Intellectual property violation in Thailand and the Philippines thriving during Covid-19

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WRITTEN BY XUAN NGUYEN

Due to the social distancing measures imposed during the Covid-19 pandemic, people are massively relying on the internet for both their work and their leisure activities. Online shopping has dominated the market as a result of quarantine and isolation.

The Covid-19 emergency has engendered many challenges for intellectual property (IP) protection thanks to the rocketing increase of counterfeit goods being offered for sale on the internet. This is especially prevalent among products in high demand, such as facemasks, hand sanitisers, antiviral medication, vitamins, pharmaceuticals, foods, beverages, household products, electronics, DIY tools, entertainment technology, etc.

In this article, we present some updated statistics reflecting the alarming rise in IP infringement during the crisis in some South-East Asian countries.

Thailand

According to the latest IP Enforcement Statistics for Thailand, the number of raids and seizures between January and April 2020, compared to the same period in the previous year, has risen acutely (by 31.82% and 1 967.6%, respectively).

Thailand

Philippines

The Intellectual Property Office of the Philippines (IPOPHL) recently published 2019 vs 2020 IP rights violation data showing the dramatic surge in complaints that they received in the first 6 months of 2020 compared to the previous year.

Philippines

Suggestions for protecting your IP during the crisis

  • Proactively monitor e-commerce and social media platforms. As counterfeiters overwhelming use online platforms to sell their products, regularly checking to detect fakes and initiating early interventions will save you a lot of money and time. Online shopping makes payments cashless; this also enables companies to easily track and investigate the sources of fake goods. This is a big advantage when it comes to stamping out counterfeiting.
  • Conduct online trainings and encourage the community to report fakes. Providing trainings to consumers on how to distinguish between authentic products and fake ones, and on where they can buy the real ones, is worthwhile. Companies should also encourage the community to report cases of counterfeiting and make online tools available so people can easily submit complaints.
  • Take-down notices. If you have reliable evidence of counterfeit goods being sold on e-commerce or social media platforms, prepare a take-down notice (with the supporting documents necessary) asking the operators to immediately remove the infringing products.
  • Inform the competent authorities. For larger cases, you can consider to inform the competent authorities to promptly stop the infringement, for example by blocking the importation of the counterfeit goods or by seizing them.
  • Seek advice from local IP experts. It is always advisable to consult local experts with experience in enforcement to be sure you are doing things the right way; in South-East Asia, neither the law nor business practices are the same as in Europe.

 

The South-East Asia IPR SME Helpdesk is an EU initiative that provides free, practical IPR advice to European SMEs in South-East Asia. EU companies can send questions to question@southeastasia-iprhelpdesk.eu and receive a reply within 3 working days.

The Latest Draft Amendments to the Chinese Patent Law

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Written by Paolo Beconcini, IP expert and collaborator of the China IPR SME Helpdesk

 

patent and related words

On July 3, 2020, China released the second draft amendments to the Patent Law. This second draft introduces significant changes to both the current Patent Law and the 2019 draft amendment. It also comes at a time when China is introducing significant legislative and judicial changes to other key IP rights, like new criteria for determination of infringement in administrative proceedings for trademark infringement, and more importantly, draft judicial regulations addressing the long disputed issues of protection of foreign trade secrets and the implementation of the commitment China recently assumed in this regard by signing the US-China Economic and Trade Agreement of January 15, 2020, also referred to as the Phase I Agreement. It remains to be seen whether all these amendments will go in the direction auspicated by the US and the EU, or whether and to what extent they may be the expression of China’s new protectionist policies and retaliation against alleged hostile foreign policies.

In the present blog we will review some of the major changes in the second draft amendment to the Patent Law and assess their likely impact on foreign businesses in China.

I.   Design Patents

Article 42.1 of the draft amendments extends the duration of a design patent to 15 years from its application date. Designs are registered patents that protect the aesthetic value of a product, where the design is original and adds commercial value to the product. The final approval of this provision would allow right holders to enjoy exclusivity for a longer period, increasing the right’s value and reducing the cost and risk of having to file for surrogate IP, such as copyright and 3D marks, to try prolonging the life of the design creation. Such surrogates have proven to be only partially successful in replacing design patents, especially when enforced in place of a design.

The current version of the Patent law generally does not allow protection of portions of a design. Right now, the only partial designs that can be protected are those parts of a product that can be used and sold separately from the main product. This means that only spare and replacement parts can theoretically be protected as design patents. In all other cases, the law only allows the applicant to include portions of its design that have a particular aesthetic value of their own by describing them in the verbal descriptive portion of the application. In particular, the current Patent Law excludes the patentability of portions of complete products using dotted lines.

The second draft amendments would eliminate these limitations and hindrances by introducing the patentability of partial designs. If the amendment is approved, all partial designs with no restriction will be eligible for patentability. The downside of this, especially considering the typical Chinese landscape and the fact that there is no substantive examination of design patent applications, will likely be the unchecked proliferation of junk designs . This will force legitimate rights’ holders to increase their budget for house cleaning, to reduce the risk of theft and trolling litigation.

II.   Patent Linkage

The proposed Patent Linkage provision provides that a patentee or interested party can initiate infringement proceedings (judicial or administrative) against a party who is seeking marketing authorization for a drug that falls within the scope of a patent recorded in the “Chinese Marketed Drug Patent Information Record Platform.” To utilize the proposed patent linkage provision, the patentee or the interested party will have to file civil or administrative proceedings before a People’s Court or the China National Intellectual Property Administration (“CNIPA”) within 30 days of the marketing authorization application being published by the competent drug administration. If the deadline passes without the patentee or interested party having filed a lawsuit, the party seeking the marketing authorization can file a legal action with a People’s Court or with the CNIPA to obtain a declaration of non-infringement.

The provision leaves a lot of critical points unclear and uncertain. First of all, it is not clear what the “Chinese Marketed Drug Patent Information Record Platform” is. Is it an already existing official database, like the Orange Book of the National Medical Products Administration, or a completely new repository or database? This will surely affect the type of patents registered therein and therefore the possibility for a patentee to qualify or not for patent linkage. Second, the jurisdiction of the courts is uncertain. The draft does not provide any indication of which court will have jurisdiction over the lawsuit and/or the declaratory action. Is it going to be that of the domicile of the patentee? That would contravene the general principles of the locus commissi delicti normally applied to patents. Also, it is not clear whether the pending of proceedings filed by the patentee will stay the market authorization process. Regarding the latter, the lack of express regulations may speak in favor of the market authorization not being immediately affected by the pending of linkage proceedings. However, a formal clarification would be welcome. Last but not least, there is no definition of “interested party”, although by analogy, we could safely surmise that this only includes the exclusive licensee.

One thing is certain —clarifications to the application of this new provision will be needed. Hopefully, they will be contained in a new set of amended implementing regulations to the Patent Law.

III.   Patent Terms Extension

By signature of the US-China Phase I Agreement of January 15, 2020, China committed to provide patent term extensions to compensate for unreasonable delays that occur in granting the patent or during pharmaceutical product marketing approval. Article 42.2 of the draft Patent Law provides that, if an invention patent has been granted after four years from the filing date or three years from the request for substantive examination, the patent owner may request compensation for the unreasonable delay in granting the invention patent, except for the unreasonable delay caused by the applicant. This provision seems to implement the corresponding commitment of Section D, article 1.12.2.(a) of the Phase I Agreement. In practice, and in order to fully comply with the agreement, China will have to issue implementing regulations to arrange for a process to determine the exact period of extension of the patent validity.

As to pharmaceutical patents, article 42.3 of the draft amendments provides that the duration of patents of innovative pharmaceuticals for which patent terms was lost during the regulatory approval period, when a drug cannot yet be marketed, will be extended as well. However, the compensation time cannot exceed five years, and the total effective patent term after the new drug is authorised to be on market shall not exceed 14 years. On the surface, this norm seems to comply with the stipulation of article 1.12.2(b) of Phase I Agreement. However, the real scope of such regulation remains uncertain due to the unclear definition of “new drug” and whether it should be limited to one that has been simultaneously applied for authorization in China and other jurisdictions or not. Further normative clarification is needed to understand the effective application and scope of this provision, and whether it indeed complies with the spirit of the corresponding norm of the Phase I Agreement.

IV.   COVID-19 Exemptions to Novelty Destroying Disclosures

China’s patent law is very strict when providing exceptions to novelty destroying disclosures (grace period disclosures). Traditionally, a disclosure of the invention without the consent of the right holder is exempted only if it occurred within six months from the date of filing. Any voluntary disclosure is always novelty destroying unless related to exhibitions sponsored or recognized by the Chinese government, or published for the first time at a specified academic or technological conference. The second draft adds a third case in which a voluntary disclosure of the invention will not be novelty destroying when occurring within six months prior to the date of filing. This is the case of the invention that is disclosed for the first time for the public interest in time of a national emergency or exceptional circumstances. It seems to be custom made for inventions related to the current emergency situation caused by the worldwide spread of the COVID-19 virus. Aside from the evident emergency caused by an epidemic, it remains to be seen what other situations could be considered as emergency and exceptional circumstances. Would an economic, political or trade crisis unrelated to a public health situation or a war, count as such an emergency?

V.   Enforcement and Damages

In China it is often difficult to provide evidence to support a specific claim for damage compensation in a patent enforcement action. The absence of discovery, the difficulty of convincing a judge to conduct further investigations on accounting records and other relevant documents of the defendant, and the illicit bookkeeping practices of many Chinese firms, make it very difficult to obtain evidence that meets the strict probatory standards and supports realistic damage compensation claims. For this reason, and as a palliative in most cases, the law left it to the discretion of the judges to determine the amount of reasonable damages. These are the so called statutory damages set forth by the Patent Law.

The problem, aside from the inevitable discretion of the judge, is that these damages were capped in a range going from a minimum of RMB10,000 (USD1,450) to RMB 1,000,000 (about USD145,000). These caps are far from adequate, especially when we consider that litigation involving foreign patentees in China is rare compared to litigation among local parties, and is normally filed in severe kinds of infringements. The first draft of the patent law amendment realized such shortcoming and proposed an increase of the range to RMB100,000-RMB5,000,000. This was surely an improvement. However, the second reading of the draft amendments now under scrutiny, has changed this again, setting only an upper ceiling of RMB5,000,000 and eliminating the minimum amount. To this problem we add that the statutory damage received is effectively reduced by any reasonable expense that the patentee has incurred in order to stop the infringing act! This is definitely a serious problem, especially when the patentee/plaintiff is not able to collect evidence on its own to eliminate his reliance on statutory damages.

In this respect, the draft seems to help right holders to reach the required evidence threshold by introducing some key presumptions regarding evidence of illicit profit of the defendant. The new draft amendment provides now that, in order to determine the amount for compensation, where the right holder has endeavored to present evidence and the related account books or materials are mainly in control by the accused infringer, the People’s Court may order the defendant to provide those books and materials relating to the infringing conduct. If the defendant does not provide or provides false account books or materials, the People’s Court may refer to the right holder’s claims and evidence to rule on the amount of compensation. This norm may seem revolutionary, but a similar one was already introduced in the China Trademark law back in 2014! Also, the courts are generally willing to grant evidence preservation requests, even when litigation is ongoing, to preserve such books as evidence. Considering also how often the Chinese counterpart will try to provide only part of the required books or even disclose forged ones, we can see that the introduction of this provision in the draft amendment will not be a game-changer.

For these reasons, when a foreign patentee decides to litigate in China, it has to invest large resources in the pre-lawsuit investigations and evidence collection. This will be the most critical phase to ensure a successful outcome of a patent lawsuit.

VI.   Conclusion

It is likely that this second reading will be adopted into a new law amending the current Patent Law by the end of this year or the beginning of 2021. While the draft adds useful improvements, the real impact of some of the major changes is still unclear and will need additional implementing legislation. This is nothing new. Chinese general laws, like the Patent Law, are always drafted in very general terms, leaving more detailed regulations to a sub-set of rules and court interpretations. The main takeaway for now is that China IP is massively on the move and the ongoing changes are the reflection of external political and economic events. On one hand, changes are dictated by China’s desire to keep up with its long term policies of modernization its IP law system, initiated back in 2001 upon access to the WTO and the related TRIPS Agreement. On the other hand, critical changes are now dictated by China’s own policies, like Made in China 2025, or by mounting external pressure like the trade war. Whether all this will make it easier and better for foreigners to protect their IP in China remains to be seen.

This article was originally published on the website of the law firm Squire Patton Boggs

Where alcohol meets IP: how Martell won in China

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Written by Reinout van Malenstein, IP expert and collaborator of the China IPR SME Helpdesk

 

cognac_website

Real names on fake products. China has often faced this problem in the past thirty years, also in the spirits industry. Fake bottles with Martell, Johnny Walker and other known names could be found in shops and in entertainment venues around the country.

After China became a member to the WTO and become more serious about IP protection, slowly the cases where infringing copycats used the real names became lower. It became clearer to infringers that such copying would mean trademark infringement as most companies would register the name of their product and the name of their company as a trademark in China.

Continue reading “Where alcohol meets IP: how Martell won in China” »

Cybersquatting in South-East Asia: What’s happening now?

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WRITTEN BY XUAN NGUYEN

 

Facts and trends

In 2005, when eBay Inc. started promoting their services online in Vietnam, they found that the domain name ebay.com.vn had already been registered by a Vietnamese company in 2003. Between 2005 and 2007 the company, with help of a team of local lawyers, filed three complaints to the Vietnam Internet Network Information Center (VNNIC) asking for the domain name ebay.com.vn to be canceled as it was an infringement of their trade mark. The ‘eBay’ trade mark was registered in Vietnam in 2002. In 2007 eBay’s regional director in South-East Asia became directly involved in pursuing the complaint to try to settle the case. Despite all these efforts, the disputed domain name is still owned by the Vietnamese company[1].

Photo source: https://pixabay.com/

Photo source: https://pixabay.com/

This is not the only case like this, in 2014 a Korean individual registered the domain name instagram.com.ph and two years later she also registered the domain name instagram.ph. These domain names led to pages displaying links to other websites, including ‘Log In Instagram’ and ‘Create Instagram’ or ‘Create an Instagram Account’ and ‘Free Download Instagram APP’. The domain name instagram.com.ph was previously offered for sale on a broker’s website for USD 5 000 while the disputed domain name instagram.ph was displayed on another broker’s website with the message ‘This domain is for sale’ and a system was provided for submitting an offer. Instagram, LLC decided to file a complaint with the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO) in 2018 and two months later the Administrative Panel assigned the domain names to Instagram[2].

According to a new press release from Business Insider[3], ‘South-East Asian countries outdo most other emerging market regions in the 11th annual Agility Emerging Markets Logistics Index, a broad gauge of competitiveness based on logistics strength and business fundamentals. Business-friendly conditions and core strengths position several South-East Asian countries near the top of the Index, behind giants China (1) and India (2).’ Meanwhile, cybersquatting (also known as domain squatting) has become a critical concern for many companies doing business in this region.

Photo source: https://pixabay.com

Photo source: https://pixabay.com

While setting up businesses in the region, many companies realise that their names or trade marks, in combination with country code top-level domain (ccTLD) suffixes (such as .vn, .id, .th, .sg, etc.), have been previously registered by third parties (cybersquatters).

Cybersquatters often purchase domain names in the hope of selling them to the trade mark owners at an inflated price. The cybersquatters also use the domain names to sell counterfeit products or direct users to their own websites (often but not always containing some sort of illicit content, from pornography to gambling, etc.). Reclaiming the disputed domain name is not always easy, it is a time- and money- consuming process. There are also cases when it isn’t possible to get your domain name back (for example the case of ebay.com.vn in Vietnam).

According to the Domain Name Dispute Statistics from the WIPO, Vietnam (393 cases), Indonesia (263 cases), Thailand (244 cases), Singapore (153 cases), Malaysia (149 cases) and the Philippines (120 cases) are the countries where there are high numbers of respondents involving domain name disputes in the South-East Asian region[4].

Moreover, the COVID-19 pandemic appears to have fueled an increase in cybercrime. ‘As much of the world has been working from home, businesses and consumers are relying heavily on the Internet and related IT resources — whether to engage in their “day jobs”, to shop online, or to inform themselves on staying safe in the current pandemic. Many domain name registration authorities have even reported an increase in the number of domain names registered. These may be used for news/information sites, or even to provide new business offerings, but much like social media platforms, are also being used to spread misinformation and to engage in illegal and fraudulent activities[5].’

How do I protect my domain name from cybersquatting?

Here are some tips for companies to safeguard themselves against cybersquatting while doing business in South-East Asia:

  • Register your domain names in potential future markets. As domain names are assigned based on a ‘first come, first served’ basis (the first-to-file rule), invest some money in registering your domain name at an early stage to reserve your right to it. This is much cheaper than the litigation option.
  • Register your trade mark in potential future markets. Cybersquatting generally involves the bad faith registration of another’s trade mark as a domain name. Therefore, having your trade mark registered in a country is an essential step enabling you to proceed with a request for the cancelation of a disputed domain name.
  • Online monitoring to detect cybersquatting. You should proactively conduct online monitoring activities or hire service companies with expertise in the field. In fact, sometimes cybersquatters are interested in attracting people to their (illicit) businesses by riding on your reputation. This can be detrimental to the image of your company and, on a general level, makes it harder for people to find you on the web. Some things you should check regularly are:

    Photo source: https://pixabay.com

    Photo source: https://pixabay.com

Variations of your domain name. Variations may consist of adding a hyphen if the domain is made up of more than one word, for example race-horsing.com vs racehorsing.com or using the singular and plural versions of your domain, such as product.com vs products.com. Typosquatting (involving mistypes or misspellings of your domain name) is also a popular form of cybersquatting. For example, the disputed domain name ercisson.net registered with Above.com is virtually similar to ‘ericsson’ mark of the Ericsson company (the letters ‘i’ and ‘c’ are reversed)[6].

Combination of additional words. The cybersquatter may combine your trade mark or service mark with relevant products or services in either English or a local language. For example, a Guangdong-based company registered ‘googlelocal.cn’ and ‘googlelocal.com.cn’ in March 2004[7], and a Vietnamese individual registered the domain name quangcaogoogle.com (‘quang cao’ is a Vietnamese phrase meaning ‘advertising’)[8].

More than one extension. There are some common versions of generic top-level domains (gTLDs) such as .com, .net, and .biz, etc. In South-East Asia, popular ccTLDs in some countries are .vn and .com.vn (for Vietnam), .co.th and .net.th (for Thailand), .sg and .com.sg (for Singapore), and .id and .co.id (for Indonesia), etc. Check all possible extensions of your domain name and do not neglect any of them.

What do I do if my domain name is taken?

In the Uniform Domain Name Dispute Resolution Policy (UDRP[9]) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), the basic requirements for requesting a cancellation or transfer of a domain name are:

  1. The domain name is identical or confusingly similar to a trade mark or service mark for which someone holds the rights;
  2. The other party have no rights or legitimate interests in the domain name;
  3. The domain name has been registered and is being used in bad faith.

Many dispute resolution agencies use these principles as a rule of thumb to settle domain disputes. In light of the above, if you find out that someone has registered a domain name to reap benefits from your reputation, you can consider taking the following steps:

  • Collect evidence of the bad faith registration and use. As a general rule, firstly check to see if the domain name takes you to a website (sometimes no website is found). If there is a real site, these questions arise:

– Is there any offer pertaining to reselling, renting, or transferring the domain name?

– Does the website offer any products or services similar or identical to yours for sale?

– Are there any links to other sites?

Remember to save all of the evidence that you find at the investigation stage because the registrant may change any of the content displayed at any time, especially if they notice that a potential dispute is in the offing.

  • Contact the domain-name registrant and start a discussion. Before jumping to any conclusions, contact the registrant to find out if there is any reasonable explanation for the use of the domain name or if there is a way to reach an agreement with them to obtain the transfer of the domain name.
  • Bringing the dispute to arbitration. If negotiation or conciliation with the registrant doesn’t work out, you can proceed with arbitration for the cases detailed below.

Regarding gTLDs such as .com, .asia, .biz, .info, .net, .org, etc., complaints can be submitted to any of the dispute resolution service providers approved by ICANN under the UDRP proceedings. The WIPO Arbitration and Mediation Center is considered as one of the most time- and cost-efficient mechanisms for resolving internet domain name disputes.

In addition to the above, the WIPO Arbitration and Mediation Center currently also provides domain name dispute resolution services for 76 ccTLDs (including two ASEAN members, Laos and the Philippines). In other words, if there is a dispute related to ccTLDs in Laos or the Philippines, the claim can be brought before an arbitration process initiated by the WIPO.

For Singapore, ccTLDs claims can be submitted to the Singapore Mediation Centre, which uses the Singapore Domain Name Dispute Resolution Policy to settle the case. In Malaysia, the complaint can be brought to the Asian International Arbitration Centre, the dispute resolution provider authorised by the Malaysian Network Information Centre (MYNIC).

  • Taking action through the administrative route or initiating a civil lawsuit at a court. Not all ASEAN countries offer domain name arbitration (the countries mentioned above are exceptions), therefore the complainant can consider proceeding with an administrative action or file a lawsuit with the competent court. If you have to use these routes, contacting and getting advice from a local expert is advisable.

 

The South-East Asia IPR SME Helpdesk is an EU initiative that provides free, practical IPR advice to European SMEs in South-East Asia. EU companies can send questions to question@southeastasia-iprhelpdesk.eu and receive a reply within three working days.

[1] https://www.vnnic.vn/tranhchaptenmien/thongke/tranh-ch%E1%BA%A5p-li%C3%AAn-quan-%C4%91%E1%BA%BFn-t%C3%AAn-mi%E1%BB%81n-ebaycomvn

[2] https://www.wipo.int/amc/en/domains/decisions/text/2018/dph2018-0002.html

[3] https://markets.businessinsider.com/news/stocks/southeast-asian-countries-lead-agility-emerging-markets-index-1028888255#

[4] https://www.wipo.int/amc/en/domains/statistics/countries.jsp?party=R

[5] https://www.wipo.int/amc/en/news/2020/cybersquatting_covid19.html

[6] https://www.wipo.int/amc/en/domains/decisions/text/2010/d2010-0566.html

[7] http://www.pin-dao.com/news5.htm

[8] https://www.vnnic.vn/tranhchaptenmien/thongke/google-v%C3%A0-t%C3%AAn-mi%E1%BB%81n-quangcaogooglecom

[9] https://www.icann.org/resources/pages/policy-2012-02-25-en

OVERVIEW ON INTELLECTUAL PROPERTY PROTECTION NOTES IN CHINA DURING THE COVID-19 OUTBREAK

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source: https://gowlingwlg.com/en/insights-resources/articles/2020/ip-protection-notes-in-china-during-covid-19/

COVID-19 has swept across the globe causing massive disruption to businesses everywhere. While the impact of COVID-19 on other parts of the world continues to increase, China’s economic activity is now gradually returning to “business as usual”. This note will give an overview on the measures taken by the Chinese authorities in relation to IP during the period of COVID-19 outbreak in China and will shed light on what businesses should be aware of in terms of IP protection during this unprecedented time.

Time-out Period Mechanism

The P.R.C Tackling Emergency Affairs Law, the P.R.C Patent Law, the P.R.C Trade Mark Law, the P.R.C Regulations on Protection of Layout Design of Integrated Circuits and other relevant regulations have provided for a time-out mechanism to be applied in certain situations to prevent the expiration of statutory time limits due to circumstances outside relevant parties’ control. During the outbreak of COVID-19, the China National Intellectual Property Administration (“CNIPA“) issued the No. 350 Announcement to confirm that where a party had missed a stipulated deadline as a result of delay caused by reasons related to COVID-19, leading to the termination of relevant IP rights, the party could apply for restitution of those rights.

For patent and layout design of integrated circuits (“LDIC“) rights, an affected party can apply for restitution of their rights within 2 months from the date of removal of the obstacle ( e.g. a medical reason or restrictive measures related to COVID-19), or at the latest within 2 years from the date of expiration of the time limit. The application is free but the party must submit together with the application form evidence confirming the COVID-19 related reason for delay.

For trademarks, if a party is unable to progress trademark related matters due to issues related to COVID-19, the relevant time period will be suspended from the date on which the obstacle arose until the date it is removed, unless otherwise provided by law. If the trademark is terminated due to the obstacle, a party can request restitution of the trademark within 2 months from the date of removal of the obstacle or at the latest within 2 years from the date of expiration of the time limit, as with LDIC rights. On 27 March 2020, CNIPA announced that the No. 350 Announcement is applicable to all parties located in other countries and regions who are affected by COVID-19. In other words, foreign parties can benefit from the time-out mechanism as well.

With regards to court procedure, Article 83 of P.R.C Civil Procedural Law provides that if a party fails to meet a deadline due to a force majeure or another justified reason, the party can apply for an extension of the deadline within ten days after the obstacle is removed. The People’s Court shall then decide whether to grant the extension.

Online application for registration and online litigation service

For IP application for the IP rights which can only be obtained via registration, such as patents, trademarks and LDIC, the CNIPA has an existing online application system for registration and has encouraged parties to submit their applications online and submit relevant documents by post rather than in person to reduce physical contact.

For IP litigation, filing cases via the online system or by post has become more common. During the outbreak of COVID-19, such off-site filing is preferred by parties. By way of illustration, it was reported that from 3 February to 28 February 2020, the Beijing IP Court reviewed 207 cases that were filed online and 1506 cases that were filed by post, which constitutes a 15% and 700% increase (respectively) compared to the figures reported for the same period last year.

However, with regards to hearing trials, online hearings are not common in China. However, the Supreme People’s Court issued the No. Fa [2020] 49 Notice Concerning Strengthening and Regulating the Online Litigation Work during the Period of COVID-19 Epidemic Prevention and Control Period (the “No.49 Notice”) to encourage the courts to use digital means where appropriate for proceedings. In particular, it points out that courts should consider the technical requirements of the case, the specific situation and the parties’ willingness to proceed with an online hearing. Where the parties disagree with the method of online hearing or there are circumstances such as certain technical obstacles, where parties’ identities or originals of the documents have to be verified in person, or where alleged infringing products would have to be examined, the hearing would not be conducted online.

Rejection of COVID-19 related trademark with negative influence and green channel of IP rights application and IP rights pledge

Similar to trademark laws in many countries, the P.R.C Trade Mark Law rejects trademark registrations that are adverse to the public interest. During the outbreak of COVID-19, applicants tried to apply for trademarks for “Huo Shen Shan” and/or “Lei Shen Shan”; two hospitals built specially to treat COVID-19 patients in Wuhan city, as well as “Li Wen Liang” a doctor who passed away due to infection of COVID-19.

The China Trademark Office deemed that applications of above-mentioned marks were made in bad faith in relation to COVID-19, contrary to Article 10 (8) of the P.R.C Trade Mark Law[1] and that the applications should therefore be refused. Some of the applicants proactively withdrew their applications of the above-mentioned marks. Furthermore, a number of the trademark agents who represented the applicants for the above-mentioned marks were fined a sum of RMB 100,000 (approx. USD 14,000).

On the other hand, however, it is recognised that applications for certain IP rights that seek to improve the state of affairs during the COVID-19 outbreak deserve preferential treatment. In the document Ten Measures to Support Resumption and Production of Enterprises issued by the State Administration for Market Regulation, National Medical Products Administration and Administration and CNIPA, it is stressed that parties applying for patents and trademarks concerning protection against COVID-19 may apply for prioritised and/or expedited examination.

Advice for dealing with IP protection during the COVID-19

In light of the above-mentioned points, we set out below some preliminary advice in terms of IP protection in China in response to the COVID-19 outbreak.

Firstly, bear in mind that due to the first-to-file IP system in China, parties shall apply for the relevant IP rights as soon as possible. If COVID-19 influences the process of filing, applicants will have to apply the time-out mechanism to secure their rights. Please note that this mechanism is also applicable to foreign parties affected by COVID-19 in their own countries or regions.

Secondly, where applicable, try to use online filing systems and/or postal services. In addition, it is noteworthy that some of China’s courts are willing to explore the possibility of online hearings which is a very new development.

If one is planning to apply for patents or trademarks which genuinely relate to COVID-19, don’t forget to apply for prioritised and/or expedited examination to try to obtain the registered IP rights as quickly as possible.


[1] Article 10 (8) of the P.R.C Trade Mark Law[1] provides that: “[T]he following signs shall not be used as trademarks: … (8) Those detrimental to socialist morality, or having other adverse influences.”