The Trade Marks Registry Work Manual chapter on “Revocation of registration on grounds of non-use” is updated

·             The Hong Kong Trade Marks Registry has recently updated the chapter on “Revocation of registration on grounds of non-use” of the Trade Marks Registry Work Manual.

·             Revocation is a request to remove a registered TM on the ground that the TM has not been genuinely used in Hong Kong by the owner in relation to the goods or services for which it is registered, for a continuous period of at least three years according to section 52(2)(a) of the Trade Marks Ordinance. The 3-year period begins at any time on or after the actual date of registration under section 52(8).

·             The Registry updated the chapter to make it clear that for the purpose of determining the effective date(s) of revocation of a merged registration on the ground of non-use:

(i) the actual date of registration of each original registration remains unchanged after the merger; and

(ii) the applicant should, having regard to the extent of revocation sought, refer to the individual record of each relevant original registration, which is easily accessible through hyperlinks on the online record of the merged registration in question.

People’s Republic of China

TikTok owner ByteDance denied claims on earning lucrative revenue on advertising

·             The Beijing-based tech unicorn, ByteDance, continues to not disclose any financial information to the public in relation to the rumour claiming that it raked in more advertising revenue last year than all of the country’s television channels combined.

·             The company issued a statement to deny this untrue speculation from the post which was published by the online account ‘Daily Innovation Observation”.

·             Although ByteDance has no obligation to disclose financial information to the public as a private company, its revenue has attracted constant attraction due to the newly published guidelines by Chinese authorities on regulating profit-making practices in live streaming.

·             The guidelines are jointly issued by the Cyberspace administration of China, State Administration of Tax and State Administration for Market Regulation which prohibit misleading marketing practices in live streams, and need to be abided to by all companies operating in these sectors.

Fake 3M Mask manufacturer was sent to prison due to TM counterfeiting

·             The Shanghai No. 3 Intermediate People’s Court heard a criminal appeal case of counterfeiting 3M reg TM masks through the Internet, and rejected the appeal in Court, upholding the ruling of the original judgment.

·             The Defendant Wu had teamed up with others, since October 2020, to use illegally produced “3M” 1860, 1870 and other types of masks in a factory building in Guangdong, without the authorization of the rights holder. “3M” masks were spray-printed with registered TMs, and some illegally produced masks were delivered to another Defendant Liu and others. Wu was arrested in March 2021 and more than 100,000 fake “3M” registered TM masks and the printing mould were seized.

·             The Court of first instance sentenced Wu to three years’ imprisonment and a fine of RMB 100,000 for the crime of counterfeiting a registered TM. Wu appealed.

·             On 25 March 2022, the Shanghai Third Intermediate People’s Court announced the affirmance of the earlier ruling of sentencing Wu to 3-years imprisonment and a 100,000 RMB fine for counterfeiting TM of “3M” on masks production.

·             The Court explained that these masks are important anti-epidemic materials, especially under the pandemic. The Defendant Wu had collaborated with others to produce counterfeit 3M masks, which not only violated the legitimate rights and interests of the registered TM owner, 3M Company, but also brought potential safety hazards to the lives and health of consumers. Thus they rejected the appeal and upheld the original ruling.

CNIPA Releases Second Batch of Guiding Cases of Administrative Enforcement

·             On 31 March 2022, the CNIPA issued the Second Batch of Guiding Cases for Administrative Enforcement of Intellectual Property Rights (第二批知识产权行政执法指导案例). The Guiding Cases include 3 cases covering patent infringement, TM infringement and design patent infringement.

·             Some guiding significances are drawn in those cases:

n   The current “Patent Law” and “Regulations for the Implementation of the Patent Law” do not provide for repeated patent infringement. Article 20 of the “Measures for Administrative Law Enforcement of Patents” stipulates that for repeated infringements, the patent management department may directly make a decision to order the immediate cessation of the infringement upon request. If the respondent fails to stop its infringement and continuously or repeatedly infringe on the same patent right, the patent law enforcement department may impose administrative penalties on the repeated patent infringement in accordance with local regulations.

n   Although the national resource recycling policy and industry practice allow glass containers to be recycled and reused, simply recycling old beer bottles for reuse and filling the bottles (with other people’s registered TMs on the beer bottles), certainly constitutes TM infringement causing others damages and violates the exclusive right of the others to use their own TMs.

n   The mediation agreement is a civil contract in nature but has no enforceability. General Secretary Xi Jinping delivered an important speech when presiding over the 25th collective study of the Political Bureau of the CPC Central Committee, clearly emphasizing the need to improve the connecting mechanism between administrative enforcement of IPRs and the judiciary, and to promote the unification of administrative law enforcement standards and judicial adjudication standards. In the process of handling patent infringement disputes, the patent management department presides over the mediation and facilitates both parties to reach a mediation agreement, and obtain enforcement power through judicial confirmation, which strengthens the organic connection between administrative protection and judicial protection.

Rest of the world

IP rights waiver on Covid-19 products

·             In order to help fight the Covid-19 pandemic by increasing vaccine production and resolve the inequitable access of vaccine in poor countries, countries such as India, South Africa, the Unite States and European Union reached a compromise to waive IPRs for Covid-19 related products covering patents and vaccines.

·             However, IP professionals worry that the waiver on patent rights may bring more risks than benefits. There is insufficient evidence to show that the delay in vaccine production and distribution is caused by the application of patent rights. More importantly, the waiver may place a risk for the inability of manufacturers to produce equally safe and efficacious vaccines if the manufacturing process do not require significant investment, know-how and deep expertise in the professional field.

·             People who hold an opposing view consider the waiver only applies to patents and vaccines, so a patent holder may not necessarily be under any obligation to transfer technological or manufacturing know-how, which means the trade secrets and core know-how are still under protection.

·             It remains a difficult decision and heated discussions may continue on how to strike a proper balance between IPRs protection and public policies. 

First UK judgment held NFT auction is outside the reach of English consumer protection legislation

·             The art collector sued the digital platform at the UK’s High Court over the sale of an NFT. The Plaintiff claimed that he lost on securing the top bid for the work but was allocated another edition, so he refused to pay.

·             The digital platform commenced an arbitration, seated in New York, to recover that sum, pursuant to an arbitration agreement in their terms of use. The art collector resisted those proceedings on both jurisdictional grounds and on the substance of the claim.

·             In parallel to the New York arbitration, the art collector brought a claim before the English courts, challenging whether the enforceability of arbitration clauses in the terms are valid with the client’s “right to be sued” in this country.”, because it was unfair under English consumer protection legislation of the Consumer Rights Act 2015.

·             The Court held that the gateway in s.15A-E of the CJJA did not apply to the art collector’s claims to invalidate the arbitration agreement, since they fell within the arbitration exclusion in the Recast Regulation.

·             The judgment represents an interesting development in the law on the allocation of jurisdiction in crypto-asset cases and is being watched closely by the art community which is increasingly exploring challenges through the interaction of the NFT market with new digital platforms.

Drone delivery programs piloted in Singapore

·             The Sentosa x Enterprise Scheme (SES), Sentosa Development Corporation (SDC) has teamed up with ST Engineering and food delivery platform FoodPanda to pilot drone food delivery from Sentosa Island’s restaurants to St John’s Island.

·             While there may be some concern that drones may lead to regulatory problems as well as network issues, the SES program has set the flight path of the drone away from popular areas on Sentosa and St John’s Island as an additional safety measure.

·             The drone food delivery pilot will be conducted for around two weeks and will study the feasibility and operational requirements of drone food deliveries, including the payment system for such services.

·             Technology definitely can improve our way of living, especially during difficult times under pandemic. Policy makers thus need to consider relevant legislations to regulate the usage of drone delivery due to privacy and safety concerns.