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ELLAN – June 2022 Update

By June 9, 2022 No Comments
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An update of the 2022 Guide to Judicial Conduct (the Guide)

  • Hong Kong Judiciary announced amendments to Guide to Judicial Conduct, which has been in use since 2004, to take account of current technological developments. It is stated that judges should be cautious about “authorising connection on social media”, “like” or “following” any person or group, and should avoid commenting on cases and legal issues online, etc.
  • In addition, in recent years, judges hearing controversial cases have repeatedly been targets of “scandals” and abusive comments online. The Guide also states that judges should refrain from responding directly and seek advice from the court leadership if the situation is appropriate.
  • The latest version of the Guide includes a number of amendments, including a number of points to note in relation to the use of social media by judges.
  • The Guide states that the Judiciary allows judges to use social media in their private affairs as a matter of personal choice and that “a lack of basic understanding of social media may give judges the impression that they are out of touch with modern society”, but specifically cautions judges to be aware of the risks associated with social media and to exercise caution when posting information via social media, which is likely to be read immediately by a large number of people and can be easily searched, retrieved and distributed, or even retained permanently on the Internet. Reasonable care should also be taken to ensure that personal or contact details or private life information about the judge him/herself or his/her close family members and friends are not unnecessarily disclosed.
 

Hong Kong issues new Recommended Model Contractual Clauses for cross-border transfer of personal data

·        The Office of the Privacy Commissioner for Personal Data (“PCPD“) issued the new Guidance on Recommended Model Contractual Clauses for Cross-border Transfer of Personal Data (“New Guidance“) on 12 May 2022.

·        The New Guidance sets out that adoption of the Recommended Model Contractual Clauses (“RMCs“) is considered best practice instead of a mandatory obligation. Key points are as follows:

o   There are two sets of New RMCs, i.e. (i) Data User to Data User RMCs; and (ii) Data User to Data Processor RMCs.

o   The New RMCs are applicable to cross-border data transfers which are between entities that are outside Hong Kong when the transfer is controlled by a Hong Kong data user.

o   The New RMCs are prepared as free-standing clauses that could be incorporated into more general commercial agreements between data transferors and transferees.

 

PRC
 

First NFT litigation in China

 

  • On 22 April 2022, Hangzhou Internet Court handed down its first judgment on non-fungible token (NFT) intellectual-property infringement case in China.
  • The judgment held that BigVerse, a platform which creates and distributes NFT, is accountable for allowing a user to mint NFTs from a piece of stolen artwork. A cartoon picture created by an artist, Mr. Ma Qianli, was used to mint an NFT without prior authorization from the rightful copyright owner.
  • The lawsuit against BigVerse was filed by a Shenzhen-based company, Qice. The artwork concerned is a cartoon tiger receiving a vaccine shot. When Qice the exclusive licensee of the copyright noticed the NFT, it sued the platform creating and distributing the NFT in court.
  • To compensate for the loss, BigVerse was ordered to pay Qice a fine of RMB4,000 and stop the NFT from being circulated by sending it to an “eater address,” which is essentially a crypto wallet with no private key.
  • The court feels that BigVerse is responsible for overseeing user actions which violate other clients’ rights since it directly profits from such transactions. It further suggested that the NFT marketplace should set up a copyright vetting mechanism to look into the artworks uploaded by users on its platform.

 

 

China’s SAMR Released Latest Typical Intellectual Property Enforcement Cases

·        The State Administration for Market Regulation (SAMR) published Typical Cases of Intellectual Property Enforcement by Market Supervision Departments in April which included trademark infringement, patent counterfeiting, Olympic logos, malicious trademark registration and the unauthorized practice of patent law, etc.

·        One of the cases revealed a Chinese local company produced and sold agricultural tractors infringing a foreign company’s registered trade mark. The Chinese company was subsequently fined RMB 10.55 million.

·        Another case of a foreign company’s right being infringed was that of one Chinese company which sold nut products online bearing a logo which was similar to the registered trade mark of the complainant. As the involved business revenue was more than 2 million RMB, even though the infringer tried to negotiate with the complainant to reduce the consequences of the illegal behaviour, the Suining Country Market Supervision Bureau still imposed an administrative penalty of 1.05 million RMB.

·        The case examples demonstrate that the Chinese regulatory bodies have been proactively prosecuting different kinds of infringement and are determined to make corrections immediately by imposing high amounts of fine against infringers of the intellectual property rights of others.

·        Ellalan can assist with such causes of action for your clients.

 

 

China’s National Intellectual Property Administration Approves Establishment of First 3 Foreign Patent Agencies in China

 

  • The China’s National Intellectual Property Administration (CNIPA) released the “Notice of the State Intellectual Property Office on Approving the Establishment of Permanent Representative Offices in China by 3 Foreign Patent Agencies including Levy Intellectual Property Company of France” (国家知识产权局关于批准法国利维知识产权公司等3家外国专利代理机构在中国境内设立常驻代表机构的通知) on 20 May 2022.
  • Per the Notice, the CNIPA authorized 2 French firms and 1 American firm for the Establishment of Permanent Representative Offices in China. Once established, a Permanent Representative Office may carry out the activities listed below, but cannot file patent applications:

o    Providing parties with patent affairs consultation in the specific region where the agency has been approved to provide such advice;

o    Accepting parties’ entrustment to handle patents in the specific region where the agency has been approved to provide such advice;

o    Accepting parties’ entrustment to provide professional consulting services for Chinese enterprises’ patent-related matters overseas.

 

 

Beijing IP Court Dismisses First Trademark Case Under New Supreme People’s Court Jurisdictional Rules

  • The Beijing Intellectual Property Court on 23 May 2022 announced its dismissal a trade mark case for lack of jurisdiction under the Supreme People’s Court’s new “Several Provisions of the Supreme People’s Court on Jurisdiction of Civil and Administrative Cases of Intellectual Property Rights of First Instance”.
  • It was held that the appropriate Court for trade mark infringement cases are basic People’s Courts. The Beijing Court opined that since the case did not involve any well-known trade marks, the Court explained the provisions on jurisdiction adjustment and guided the plaintiff to sue at a basic court with jurisdiction.
  • Notably, the Beijing IP Court retains jurisdiction over technical IP infringement, such as for invention patents.

 

Rest of the world
Instagram wins against InShot logo in the European Union

  • On 3 February 3 2022, the Opposition Division of the European Union Intellectual Property Office (EUIPO) accepted the opposition from Instagram, LLC (B 3 125 764) against a logo application filed by Singaporean-based firm Shantanu Pte. Limited.
  • The EUIPO held the signs to be similar as both trade marks contain a square-resembling device with a stylized depiction of a camera, triggering an immediate link with the Instagram logo.
  • The EUIPO further held that the contested logo would take unfair advantage of the distinctive character or repute of Instagram’s trade mark. The application was refused and the opposition successful.

 

Taiwan passes IP amendments to support its CPTPP application

  • In support of the Taiwan’s application to join the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), Taiwan’s Legislative passed amendments to the Patent Act, the Copyright Act and the Trademark Act (2022 Amendments) on 15 April 2022. In particular:
    • It stipulates the legal basis for a patent owner to file a lawsuit against a generic drug firm regarding patent infringement;
    • It invites law enforcement officers to actively investigate copyright offences, without the copyright owner filing formal complaint; and
    • It adds provisions to the Trademark Act, criminalizing circumstances where a person copies, without proper authorisation, another’s label carrying a registered trade mark.

 

Can AI be named as inventor? Australia court held inventor must be a natural person

 

·        In Thaler v Commissioner of Patents [2021] FCA 879, it was held that artificial intelligence (AI) can be named as an inventor. The controversial ruling led to discussions as this ruling is not consistent with the history of Australian patents legislation, the language and structure of the provisions in the current Act as well as the positions on the matter of key overseas jurisdictions such as the US, UK and European Union.

·        Yet, the Full Court of the Federal Court of Australia has ruled last month that an “inventor” must be a natural person for the purposes of the Patents Act 1990 and the Patent Regulations 1991.

·        The reasoning behind is that even though it was the AI system which created the invention, it is still the natural person who owns, creates, trains and instructs the AI systems so the system can follow the algorithm alone to continue the order.

·        Although the law in this area is still unsettled, legislative reform is necessary to be considered to clarify the issues so as to facilitate research & development and innovative departments to continue employing AI systems without facing infringement or lose the right to claim intellectual property rights.

 

France gave the first greenlight to Binance to be listed as a registered digital asset service provider

 

  • Binance, initially based in China but later moved its headquarters out of China following the Chinese government’s increasing regulation of cryptocurrency, has been approved by France regulators and granted a Digital Asset Service Provider (DASP) registration by the Autorité des marchés financiers (AMF) with the approval of the Autorité de Contrôle Prudentiel et de Résolution (ACPR). Binance is also seeking registration in more European countries, such as Switzerland, Sweden, Portugal and Austria.
  • The approval represents Binance becoming the first DASP in Europe which can operate its cryptocurrency exchange.
  • Moving forward, Binance can scale up their operations in France and extend their crypto services to be more accessible in France, including establishing its European base in Paris.
  • Many companies are considering to commence their crypto business in Europe. Effective regulation is essential for the mainstream adoption of cryptocurrency.
Spain plans menstrual leave in new law for those with severe pain

 

  • New legislation can be an instrument of social change. When women are increasingly being recognised in society, more attention is given to them, especially on their special cares and needs.
  • A draft bill to allow medical leave for women who suffer from severe period pain was passed in Spain in early May. Particularly, it sets out that women with three days of paid leave a month could have this extended to five days in exceptional cases.
  • If the bill is passed and new legislation enacted, it would be the first such legal entitlement in Europe. Only a handful of countries around the world have such legislation in place.
  • As the leave would be undertaken by the state, it may put off some companies to hire women. It may draw as yet unseen impact to deter woman’s access to the labour market.