On 1 May 2018, the “Information Security Technology – Personal Information Security Specification” (PI-Specification) by China’s National Information Security Standardization Technical Committee (NISSTC) will come into effect. The PI-Specification, inter alia, provides guidance on the collection, storage, use, transfer and disclosure of personal information. While the PI Specification is voluntary and not legally binding, it is likely that Chinese regulators will take into account breaches of the PI Specification when enforcing cybersecurity obligations.

The requirements for the collection, use, and storage of personal information are briefly outlined below. Continue Reading China Issues New Standards on Personal Information Security

On 24 April 2017, the Beijing Intellectual Property Court (“ the Court”) published 18 classic cases concerning trademarks filed in bad faith. One of these cases dealt with a invalidation action filed by Tiffany and company (“Tiffany”), the luxury jeweler.

Tiffany prevailed in the invalidation action brought in 2013 against Chinese trademark registration no. 8009772 for “蒂 凡尼” (pronounced as “Di Fan Ni” in Mandarin) on wallpaper, carpets etc. in Class 27 in the name of Shanghai Zhendi Decoration Materials Co., Ltd. (“Shanghai Zhendi”). After the Trademark Review and Adjudication Board (“TRAB”) rejected the registration, Shanghai Zhendi appealed to the Beijing IP Court. Continue Reading Beijing IP Court Rules in Favour of Tiffany Against “Diffany”

Michael Jordan, the legendary NBA star, has finally established his rights in his Chinese name after 5 years of intensive administrative and appeal proceedings in China.
In China, Michael Jordan is more commonly known and addressed by the Chinese name “乔丹” (pronounced as “Qiao Dan” in Mandarin) which resembles the pronunciation of his last name “Jordan”. The present case is another typical example of a foreign brand owner’s name being hijacked by a local Chinese entity. The hijacker used both “乔丹” and “QIAODAN” as trademarks on shirts, sport shoes and apparel manufactured and sold in China since 2000. Michael Jordan had a long and hard fight to get his name back. He is now half way through recovering his Chinese name “乔丹” trademark, whilst the transliteration of his Chinese name “QIAODAN” is still in the hands of third parties. Continue Reading Michael Jordan: “Qiao Dan” is Me! Michael Jordan’s trademark fight in China over his Name Rights

On 7 November 2016, the Standing Committee of the National People’s Congress has formally passed China’s first comprehensive privacy and security regulation for cyberspace. Since the new Cyber Security Law (CSL) will come into effect on 1 June 2017, technology companies that are operating in or planning to expand to the Peoples Republic of China (PRC) are well advised to adapt their IT infrastructure and data architecture to the new law. Violations of the law may, at worst, lead to high fines, website shutdowns or license revocations. Some of the most significant changes brought about by the new law are briefly outlined below. Continue Reading China Adopts New Law on Cybersecurity

busy Street scene with neon signs in Hong KongIntellectual Property (“IP”) rights are only as strong as the means to enforce them. Arbitration, as a private and confidential procedure, is increasingly being used to resolve disputes involving IP rights, especially when the dispute is between parties located in different jurisdictions. With the introduction of the Arbitration (Amendment) Bill 2016 (“Bill”), the Hong Kong government hopes this will give it an edge over competing arbitral seats in the region. The main effect of the Bill would be that enforcement of an award under Part 10 of the Ordinance would not be refused in Hong Kong under either the arbitrability ground or the public policy ground merely because the award involved IP rights.

The Scope of the Bill

The Bill has been in the pipeline for almost two years. It sets out a broad definition of IP rights to include, inter alia, rights to confidential information, trade secrets or know-how, rights to protect goodwill by way of passing off or similar actions against unfair competition. The bill clarifies that all disputes relating to the subsistence, scope, validity, ownership as well as infringement of IP rights are arbitrable. This includes the right to put the validity of a patent in issue in arbitral proceedings. The Bill includes a provision clarifying that an award relating to IP rights does not cover a licensee (whether or not an exclusive licensee) who is not a party to the arbitral proceedings. A licensee is, however, not prohibited from commencing arbitration proceedings without the owner of the IP being a party to the proceedings

All of the major arbitration centers, such as the International Court of Arbitration, the London Court of International Arbitration and World Intellectual Property Organization (WIPO) Arbitration and Mediation Center have adapted their arbitration rules to better suit IP disputes. As a result, the number of IP cases being heard by these centres continues to rise.

Conclusion

The international arbitration of IP disputes is on the rise, although it is still not as widely used to resolve disputes compared to other sectors (e.g., construction, energy and oil and gas). Hopefully the introduction of the Bill will reinforce the use of arbitration as a means to resolve IP disputes, as well as help consolidate Hong Kong’s position as an IP international dispute resolution centre.

Click here to read the full Mayer Brown JSM Asia IP & TMT: Quarterly Review (2016 Q4).

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

On 12 December 2016, the PRC Ministry of Culture released the Administrative Measures for Business Activities of Online Performances (the “Measures”). The Measures target providers of live performances broadcast or streamed over the Internet or a mobile network (“Streaming Services Providers”) who derive a profit from such activities through advertising, sponsorship or by charging for access. The Measures will come into effect on 1 January 2017. Continue Reading China Tightens Control Over its Growing Online Streaming Industry by Introducing New Regulations

On 2 December 2016, President Obama issued an administrative order to prohibit the proposed acquisition of a controlling interest in Aixtron SE (Aixtron) by Grand Chip Investment GmbH (GCI), a German company partially owned by Fuijan Grand Chip Investment Fund LP, a Chinese partnership with some Chinese government ownership. It was only the third time in history that a US president has formally blocked a proposed foreign acquisition of a US business due to national security concerns identified during the review process by the Committee on Foreign Investment in the United States (CFIUS). Continue Reading US President Blocks Proposed Chinese Acquisition of German Semiconductor Company on National Security Grounds

On 12 August 2016, the Cyberspace Administration of China (“CAC”), the General Administration of Quality Supervision, the Inspection and Quarantine of China (“GAQSIQ”), and the Standardisation Administration of China (“SAC”) jointly released Several Guidelines to Strengthen National Cybersecurity Standardisation (the “Guidelines”). Under the Guidelines, mandatory national standards will be introduced to regulate critical fields such as major information technology infrastructure and classified networks in an effort to harmonise the current divergent local practice. Continue Reading China Releases Guidelines to Strengthen Cybersecurity Standardisation

On 29 September 2007, a PRC entity, Xintong Tiandi Technology (Beijing) Company Limited (“Xintong”), filed a trademark application for the word “IPHONE” in class 18 (“Opposed Mark”) with the PRC Trade Marks Office (“TMO”). The goods covered by the application are a range of leather goods, wallets and cases under sub-classes 1801 and 1802. On 26 April 2010, Apple Inc. (“Apple”) filed an opposition against the Opposed Mark. It should be noted, however, that Apple does not have any China trademark applications or registrations for the word “IPHONE” in class 18 that pre-date the filing date of the Opposed Mark. Continue Reading Apple Loses China Trademark Case Over the Use of the Word “IPHONE” on Leather Goods

In a recent decision, the Supreme People’s Court of China ruled that the use of a trademarked sign on goods manufactured in China solely for export purposes does not constitute “use” of a trademark. Consequently, such use could not be considered an infringement of a trademark registered in China. Continue Reading Supreme People’s Court: Goods Manufactured in China for Export Do Not Infringe Chinese Trademarks