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01 April 2016

China Trademark Office reforms seek to streamline procedures, but more detail is needed

Last week, the China Trademark Office introduced a number of procedural changes aimed at improving the country’s trademark prosecution process. In theory, the reforms should benefit trademark applicants, but local lawyers have told World Trademark Review that further clarification is needed. In particular, the new measures intended to simplify opposition procedures are regarded as too vague.

24 March 2016

"Things are different in China", alleged trademark squatter claims after court win

In January, wine seller Castel Freres SAS lost the latest battle in a decade-long dispute with a Chinese company over the KA SI TE (卡斯特) trademark in China. However, the Supreme People’s Court decision to significantly reduce the damages meant some observers saw it as a win for Castel. In subsequent comments made to World Trademark Review, a representative for Panati emphasised the court’s affirmation that it is the rightful owner of the KA SI TE name.

02 March 2016

India’s IP office to pilot mediation programme in effort to clear opposition backlog

The Trademarks Registry in India is trialling a mediation initiative aimed at reducing pendency, with the test cases including oppositions that have been held up for nearly 20 years. Meanwhile, efforts to improve efficiency in the courts are continuing apace – a ruling last week clarified a key jurisdictional question about which IP cases will be heard by the country’s new commercial divisions at the High Court level.

26 February 2016

Six-month shortage of special paper leaves Chinese trademark applicants without registration certificates

Many enforcement and administrative procedures in China require proof of trademark ownership to initiate. So the fact that China’s trademark office has run out of paper on which to print official trademark certificates has sent local lawyers scrambling for workarounds.

21 January 2016

Foreign companies upbeat about IP enforcement in China; brands seen as biggest competitive advantage

The 2016 China Business Climate Survey Report casts IP rights protection as a bright spot in a business environment that is increasingly fraught for foreign companies. Heightened fears about the overall legal and regulatory environment are nevertheless likely to concern IP counsel focused on the country. With foreign companies saying that their brands give them their single most important edge in China, the stakes couldn’t be higher.

19 January 2016

OEM liability decision protects against bad-faith trademarks, but leaves border protection questions unanswered

The Supreme People’s Court has held that an original equipment manufacturer (OEM) may not be held liable for trademark infringement for exporting products bearing a trademark that is registered outside China, because the trademarks used on such products are not intended to serve as an indication of origin to Chinese consumers and there is thus no likelihood of confusion.

12 January 2016

Trademark Registry official convicted of graft in India, ending five year case

The five-year investigation and prosecution of a former registrar accused of accepting bribes to speed up trademark applications has finally ended with a guilty verdict and a prison sentence. How much has changed in India since the high-profile takedown made waves around the IP world?

04 August 2015

Obscenity or discrimination? Applicant decries rejection of SOAP PICKER mark in Taiwan

In a story which has gained traction in Chinese language media, a homemade soap company has raised an outcry over the fact that the Taiwan Intellectual Property Office (TIPO) has rejected its application for a trademark which translates roughly to ‘soap picker’. TIPO reportedly reached the decision because the proposed mark “refers to gay sex” and was “detrimental to public morals”. However, one commentator argues that the decision is more nuanced.

13 May 2015

DGIPR launches new IP database

The Directorate General of Intellectual Property Rights has launched its new integrated Intellectual Property Data and Information Service System, which includes patent, trademark and industrial design data. Among other things, the database includes registered, renewed, pending, expired, cancelled, deleted, withdrawn and rejected trademarks, collective marks and service marks.

06 May 2015

The curious case of Ikuhiro Ueda, Japan's top filer

It would seem that where China has legions of trademark squatters, Japan may have one very determined individual sweeping up trademarks. In yesterday’s ‘Regional Update: China, Japan and Korea’ session, Nagomi Tsuchida of Hitachi presented a list of the leading trademark applicants over the past three years. And in that time, it seems, the country’s foremost brands – Kao, Sanrio, Shiseido – have been displaced at the top of the table quite decisively by one Ikuhiro Ueda.

15 April 2015

Japan launches non-traditional marks as it looks to the future

The Japan Patent Office has begun accepting applications for a range of non-traditional trademarks, nearly a year after the new options were announced in revisions to the country’s IP laws. The new rights include colours and sounds, as well as position marks, moving marks and holograms. According to the JPO website, the office received 471 applications on the first day of availability, April 1.

09 March 2015

Drastic changes to official fees to be introduced

As a result of a costing exercise, changes have been proposed to the official fees for filing an application, renewing a registration and requesting an official search. The most radical proposed change concerns the fee for requesting an official search, which would be increased by 100% from HK$200 to HK$400 for the first class of goods and services.

06 January 2015

Proposed India IP rights overhaul will require strong political will

India’s IPR Think Tank has made a series of recommendations designed to establish the country as, in the words of its proposed national slogan, ‘Creative India; Innovative India’. Making these plans a reality will require both political momentum and, crucially, significant funding.

08 December 2014

Important updates to IP regime implemented

Following the installation of a new government on September 15 2014, a number of important updates have been made to the country’s IP regime. Among other things, the new director general of the Department of Intellectual Property has put in place a plan to clear the backlog of trademark and patent design applications by the first quarter of 2015. Moreover, two sets of amendments to the Trademark Act are currently under review by the Cabinet.

30 July 2014

MyIPO launches IPR Marketplace Portal

MyIPO has launched the IPR Marketplace Portal, which aims to bring together and connect individuals, investors and businesses for the purpose of commercialising and trading in IP rights. Among other things, the portal enables IP owners to put their patents, industrial designs, copyright and trademarks up for sale or out-licensing.