莫奈 / Monet” in classes 18, 20, 24, 30, 41, and 43 have passed the substantive examination, and have been initially examined and published by the Trademark Office. As the owner of the brand “Claude Monet”, ACADEMIE DES BEAUX-ARTS considered that such trademarks infringed its prior rights and filed trademark opposition applications with the Trademark Office against several trademarks that had already been initially published.

Upon examination, the Trademark Office concluded that, prior to the application for registration of the opposed trademark, CLAUDE MONET had a high reputation in China, and that the opposed trademark would easily mislead the relevant public that the goods or services indicated by the trademark were specifically related to the late famous French artist CLAUDE MONET, which would easily cause confusion and misunderstanding among the relevant public. In accordance with Article 10.1.7 of the Trademark Law, Trademark Office decided that the opposed trademark shall not be registered.

As stipulated under Article 10.1.7 of the Trademark Law, a sign which is deceptive and easily misleads the public regarding the quality or origin of goods may not be used as trademarks. Specifically, in trademark opposition proceedings, cases of non-registration of such opposed trademarks by the Trademark Office based on the afore-listed Article are frequent. In this regard, the author has selected several cases of opposition to the trademark “莫奈 / Monet” to expound the application of Article 10.1.7 in the cases of trademark opposition.

1. Criteria for determining “deceptive”

Article 10.1.7 of the Trademark Law is intended to protect the public interest and maintain the trademark order by prohibiting the registration of trademarks that may be deceptive and easily mislead the public. A “deceptive sign” is generally considered to be a mark that represents the quality and other characteristics of the goods or services designated for use or the place of origin in a manner that exceeds its inherent degree or is inconsistent with the facts, and that is prone to cause the public to have a false perception of the quality and other characteristics of the goods or services or the place of origin.

Specifically, it can be judged from the following two aspects.

a) Whether the sign is closely related to the quality, character, function, application, raw materials, content, weight, quantity, price, process, technology, origin, and other features of the goods or services, and deceives or brings about misidentification of the attributes of the goods or services.

b) Whether the sign is misleading to the relevant public mainly depends on whether the constituent elements of the mark itself would cause the relevant public to misunderstand the subject of the business of the goods or services designated by the sign, thus leading to misidentification and misled purchase. If according to the general perception of the relevant public, the sign is sufficiently misleading, it shall be deemed to be “deceptive”.

In short, the core part for determining whether the sign would mislead the relevant public as to the quality and other features of the goods or services or the origin lies in whether the sign constitutes a scenario under Article 10.1.7 of the Trademark Law.

In the case of opposition regarding the trademark “Monet”, the opposed trademark “莫奈 / Monet” contains the name of the late French artist “CLAUDE MONET”. It is highly likely that the relevant public, based on their awareness and knowledge, would when exposed to the opposed trademark, believe that the goods or services indicated by the trademark are associated with the late famous French artist CLAUDE MONET as it contains the word “莫奈” or “MONET”. And thus, the relevant public would misunderstand the subject of the goods or services designated by the opposed trademark and be deceived or misled. Therefore, the application for registration of the opposed trademark “莫奈/ Monet” falls within the scenario of Article 10.1.7 of the Trademark Law.

2. Distinguishing the application of Article 10.1.7 and Article 10.1.8 of the Trademark Law

The author notes that in most of the concluded opposition cases regarding the trademark “莫奈 / Monet”, Trademark Office has applied the provisions of Article 10.1.7 of the Trademark Law to decide that the opposed trademark should not be registered. However, in the case regarding trademark No.28735312 “Claude Monet / 克劳德莫奈”, the decision made by Trademark Office indicated that the opposed trademark shall not be approved for registration for having any other adverse effect under Article 10.1.8 of the Trademark Law. As can be seen, there are different views and approaches in practice.

Article 10.1.8 of the Trademark Law stipulates that “other adverse effect” refers to the negative and adverse effects of the words, graphics, or other constituent elements of a trademark on the political, economic, cultural, religious, ethnic, and other social public interests and public order in China. The determination of this provision shall consider factors, such as social background, political background, historical background, cultural tradition, national customs, and religious policies, as well as the composition of the trademark and the goods and services designated for use.

In the author’s view, Article 10.1.8 of the Trademark Law is a public policy, which has different connotations and extensions from Article 10.1.7 of the Trademark Law, and attention should be paid to distinguishing the scope of application of the two articles. In the case of trademark opposition to a celebrity such as “莫奈 / MONET”, Article 10.1.7 of the Trademark Law shall be applied.

Case Highlights:

The determination of “deceptive” should be made in the light of the circumstances of the case, the constituent elements of the sign, and the general level of awareness of the public concerned. And any sign that exceeds the threshold of reasonableness should be deemed to be deceptive. The significance of this is to reconcile conflicting factors through the application of the law so that the interests of all parties concerned are balanced and orderly market competition is ensured.

ACADEMIE DES BEAUX-ARTS considered that such trademarks infringed its prior rights and filed trademark opposition applications with the Trademark Office.

03/09/2021

HongFangLaw Webinar – Best Practices for Licensing Agreements in China

Dear Colleagues,

Our team would like to welcome you to join us online for our latest Webinar on the best practices for Licensing Agreements in China.

At 4:00 PM Beijing Time, on September 23rd.

There are many things that need to be taken into considerations when drafting a licensing agreement between two parties. For example, What types of agreements exist, and which should you use? What are the items you need to cover within your agreement? Are there any additional tax considerations you need to be aware of?

In this webinar, Jenny Liao, Senior Manager of Corporate Accounting Services in Dezan Shira & Associates, and Eric Su, Senior Partner of HongFangLaw will talk about how to draft a licensing agreement that benefits all parties, from both a tax and a legal perspective.

Agenda:

Introduction of licensing agreements from a tax perspective

a. Introduction on types of licensing agreements.
b. General tax implications for licensing agreements in China.
c. Additional tax considerations for licensing agreements.
d. Transfer pricing considerations related to licensing agreements.
e. Procedures for cross-border license fee payment.

Introduction of licensing agreements from a legal perspective

a. Introduction on the licensing practice in China.
b. Best practice for negotiating a licensing agreement.
c. Concerns to be aware of for the licensee or licensor.
d. Potential disputes arising from licensing agreements.
e. Best practices on how to deal with the disputes in China and abroad.

This webinar is held in partnership with Dezan Shira & Associates Shanghai Branch and is FREE of charge.

Click the event page below to know more, and register for the webinar.

Dezan Shira & Associates is a pan-Asia, multi-disciplinary professional services firm, providing market entry, legal, accounting, tax, HR, technology and operational advisory to international investors.