Recently, the China National Intellectual Property Administration (CNIPA) announced adjustments to some patent fee standards and payment reduction policies, and the announcement reads as follows:

I. When a patentee files a request for patent term compensation, payment of a patent term compensation request fee is required, which is set at 200 yuan per case. If the request for patent term compensation meets the term compensation conditions after review, the patentee shall pay the annual fee for the patent term compensation, which is set at 8,000 yuan per case per year. No fee will be charged for periods of less than a year.

II. During the implementation period of open-licensing for patents, the annual maintenance fee for the patent will be reduced by 15 percent. If other patent fee reduction policies also apply, the patentee may choose the most favorable policy but cannot benefit from multiple reductions simultaneously.

III. For international design applications entering China through the Hague Agreement Concerning the International Registrations of Industrial Designs, the fees paid for the first and second phases of designations may be reduced in accordance with the relevant provisions of the Ministry of Finance of the People's Republic of China.

IV. If the name or title of the applicant (or the patentee) is changed through the batch requests of change of bibliographic data, and no transfer of rights is involved, the fee shall be paid for one change.

V. International patent applications (PCT applications), received and subjected to international searches by the CNIPA (as the Receiving Office), are exempted from the application fees and additional fees for application when entering the national phase in China. For PCT applications where the CNIPA has issued the international search reports or the international preliminary reports on patentability, the fees for substantive examination shall be exempted when entering the national phase in China and requesting substantive examination. Other fee standards for PCT applications entering the national phase in China shall follow the domestic fee standards.

VI. Fees collected by the CNIPA on behalf of institutions such as the World Intellectual Property Organization (WIPO) and other countries and regions will be charged and reduced in accordance with the agreements between the CNIPA and the above institutions, countries and regions or the relevant international treaties.

(Source: website of the CNIPA)

According to the notice issued by the Macao Economic and Technological Development Bureau (DSEDT) on June 12, 2024, in order to facilitate the patent layout of enterprises in Macao, China, and promote the transformation of scientific and technological achievements, the DSEDT exempts the applicant from the requirement of obtaining documents from the CNIPA in advance when applying for extension of invention registration, thereby simplifying the application procedures for extension of registration.

According to Article 23.4 of the Industrial Property Code approved by Decree-Law No. 97/99/M on December 13, the DSEDT issued a notice stating that starting from July 1, 2024, when an applicant files an application for an extension of a patent for invention with the DSEDT of the Macao SAR, if the applicant declares in the application that DSEDT can use the "description of the patent" and "a copy of the patent register" from the CNIPA as the application materials, it shall be deemed that the relevant documents have been submitted after verification of the DSEDT.

(Source: Unitalen Attorneys at Law)

On the afternoon of July 28, under the joint witness of Premier Li Qiang of the State Council and Italian Prime Minister Giorgia Meloni, the Memorandum of Understanding (MoU) Between the National Intellectual Property Administration of the People's Republic of China and the Ministry of Agriculture, Food Sovereignty and Forestry of the Italian Republic was signed at the Great Hall of the People in Beijing. Shen Changyu, Commissioner of the CNIPA, and Italian Ambassador to China Massimo Ambrosetti signed the MoU on behalf of their respective administrations.

(Source: website of the CNIPA)

Case Brief

The plaintiff, Airwair International Limited (hereinafter referred to as "Airwair" or "the plaintiff"), as the exclusive global authorized licensee of the "Dr. Martens" series of trademarks, including the No. 584207 international registered trademark, is responsible for the design, production, promotion, and sale of the series of products of the brand "Dr. Martens" in China. Since the 1960s, "Dr. Martens" footwear and boots products have been sold in more than 80 countries and regions worldwide, one of the most recognizable footwear trademark brands in the world. Since 2003, "DR. MARTENS" and its products have been advertised and reported by the Chinese newspapers and media. In 2007, the brand "Dr. Martens" entered the Chinese market, with its sales areas covering all over the country. The brand has enjoyed high popularity in China.

The defendant, Hu, the legal representative of a clothing company in Shantou, filed an application in July 2011 and obtained the approval in June 2012 for registration of the No. 9780715 "Dr. mannar" trademark for use on the same goods "clothing; footwear" as the authorized trademark. The defendant, the clothing company in Shantou, sold footwear and boots products on Tmall, Taobao, 1688 and other e-commerce platforms, and used the infringing marks such as "馬丁(Martin)", "馬丁靴(Martin Boots)", "馬丁鞋(Martin Shoes)", "MARTIN", and "Dr. Mannar" on the homepages of the stores, the linked webpages of the goods, the packaging of the shoe boxes, the wrapping paper and other places. Airwair filed a lawsuit with the Shanghai Intellectual Property Court on the grounds that the aforementioned acts of the defendant constituted trademark infringement.

Determination of the Court

Upon trial, the Shanghai Intellectual Property Court held that the plaintiff, by virtue of the authorization, is entitled to conduct sales and promotion concerning the No. G584207 trademark "DR. MARTENS" (hereinafter referred to as "the authorized trademark") in China and to file a civil lawsuit on the basis of the license. The authorized trademark has enjoyed a high reputation in China after a long period of advertisement, use and promotion, and has already become a famous trademark in the goods of "footwear, boots and clothing" on which it is approved for registration. Further, the sued infringing goods also pertain to footwear and boots goods, and because the defendant Hu has registered the No. 9780715 trademark for "Dr. Mannar", it is necessary to obtain the determination of the famous trademark in this case. The sued "Dr. mannar" "Dr. Mannar馬丁靴(Martin Boots)", "", "" and other marks are similar to the plaintiff's authorized trademarks "Dr. Martens", "馬丁(Martin) Dr. MARTENS", "", etc., in terms of the letter composition, pronunciation, and Chinese and English meanings. The clothing company in Shantou used the sued marks on footwear and boots goods and sold them on various online shopping platforms. Such act would easily make the relevant public believe that the goods have the same source or there is a close connection between their sources, and thus may easily confuse the public with source of the goods. In addition, there was no evidence in the case that the term "馬丁靴(Martin Boots)" is a legal or conventionally used common name. On the contrary, various advertisements and reports concerning the authorized trademark can all reflect that the term "馬丁靴(Martin Boots)" corresponds to or is directed to the authorized trademark, which has formed a certain correspondence with the authorized trademark. Therefore, the sued acts constitute an infringement of the authorized trademark.

In the end, the court ruled that the clothing company in Shantou and Hu should cease the infringement immediately and eliminate the influence and that punitive damages should be applied to fully support the litigation request for compensation of 3 million yuan by Airwair. This case is now in its second trial.

Typical Significance

This case is a typical case for a famous trademark to combat malicious registration and infringing acts, which helps deter the malicious infringing acts of "free-riding" in the market.

Case Brief

Headquartered in Holzminden, Germany, Symrise AG (hereinafter referred to as "Symrise") is one of the world's leading companies in flavors and fragrances, food and cosmetic ingredients, and nutritional supplements. In 2006, Symrise was listed on the Frankfurt Stock Exchange. In 2023, Symrise generated revenues of EUR 4.73 billion.

In August 2023, a petitioner for invalidation submitted a request for patent invalidation against the Chinese invention patent (hereinafter referred to as "the patent involved") entitled "Antimicrobial Compositions" owned by Symrise, which included invalidation grounds such as insufficient disclosure, claims being not supported by the description, and lack of an inventive step.

Symrise entrusted Unitalen as the agent to respond to the invalidation request. After accepting the entrustment, the Unitalen team carefully studied the patent, the Request, and the large amount of evidence materials submitted by the petitioner, and had in-depth discussions with the client. On this basis, the team prepared a detailed defense to each invalidation grounds in the invalidation request and submitted it to the collegiate panel.

Therein, for the invalidation ground of insufficient disclosure, the petitioner for invalidation argued that the embodiments of the patent involved do not disclose the testing method. The Unitalen team held that the description of the patent involved has explicitly disclosed the data of the effect. Other paragraphs of the description have explicitly disclosed the relevant standards for testing. Thus those skilled in the art can readily select the corresponding standards for testing based on the disclosure of the description. For the invalidation ground that the description does not support the claims, the Unitalen team analyzed the reasons why individual features are supported by the description, submitted the supplemental experimental data, and responded to the relevant evidence provided by the petitioner for invalidation one by one, respectively. For the invalidation ground of the lack of an inventive step, the Unitalen team focused on stating that there is no technical enlightenment in the prior art and that there are opposite teachings and other counterarguments.

Based on the circumstances of the oral proceedings, the Unitalen team believed that further supplemental experimental data are required to prove sufficient disclosure of the patent involved and that the description supports the claims. On this basis, the team prepared the supplemental agent's opinion and submitted it to the CNIPA. In the end, the CNIPA made a Decision of Examination upon Request for Invalidation without requiring amendments to the claims of the patent involved and upheld the validity of the patent right.

Key Points of the Decision of the Case

"If the test method for experimental data is well known in the art, and those skilled in the art can determine the above method based on the disclosure of the description, it cannot be determined that the disclosure of the description is insufficient on the ground that the test method is not disclosed in the description."

Recently, The Trademark Lawyer magazine, an internationally renowned trademark selection organization, released the 2024 Asia-Pacific Trademark Agency Rankings, and Unitalen Attorneys at Law won the award "Top 10 Trademark Law Firms of 2024" in China for its high-quality services and outstanding performance in the trademark field.