Guide: How to Enforce Intellectual Property Rights in China
This step-by-step guide sets out the actions to be taken upon discovering an infringement of an intellectual property right (IPR) in the People’s Republic of China (China). The IPRs addressed in this guide include copyright, trademark, patent, and unfair competition (including counterfeiting).
Amendments to China’s Copyright Law
The first substantial amendments to China’s Copyright Law in 20 years were passed in November 2020 and will come into effect on 1 June 2021 (the Amendments). The Amendments primarily focus on enhancing protections for copyright owners, better aligning China’s Copyright Law with international standards, and implementing the Beijing Treaty on Audiovisual Performances that entered into force in April 2020.
The heavy deterrence-related focus of the revised Copyright Law will strengthen protections for copyright owners, particularly relating to digital piracy.Read More
Show me the money: Supreme Court rules that trademark infringers may disgorge profits even if the law was not willfully violated
The U.S. Supreme Court confirmed that brand owners are not required to prove willful intent before obtaining a defendant’s lost profits. On April 23, 2020, the Supreme Court resolved a longstanding circuit split and unanimously held that trademark infringers may have to hand over their profits even if they did not willfully infringe.
In Romag Fasteners, Inc. v. Fossil Group, Inc., the Supreme Court was tasked with determining whether the rule that a plaintiff can win a profit remedy only after showing a defendant willfully infringed its trademark can be reconciled with the statute’s plain language. Ultimately, the Supreme Court sided with the plaintiffs, Romag Fasteners (Romag), holding that:
“[a] plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.”
New USPTO Requirement: U.S. Licensed Attorney Representation for Foreign Trademark Applications and Registrations
On Tuesday July 2, 2019, the United States Patent and Trademark Office (USPTO) issued new Rules and Regulations under Title 37 of the Code of Federal Regulations (CFR) Parts 2, 7, and 11. They take effect on Saturday August 3, 2019.
The impact of the rule, as implemented, is a new requirement for a licensed U.S. attorney to serve as counsel for applicants, registrants, or parties to a trademark proceeding whose domicile is not located within the United States (i.e. foreign applicants, registrants, or parties). Previously, a substantial number of such trademark applications had been filed without a U.S. attorney by applicants domiciled in other jurisdictions.Read More
Proceeding on a submission of a graphic trademark – ruling of the European General Court (Anta (China) vs. EUIPO)
The EU General Court upheld a decision by the EUIPO Board of Appeal in the case of Anta (China) vs. EUIPO, in accordance with which a graphic mark consisting of two lines forming an acute angle, submitted in respect of various goods from classes 18, 25, and 28, does not possess distinctiveness (case No. T-291/16 of 5 April 2017). In this context, it is worth paying some attention to the conditions concerning distinctiveness for a trademark that is purely graphic in form (i.e., that has no verbal component whatsoever), in particular in respect of goods such as footwear and clothing.
Overseas manufacturers supplying goods for ultimate sale in Australia liable for trade mark infringement under Australian law
By Gregory Pieris and Allison Wallace
Playgro Pty Ltd v Playgo Art and Craft Manufactory Limited  FCA 280
Manufacturers selling products into Australia be warned: the fact you are located outside of Australia will not protect you from infringing Australian trade marks. This was the message the Federal Court handed down in the recent decision of Playgro Pty Ltd v Playgo Art and Craft Manufactory Limited  FCA 280.
Playgo was a Chinese manufacturer of children’s toys sold for many years under the “PLAYGO” trade mark. Playgo agreed to supply its toys to a number of well-known Australian retailers, who then imported the products into Australia and sold them in stores across the country. Australian company Playgro commenced proceedings against Playgo, arguing that it infringed various Australian registered trade marks for “PLAYGRO”.