The Associated Press – Recent Trump win on China trademark raises ethics questions
"Particularly something of this scale, where there are international repercussions for a given decision, it would be hard to imagine that the judges, the Trademark Office and/or the Trademark Review and Adjudication Board were acting without some kind of guidance," said Dan Plane, a director at Simone IP Services, a Hong Kong intellectual property consultancy.
SIPS, a Hong Kong-based IP consultancy focused on Greater China, is pleased to announce that Yu Bo has joined the company as a partner effective February 1, 2017.
He joins SIPS from Baker McKenzie in Hong Kong.
Yu Bo has extensive experience in both enforcement and prosecution of trademarks, as well as other types of IP rights.
Director Dan Plane, says: “We are really thrilled about this addition to SIPS’ leadership team and look forward to working alongside Yu Bo.”
Yu Bo is from Qingdao and obtained his law degree from Qingdao University and an LLM from Benjamin Cardozo School of Law in New York.
Managing Intellectual Property (MIP) has again recognized SIPS as a "Tier One" foreign firm for China trademark services. Our Hong Kong trademark prosecution practice was also recognized as "Tier Three". (link)
Financial Times – Australia’s Treasury Wine in China trademark victory
Court revokes mark registered to individual using Chinese name of its premium Penfolds brand
Although the company needs to obtain a new trademark before securing its exclusive use, Treasury’s application for Ben Fu is next in line for approval, said Dan Plane, a Hong Kong-based lawyer who has worked on the case. “Li had registered the mark and had not used it,” Mr Plane added, in contrast with Castel’s Chinese registrar who had sold wines using the trademark.
Reuters – Exclusive: Chinese education giant helps its students game the system
Joseph Simone, a China intellectual property rights specialist in Hong Kong, said if standardized test owners “are able to generate clear evidence of willful infringement” of copyright, they could file criminal complaints against New Oriental.
South China Morning Post – Hong Kong tolerates copy cheats because people don't appreciate what we do, designers complain
Applying for trademarks and copyrights is a cumbersome and lengthy process, according to designers. However, those in the intellectual property industry contradict that belief and stress that it’s better to be safe than sorry, as any future litigation can be extremely costly.
“More often than not, [designers] are too focused on the business development side and never think this is that important,” Helen Tang, director of Simone Intellectual Property Services Asia, said. “In the end, when they get into trouble it’s a lot more costly and it’s also valuable time being diverted from time that they should be spending on the business side.”
Tang said it took six to eight months to have a trademark registered in Hong Kong and costs a few thousand dollars. On mainland China, registration can take 12 to 18 months.
Bloomberg BNA – Changes to China’s TM Opposition Law Bring Higher Costs
Joe Simone, founder of Simone IP Services in Hong Kong, told Bloomberg BNA that the TWG's overall numbers are generally consistent with his experiences, though parties can spend less than the TWG estimates by adopting different tactics and, perhaps, employing smaller firms.
“The costs depend on who you use and how you handle cases, and whether you send investigators to each pirate,” he said. “If you do, you will be not only building your registry case but determining whether the pirate is using the mark – thus helping to build an infringement case.”
Reuters – Foreign Business Fears Further Curbs with China's Online Rules
‘While the regulations are meant to codify policies and practices adopted for the Internet era, "there is a small possibility the new rules were issued with an eye toward unwinding existing deals", said Scott Livingston, a senior associate with SIPS, an IP and IT consultancy based in Hong Kong.’
Quartz – Beijing Is Banning All Foreign Media from Publishing Online In China
‘Scott Livingston, a Hong Kong-based lawyer specializing in Chinese technology law, disagrees. “SARFT has many duties, but with respect to the internet its main task is to regulate online audio and video content, which includes administering the ‘License for Publication of Audio-Visual Programs Through Information Networks,'” (link in Chinese) he said. MIIT, the regulation’s other drafter, “is the nation’s principal internet regulator and the primary body responsible for licensing and registering Chinese websites.”’
World Trademark Review – China to Incorporate IP Violations into “Social Credit” System for Enterprises
‘That leaves plenty of questions, notes Joe Simone of Simone IP Services in Hong Kong: “The new proposal sounds nice. But defining ‘intentional’ raises interpretational issues. What standards will be used to determine if a party is acting intentionally?” Other open questions include whether the records will extend beyond counterfeiting to include other trademark and patent infringement and criminal as well as administrative penalties.
According to a research note from Simone IP Services, some local AICs, including Beijing’s, already have searchable databases for registered companies showing past administrative penalties issued by AICs, IP administrative bodies, tax authorities and others. This is helpful from a research perspective, but we don’t yet know how the history of penalties might play into the more traditional credit reporting function of the system – in other words, could a history of counterfeiting activity make it more difficult for a company to get a loan?
In Simone’s view, “Any kind of database that includes information on infringers is useful on a few levels. Most importantly, it helps us to identify repeat offenders, and as a result we can then decide to spend more resources investigating if we think they are still up to no good. And the existence of a system like this can of course help to generate deterrence. But just how much remains to be seen.”’
The New York Times – China Passes Antiterrorism Law That Critics Fear May Overreach
"These companies have been dealing with this increased, let’s call it oversight, for the last two or three years,” said Scott D. Livingston, a lawyer who works for Simone IP Services, a consulting firm in Hong Kong, and who has followed the discussions over the law. With the antiterrorism law, Mr. Livingston said, “from the government’s perspective, you have a stronger basis to request this access.”
ABC Online – Farmer Brown’s Dairy Company – Australian Dairy and Wine Brands Targeted by Chinese Trademark Squatter
“Ms Best was fortunate to discover the trademark claim within the three-month opposition phase and has challenged the lodgement.
Her Hong Kong-based lawyer, Dan Plane, said China's first-to-file laws made trademark squatting a common practice.
"There are pirates out there who will literally stockpile hundreds of trademarks," he said.
"It's not overly expensive and then they just sit back and wait for the owner of the mark to come forward and hope for a return on their investment."’
Huffington Post Australia – Farmer Brown’s Dairy Company – Aussie Startup Farmer Brown's Dairy Company Had Its Logo Stolen in China, And Milk Is Being Sold
‘Best's lawyer Dan Plane of Simone IP Services in Hong Kong said logo piracy was incredibly common in China. "It happens all the time in China, and the goal of the Chinese pirate is usually two fold -- they might want to hold the trademark, and in effect, hold a foreign brand hostage and force them to buy the mark back.
"Or they'll basically be trying to set themselves up as a partner. They'll say 'we've already got the trademark, let us distribute your product'."
Plane said Chinese people were keen to get their hands on Australian milk after a history of local milk poisoning and contamination.
"Australian dairy products and milk powders are really seen as the safest, healthiest option," Plane told HuffPost.
"You will literally cross the border here into Hong Kong and there are signs prohibiting people form carrying more than a certain amount of milk powder. "Mainland Chinese people go to Hong Kong to buy up as much Australian milk powder as they can and then they take it over the border in small amounts." Plane said for that reason, Chinese companies were keen to pirate or copy Australian dairy products as well as other products. "It's not just dairy -- wine too," Plane said.
"We do have a reputation globally and particularly in China for having clean air, blue skies, incredible agriculture products beautiful landscapes and particularly moving into the food space, Chinese consumers have had issues over the last 10 years food safety part in relation to food products for safety."
The Wall Street Journal – Gucci Inc. – In the Fight Against Counterfeits, Even the Raids Can Be Fake
‘Corrupt investigators may also gin up their own business by asking factories to make fakes, and then charging brands to arrange for the products to be seized, according to Dan Plane, a director at Hong Kong-based consultancy Simone IP Services, who says he has supervised thousands of raids of counterfeits for major brands in Asia, Europe, the Middle East and Africa.’
The State Council recently issued a draft of the first-ever revision to the PRC’s Anti-Unfair Competition Law, which governs the protection of trade dress, unregistered trademarks and trade secrets, among other things.
See our article in the March edition of Managing Intellectual Property here.
China’s Ministry of Industry and Information Technology (MIIT) has recently issued a draft regulation - the Internet Domain Name Management Rules (Draft for Public Comment) – that has attracted intense controversy in the media over whether the draft rules would block all access to foreign-registered domain names from within China. We believe these reports are in error.
In our view, this initial misunderstanding (later corrected) was due to the use of the term “network access” found in the draft rules. That term appears to have been interpreted as meaning “accessible in China,” whereas our view is that it is only meant to refer to websites that are “hosted or registered in China.”
Article 37 reads in relevant part: "for domain names engaging in network access within the borders, but which are not managed by domestic domain name registration service bodies, Internet access service providers may not provide network access services."
Under current law, all websites that are based in China must be registered with MIIT. We believe the draft regulation would simply require that these websites register their domain names through a local domain name services provider rather than an overseas one (such as GoDaddy.com).
The alternative reading – that this regulation is meant to require all websites accessible in China to be hosted/registered in China – is unlikely, as it would represent a major policy shift; one likely to come from a higher-level body (i.e., the State Council or National People’s Congress) and not announced, as here, through a lower-level ministerial regulation.
One area that remains unclear is how this regulation will affect Chinese-language websites targeting PRC audiences. For instance, a website set-up and hosted by a foreign company overseas, unregistered with MIIT but still targeting Chinese consumers. As data localization is an increasing trend in China, it is conceivable that the draft regulations will seek to bring these websites under formal supervision by the Chinese government by requiring their registration and hosting in China - perhaps with the imposition of local partner requirements for content supervision. But for now this remains to be seen.
The draft regulation is open for public comment until April 25, 2015. Following this period, we expect the revised regulation to be officially promulgated within the next 9-12 months.
Managing Intellectual Property (MIP) has recognized SIPS as a "Tier One" foreign firm for China trademark services. Our Hong Kong trademark prosecution practice was also recognized as "Tier Three". (link)
In addition, World Trademark Review 1000 has accorded SIPS "Silver" status in its annual ranking of the world's top IP firms. (link)
SIPS was also recognized as "Best in IP Portfolio Management -- China" in the Acquisition International 2015 Legal Awards in recognition of the firm's excellence service in intellectual property law.