China IP SME Helpdesk Newsletter

Recently a famous Italian wine brand Brunello di Montalcino was able to have 3 trademarks, which were applied in bad faith, cancelled. The cancellation is remarkable as the bad faith trade mark filings were made in different classes than Brunello di Montalcino, having nothing to do with wine. In this article, China IP SME Helpdesk external expert Mr. Fabio Giacopello from HFG law firm discusses in detail how Brunello di Montalcino was able to obtain a favourable decision from the CNIPA.

The Office of the National Leading Group on Fight against IPR Infringement and Counterfeiting issued a statement to warn IP owners of scammers that try to pass off as workers of the agency asking trade mark owners to “renew their brand registration online, and pay for the renewal.” In reality, the Office would not actively contact trade mark owners and would not require payments of fees. Should SMEs receive this type of e-mails, they should be aware that these this is a scam. Whenever in doubt, contact China IP SME Helpdesk for verification!

In Taiwan, prior-use defence is allowed in some trade mark dispute cases. Recently, Taiwanese IP Courts addressed the question of whether licensees could also be entitled to prior-use defense. Current case law shows that if specific conditions are met, licensees could also benefit from the prior-use defense. Read more to learn about the details of the specific conditions that allow licensees to benefit from prior-use defense.

Over the past 3 years, Chinese IP legislation has evolved to shift the burden of proof form the IP owner to the infringer. The case involving U-blox and Techtotop demonstrates how Chinese Courts apply this principle in a complicated copyright infringement case where the IP owner is not able to provide evidence on how the infringer had access to their source code, but is still able to present some simple evidence of infringement having taken place. This is good news for the SMEs who often struggle with evidence collection.

Good news for the food producers – the Chinese authorities have, for the third year in a row, launched the campaign “Kunlun” to fight sales of fake food and medicine. Food safety and counterfeit food are still an issue in China and this action is welcomed by IP owner and the wider public alike. From April up until now the police have solved over 23 000 cases involving the sale and production of fake food and medicine.