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| Jin Kee Jin Mun Jin Fuey |
Sunday, January 15, 2012
Must Read of the Month: Subject of the Emperor Filed Enhanced Nutcracker Patent in U.S. and Canada
Mark Cohen, IP in China expert, who is now a visiting professor at Fordham Law School, has a great blog called ChinaIPR.com. He recently posted the most fascinating article post of the year: China's First Overseas Patent Filer written by Scott Seligman, who was assisted by Mr Cohen on patent law. Read Mr Seligman's book Three Tough Chinamen will be published in the Fall of 2012. In this book the colourful Dr. Jin Fuey Moy, and his two brothers, will return.
Friday, January 13, 2012
Toyota on a Chain: Creatively Challenged Art or Parody?
Last year's Hong Kong International Art Fair at the Hong Kong Convention and Exhibition Centre included the "Toyota Chain", by Thomas Hirschhorn, which, was exactly that. Mr Hirschhorn, a Swiss artist, made the piece in 2002, and so far, nobody wants to buy it.
To magnify an existent trademarked logo, without authorisation by the trademark holder, and put it on a chain seems quite stale as a piece of art. But is it legal? In Hong Kong there is no such thing as parody in the Trade Marks Ordinance (and not even in the Copyright Ordinance, so that excludes an analogous application, although it is being considered, see here). And even if there was, I think it is doubtful that this piece of cardboard, adhesive tape, aluminium and red spray falls within the scope of parody. Mr Hirschhorn uses the name recognition and reputation of the Japanese car brand to exploit commercially. In Hong Kong Mr Hirschhorn was definitely diluting Toyota's trademarked logo and name and possibly in jurisdictions with a parody provision as well.
To magnify an existent trademarked logo, without authorisation by the trademark holder, and put it on a chain seems quite stale as a piece of art. But is it legal? In Hong Kong there is no such thing as parody in the Trade Marks Ordinance (and not even in the Copyright Ordinance, so that excludes an analogous application, although it is being considered, see here). And even if there was, I think it is doubtful that this piece of cardboard, adhesive tape, aluminium and red spray falls within the scope of parody. Mr Hirschhorn uses the name recognition and reputation of the Japanese car brand to exploit commercially. In Hong Kong Mr Hirschhorn was definitely diluting Toyota's trademarked logo and name and possibly in jurisdictions with a parody provision as well.
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| Hirschhorn's "Toyota chain" at the 2011 Hong Kong International Art Fair Photo: Danny Friedmann |
Microsoft Applies Doctrine of Landlord Liability To Software Piracy
Peter Ollier has an interesting article for Managing Copyright about Microsoft's alleged first landlord liability case to tackle rampant software piracy.
Landlord liability in tort law
Article 2 Tort Law 2010: Those who infringe upon civil rights and interests shall be subject to the tort liability according to this Law. “Civil rights and interests” used in this Law shall include the right to life, the right to health, the right to name, the right to reputation, the right to honor, right to self image, right of privacy, marital autonomy, guardianship, ownership, usufruct, security interest, copyright, patent right, exclusive right to use a trademark, right to discovery, equities, right of succession, and other personal and property rights and interests.
Microsoft is suing Beijing Chaoyang Buynow because two of retailers, Beijing Hongguang Century Trading and Beijing Zhuojue Elements Trading were selling computers with pre-installed counterfeit Microsoft Windows and Office.
The other case, whereby Microsoft is suing retailer Shanghai Gome at Shanghai Huangpu District People's Court seems to be a traditional case (at least when Shanghai Gome is a subsidiary of Gome Electrical Appliances Holding Limited)
Read Mr Ollier's article here.
Landlord liability in tort law
Article 9 Tort Law 2010: One who abets or assists another person in committing a tort shall be liable jointly and severally with the tortfeasor. One who abets or assists a person who does not have civil conduct capacity or only has limited civil conduct capacity in committing a tort shall assume the tort liability; the guardian of such a person without civil conduct capacity or with limited civil conduct capacity shall assume the relevant liability if failing to fulfill his guardian duties.
Sanrio Brand Licensor Says The Darndest Things, Or Maybe Not
TGIF
Peter Ollier wrote an article about how Disney and Sanrio are licensing some of their brands in China.
Roberto Lanzi, president of Sanrio Consumer Products for Europe, Middle East and Africa, was speaking at a panel called "Licensing and the flourishing region: Asia", at a conference during the 10th annual Hong Kong International Licensing Show. Mr Lanzi said that he was the only speaker on the panel that did not hate counterfeits.
He claimed to feel relieved when he once saw fake Hello Kitty products being sold in Hong Kong's Ladies Market:
"When Hello Kitty disappears from there we might be dead."
However, the Ladies Market in Mongkok, has been removed by the USTR from the list of Special 301 Out-of-Cycle Review of Notorious Markets, on December 20, 2011, see here.
Maybe that is the reason why Mr Lanzi is president for Europe, Middle East and Africa, and not Asia.
UPDATE: In a reaction (still have to verify the identity of commenter) Roberto Lanzi wrote: "I never mentioned Lady's market, I spoke about Temple Street and I was just jocking. Best regards Roberto"
Peter Ollier wrote an article about how Disney and Sanrio are licensing some of their brands in China.
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| Licensable "cuteness" popular among Hong Kong population Lanham Place, Mong Kok Photo: Danny Friedmann |
He claimed to feel relieved when he once saw fake Hello Kitty products being sold in Hong Kong's Ladies Market:
"When Hello Kitty disappears from there we might be dead."
However, the Ladies Market in Mongkok, has been removed by the USTR from the list of Special 301 Out-of-Cycle Review of Notorious Markets, on December 20, 2011, see here.
Maybe that is the reason why Mr Lanzi is president for Europe, Middle East and Africa, and not Asia.
UPDATE: In a reaction (still have to verify the identity of commenter) Roberto Lanzi wrote: "I never mentioned Lady's market, I spoke about Temple Street and I was just jocking. Best regards Roberto"
Thursday, January 12, 2012
Rethinking Intellectual Property Protection in Hong Kong
After the welcome remarks by professor Douglas Arner (head Department of Law, HKU) and the opening speech by Peter Cheung, (director IPD, HKSAR Government) see here, the first panel presentation of the Round Table event organised by Law & Technology Centre of HKU and IP Law Center at Drake University started, moderated by assistant professor Haochen Sun, of the Faculty of Law, HKU.
Professor Alice Lee, Associate Dean, Faculty of Law HKU gave a presentation entitled: "Reflections on Intellectual Property Reform in Hong Kong"
Professor Lee explained that the Hong Kong Copyright, Trade Marks and Registered Design Ordinances of 1997 did not change dramatically the substantive rights, in contrast to the patent reforms. Hong Kong amended its Patent Ordinance, June 27, 1997 and on February 22, 2008. The Patent Ordinance probably will be amended again after the government have considered all responses to its consultation paper (consultation period ended December 31, 2011). Given the limited time, Professor Lee focused on possible reform of small-term patents, instead of on possible reforms of standard patents, (read more about Hong Kong's need for an Original Grant Patent in combination with reciprocity and Hong Kong's potential as regional legal hub here), nor on whether there should be regulations for patent agents in Hong Kong.
Hong Kong is in need for a balanced approach for the short-term patent, which is relatively cheap and easy to get, since there is no substantive examination for a protection of 8 years. However, Professor Lee is concerned that the short-term patent might be prone to abuse. She illustrated this with the Octopus Card Limited v ODD.HK Limited case.
The conflict was about the validity of two short-term patents registered in the name of ODD.HK Limited. A judgment delivered on March 17, 2009, by Deputy High Judge Chen Jiangyao (陳江耀), whereby Madam Fung Wai Mun Polly was unrepresented, HCMP104/2007, ordered the revocation of the two patents with costs to the petitioner, because both patents lack novelty and creativeness (兩項發明都不是新穎和沒有創造性). Madam Fung Wai Mun Polly of ODD.HK Limited simply removed the chips from the Octopus Card (with which you can pay to use the MTR, buses, mini-buses and at many shops in Hong Kong) and put them in plush toys, and after she got the short-term patents sued Octopus Card Limited for patent infringement. Read the case here in Chinese.
The Octopus Card case was mentioned in the April 19, 2010 Environmental Systems Product Holdings Inc. v DPC Technology Ltd., case HCMP1465/2008. And the Windsurfing test (Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd [1985] RPC 59 (at 73) was mentioned to see whether the patent is obvious or not. In the same Environmental Systems Product Holding case, the counsel for the applicant, Mr Felix Pao, "described the short-term patent application system
under Part XV of the PO as an “honour system” as it depends heavily on the
integrity and honesty of an applicant in that an applicant would not make any
application in respect of a claimed invention known to be not patentable for
whatever reasons." The Recorder Rimsky Yuen, SC in Chambers, Court of First Instance, High Court, agreed.
Then moderator Haochen Sun introduced Mr Mayank Vaid, IP Director, Louis Vuitton, Hong Kong, as the IP director of the most popular luxury brand. Mr Vaid's presentation was called "Corporate Decision Making in IPR Protection and Enforcement"
Mr Vaid is responsible for protecting the intellectual property rights of LVMH Fashion Group, which includes iconic brands such as LV, Marc Jacobs, LOEWE, CELINE, KENZO, Emilio Pucci and Berluti. Therefore, the company has made the IP perspective part of its overall business strategy. Mr Vaid said that from a commercial sense IP is crucial to guarantee the customer experience. LV's promise of exclusivity is per definition incompatible with counterfeit goods, that confuse customers and dilute the distinctiveness of the brand, and damage its reputation. Therefore Louis Vuitton takes full control over its production process (no production is done in Asia) and supply chain (no distribution to Hong Kong via the internet) to protect its brand value very seriously. Louis Vuitton has now around 80 stores in Asia, excluding China and Japan.
Mr Vaid explains that a transformation has taken place in the economy, from one that was based for 80 percent on the value of goods and services and for 20 percent on the value of the underlying intellectual property rights, to an economy where this ratio has been reversed.
Bernard Arnault, CEO of LVMH, and Yves Carcelle, CEO of Louis Vuitton stand in Louis Vuitton's tradition of proactively and assertively protecting and enforcing the IP of its brands. This tradition dates from 1908 when LV fought its first IP battle. Louis Vuitton has a zero-tolerance policy against counterfeiters, (which IP Dragon thinks, deserves emulation). Why do not more companies protect and enforce their intellectual property rights as assertive as Louis Vuitton? According to Mr Vaid, some might take the view that marketing is more important, or some might be afraid to annoy the local government, or they have not reserved enough budget to enforce their intellectual property rights.
Mr Vaid summed up product categories in which Louis Vuitton is not active, but where people use the trademarked logo unauthorisedly: fake nails, rikshaws, tiles, a Romanian LV themed restaurant, bedsheets, iPhone caps, and condoms, see here. Especially in Korea one can find bags with similar monograms, such as LX, LJ etc, which leads to confusion and/or dilute the trademark, and Louis Vuitton is tirelessly filing lawsuits against those manufacturers, distributors and sellers.
It is getting increasingly more challenging for LV to protect and enforce its intellectual property rights, since the reaction time of the counterfeiters is getting faster. It takes LV about halve a year to launch a new product (from design, production and distribution to sales). Before, the counterfeiters needed to send someone to a fashion show in Paris or Milan, but now they only have to watch the fashion shows via Facebook and three months later one can find counterfeit designs in places such as Dubai. The challenge to fight counterfeiters is not just for companies such as Louis Vuitton, but for society in general: since counterfeiting has been linked to organized crime, child labour, degradation of the environment, violation of safety laws, money laundering, etc.
Louis Vuitton has not only a reputation thanks to its exclusive products, but also because of its proactive intellectual property protection and enforcement. It is well known that Louis Vuitton did not only trademark the name Louis Vuitton, and the monogram LV but also the Monogram Canvas, and each of its constituting parts: the fourpointed stars, four-pointed stars inset in curved diamonds (flower quatrefoil diamond), and four-pointed flowers inset (flower quatrefoil). These marks are enforced too, read here. Read Paul-Gerard Pasol's Evolution of the Monogram Design here. In City Chain Stores (S) Pte, Ltd. vs Louis Vuitton Malletier, the Court of Appeal of Singapore overturned the trial court which enjoined City Chain Stores of using Louis Vuitton's flower quatrefoil, and flower quatrefoil diamond designs, because it deemed that City Chain Stores used the designs in a random pattern and non-uniform way and therefore not in a origin-related use but for embellishment and decorative purposes. Although sections 27(1) and (2) of the Singapore Trade Marks Act (1998) are based on article 5 (1) a-b, EU Trade Marks Directive (Directive 89/104/EEC, December 21, 1988), the Court of Appeal chose to interpret the requirement of trademark use stricter than the European interpretation (which is to look whether the defendant's use is liable to affect the functions of the trademark). Reason was that the answer by the European Court of Justice (Arsenal Football Club plc vs Matthew Reed) on whether non-origin-related use could constitute trademark infringement, was considered uncertain and controversial by UK professors Lionel Bently and Brad Sherman. Also, the Max Planck Study on the Overall Functioning of the European Trade Mark System of February 2011, stated that current European Court of Justice jurisprudence on the issue was "neither consistent nor satisfactory" (see paragraph 2.178 here). However, the anti-dilution provision of section 53 (3) (b) seems to be able to protect the communication, investment and advertising functions of a trademark. Read Ng-Loy Wee Loon's article about it here.
Louis Vuitton is using some innovative ways to prevent counterfeiting and new protection and enforcement routes. These include pioneering landlord liability (read Joseph Simone's article for WIPO Magazine here and Daniel Plane's Law Journal of INTA article here), cooperating with Thai monks to raise the awareness that trademark infringement is a sin, and is looking whether the principles of Sharia law can be construed in a way to provide support for such a protection, see here.
Peter Cheung, director Intellectual Property Department HKSAR Government, asked Mr Vaid about the Chewy Vuiton case (Louis Vuitton Malletier S.A., Plaintiff, v. Haute Diggity Dog, LLC, Victoria D.N. Dauernheim, and Woofies, LLC, Defendants. 464 F.Supp. 2d 495, US District Court For The Eastern District Of Virginia, Alexandria Division, November 3, 2006, uploaded by Susan Scafidi of Counterfeit Chic here, and the appellate decision of Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 4th Cir. November 13, 2007, Ms Scafidi uploaded here).
The district court did not apply the statutory factors for dilution, and simply reasoned that because Haute Diggity Dog’s product was a parody it meant that "there can be no association with the famous mark as a matter of law." The 4th Circuit recognises that a claim of parody does not preclude liability for dilution. But by checking the statutory factors for dilution the 4th Circuit came to the same solution. However, IP Dragon agrees with appellant Louis Vuitton Malletier and the Amicus International Trademark Association (INTA). To use a name such as Chewy Vuiton in combination with the monogram of the letters C and V constitutes dilution by blurring. Dogs chewing on products that are purposively been associated with Louis Vuitton brand, can be seen as tarnishing to a luxury brand. The same can be said if a vulgar snack bar is purposively associating itself in the mind of the public with a 5 start hotel chain via a similar sign as the mark. The similarity between the sign and the mark is not controversial to both courts: "similarity is an essential part of a parody, as the similar marks and trade dress must "convey two simultaneous-and contradictory-messages: that it is the original, but also that it is not the original and is instead a parody."" The 4th Circuit stated: "The satire is unmistakable. The dog toy is a comment on the rich and famous, on the Louis Vuitton name and related marks, and on conspicuous consumption in general." This statement is subjective. Even if it really is parody, it can be argued that Haute Diggity Dog rides on the coat tail of a famous brand and misappropriates Louis Vuitton's substantial investments in labour, skill, effort and capital.
Hong Kong does not have a parody exception in its Trade Marks Ordinance. If they would have such a provision, it would be in Chapter 559, Section 19 'Exceptions to infringements', see here.
Louis Vuitton filed a lawsuit for trademark dilution, false designation of origin and unfair competition against Warner Brothers over the use of a fake LV bag in the movie The Hangover 2, and wants that all DVDs will be pulled. Watchful Louis Vuitton employees found out that the bag used in the movie was made by Diophy, a company that Louis Vuitton is suing, see here.
Over the years Louis Vuitton has organized art exhibitions and supported many artists as a kind of modern maecenas. Mr Vaid is clear about when Louis Vuitton will file lawsuits: when one of its trademarks is used for commercial exploitation. The trademarked logo LV has been abused by a Belgian "artist" in a not so kosher nor halal way: he tattooed pigs with the LV trademark without the permission of Louis Vuitton, and then killed them and sold their skins. Besides the blatant trademark infringement, the lack of animal welfare caused a controversy. The tattooed pigs were banned from the Shanghai Art Fair in 2008, see here.
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| Assistent Professor HKU Haochen Sun is moderator Photo: Danny Friedmann |
Professor Lee explained that the Hong Kong Copyright, Trade Marks and Registered Design Ordinances of 1997 did not change dramatically the substantive rights, in contrast to the patent reforms. Hong Kong amended its Patent Ordinance, June 27, 1997 and on February 22, 2008. The Patent Ordinance probably will be amended again after the government have considered all responses to its consultation paper (consultation period ended December 31, 2011). Given the limited time, Professor Lee focused on possible reform of small-term patents, instead of on possible reforms of standard patents, (read more about Hong Kong's need for an Original Grant Patent in combination with reciprocity and Hong Kong's potential as regional legal hub here), nor on whether there should be regulations for patent agents in Hong Kong.
Hong Kong is in need for a balanced approach for the short-term patent, which is relatively cheap and easy to get, since there is no substantive examination for a protection of 8 years. However, Professor Lee is concerned that the short-term patent might be prone to abuse. She illustrated this with the Octopus Card Limited v ODD.HK Limited case.
The conflict was about the validity of two short-term patents registered in the name of ODD.HK Limited. A judgment delivered on March 17, 2009, by Deputy High Judge Chen Jiangyao (陳江耀), whereby Madam Fung Wai Mun Polly was unrepresented, HCMP104/2007, ordered the revocation of the two patents with costs to the petitioner, because both patents lack novelty and creativeness (兩項發明都不是新穎和沒有創造性). Madam Fung Wai Mun Polly of ODD.HK Limited simply removed the chips from the Octopus Card (with which you can pay to use the MTR, buses, mini-buses and at many shops in Hong Kong) and put them in plush toys, and after she got the short-term patents sued Octopus Card Limited for patent infringement. Read the case here in Chinese.
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| Professor Alice Lee, HKU Photo: Danny Friedmann |
Professor Lee questioned who is going to pay for the abuse? Her question is very relevant. The strength of the short-term patent (not expensive and easily granted) might be its weakness as well. Therefore it might be considered to increase the fee to get a short-term patent, so that bad faith applicants will be deterred, or use a part of the fee to compensate the abused party in the legal costs.
Then moderator Haochen Sun introduced Mr Mayank Vaid, IP Director, Louis Vuitton, Hong Kong, as the IP director of the most popular luxury brand. Mr Vaid's presentation was called "Corporate Decision Making in IPR Protection and Enforcement"
Mr Vaid is responsible for protecting the intellectual property rights of LVMH Fashion Group, which includes iconic brands such as LV, Marc Jacobs, LOEWE, CELINE, KENZO, Emilio Pucci and Berluti. Therefore, the company has made the IP perspective part of its overall business strategy. Mr Vaid said that from a commercial sense IP is crucial to guarantee the customer experience. LV's promise of exclusivity is per definition incompatible with counterfeit goods, that confuse customers and dilute the distinctiveness of the brand, and damage its reputation. Therefore Louis Vuitton takes full control over its production process (no production is done in Asia) and supply chain (no distribution to Hong Kong via the internet) to protect its brand value very seriously. Louis Vuitton has now around 80 stores in Asia, excluding China and Japan.
Mr Vaid explains that a transformation has taken place in the economy, from one that was based for 80 percent on the value of goods and services and for 20 percent on the value of the underlying intellectual property rights, to an economy where this ratio has been reversed.
Bernard Arnault, CEO of LVMH, and Yves Carcelle, CEO of Louis Vuitton stand in Louis Vuitton's tradition of proactively and assertively protecting and enforcing the IP of its brands. This tradition dates from 1908 when LV fought its first IP battle. Louis Vuitton has a zero-tolerance policy against counterfeiters, (which IP Dragon thinks, deserves emulation). Why do not more companies protect and enforce their intellectual property rights as assertive as Louis Vuitton? According to Mr Vaid, some might take the view that marketing is more important, or some might be afraid to annoy the local government, or they have not reserved enough budget to enforce their intellectual property rights.
Mr Vaid summed up product categories in which Louis Vuitton is not active, but where people use the trademarked logo unauthorisedly: fake nails, rikshaws, tiles, a Romanian LV themed restaurant, bedsheets, iPhone caps, and condoms, see here. Especially in Korea one can find bags with similar monograms, such as LX, LJ etc, which leads to confusion and/or dilute the trademark, and Louis Vuitton is tirelessly filing lawsuits against those manufacturers, distributors and sellers.
It is getting increasingly more challenging for LV to protect and enforce its intellectual property rights, since the reaction time of the counterfeiters is getting faster. It takes LV about halve a year to launch a new product (from design, production and distribution to sales). Before, the counterfeiters needed to send someone to a fashion show in Paris or Milan, but now they only have to watch the fashion shows via Facebook and three months later one can find counterfeit designs in places such as Dubai. The challenge to fight counterfeiters is not just for companies such as Louis Vuitton, but for society in general: since counterfeiting has been linked to organized crime, child labour, degradation of the environment, violation of safety laws, money laundering, etc.
Louis Vuitton has not only a reputation thanks to its exclusive products, but also because of its proactive intellectual property protection and enforcement. It is well known that Louis Vuitton did not only trademark the name Louis Vuitton, and the monogram LV but also the Monogram Canvas, and each of its constituting parts: the fourpointed stars, four-pointed stars inset in curved diamonds (flower quatrefoil diamond), and four-pointed flowers inset (flower quatrefoil). These marks are enforced too, read here. Read Paul-Gerard Pasol's Evolution of the Monogram Design here. In City Chain Stores (S) Pte, Ltd. vs Louis Vuitton Malletier, the Court of Appeal of Singapore overturned the trial court which enjoined City Chain Stores of using Louis Vuitton's flower quatrefoil, and flower quatrefoil diamond designs, because it deemed that City Chain Stores used the designs in a random pattern and non-uniform way and therefore not in a origin-related use but for embellishment and decorative purposes. Although sections 27(1) and (2) of the Singapore Trade Marks Act (1998) are based on article 5 (1) a-b, EU Trade Marks Directive (Directive 89/104/EEC, December 21, 1988), the Court of Appeal chose to interpret the requirement of trademark use stricter than the European interpretation (which is to look whether the defendant's use is liable to affect the functions of the trademark). Reason was that the answer by the European Court of Justice (Arsenal Football Club plc vs Matthew Reed) on whether non-origin-related use could constitute trademark infringement, was considered uncertain and controversial by UK professors Lionel Bently and Brad Sherman. Also, the Max Planck Study on the Overall Functioning of the European Trade Mark System of February 2011, stated that current European Court of Justice jurisprudence on the issue was "neither consistent nor satisfactory" (see paragraph 2.178 here). However, the anti-dilution provision of section 53 (3) (b) seems to be able to protect the communication, investment and advertising functions of a trademark. Read Ng-Loy Wee Loon's article about it here.
Louis Vuitton is using some innovative ways to prevent counterfeiting and new protection and enforcement routes. These include pioneering landlord liability (read Joseph Simone's article for WIPO Magazine here and Daniel Plane's Law Journal of INTA article here), cooperating with Thai monks to raise the awareness that trademark infringement is a sin, and is looking whether the principles of Sharia law can be construed in a way to provide support for such a protection, see here.
 |
| Mr Mayank Vaid, IP Director, Louis Vuitton, Hong Kong Photo: Danny Friedmann |
The district court did not apply the statutory factors for dilution, and simply reasoned that because Haute Diggity Dog’s product was a parody it meant that "there can be no association with the famous mark as a matter of law." The 4th Circuit recognises that a claim of parody does not preclude liability for dilution. But by checking the statutory factors for dilution the 4th Circuit came to the same solution. However, IP Dragon agrees with appellant Louis Vuitton Malletier and the Amicus International Trademark Association (INTA). To use a name such as Chewy Vuiton in combination with the monogram of the letters C and V constitutes dilution by blurring. Dogs chewing on products that are purposively been associated with Louis Vuitton brand, can be seen as tarnishing to a luxury brand. The same can be said if a vulgar snack bar is purposively associating itself in the mind of the public with a 5 start hotel chain via a similar sign as the mark. The similarity between the sign and the mark is not controversial to both courts: "similarity is an essential part of a parody, as the similar marks and trade dress must "convey two simultaneous-and contradictory-messages: that it is the original, but also that it is not the original and is instead a parody."" The 4th Circuit stated: "The satire is unmistakable. The dog toy is a comment on the rich and famous, on the Louis Vuitton name and related marks, and on conspicuous consumption in general." This statement is subjective. Even if it really is parody, it can be argued that Haute Diggity Dog rides on the coat tail of a famous brand and misappropriates Louis Vuitton's substantial investments in labour, skill, effort and capital.
Hong Kong does not have a parody exception in its Trade Marks Ordinance. If they would have such a provision, it would be in Chapter 559, Section 19 'Exceptions to infringements', see here.
Louis Vuitton filed a lawsuit for trademark dilution, false designation of origin and unfair competition against Warner Brothers over the use of a fake LV bag in the movie The Hangover 2, and wants that all DVDs will be pulled. Watchful Louis Vuitton employees found out that the bag used in the movie was made by Diophy, a company that Louis Vuitton is suing, see here.
Over the years Louis Vuitton has organized art exhibitions and supported many artists as a kind of modern maecenas. Mr Vaid is clear about when Louis Vuitton will file lawsuits: when one of its trademarks is used for commercial exploitation. The trademarked logo LV has been abused by a Belgian "artist" in a not so kosher nor halal way: he tattooed pigs with the LV trademark without the permission of Louis Vuitton, and then killed them and sold their skins. Besides the blatant trademark infringement, the lack of animal welfare caused a controversy. The tattooed pigs were banned from the Shanghai Art Fair in 2008, see here.
Monday, January 09, 2012
"Rethinking IP" Round Table HKU - Drake University
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| Knowles Building, at HKU Photo: Danny Friedmann |
The programme consisted of four panel presentations (will be separate blog postings) that urge us to rethink:
Panel I: IP Protection in Hong kong;
Panel II: IP Protection in the Digital Age;
Panel III: IP Protection in Mainland China;
Panel IV: IP Protection globally.
After the opening remarks by professor Douglas Arner, head of the Department of Law of HKU, who welcomed everybody and told that Law & Technology Centre of HKU has already existed for a decade.
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| Professor Douglas Arner, head of Department of Law, HKU Photo: Danny Friedmann |
The opening speech was given by Peter Cheung, director of the Intellectual Property Department (IPD) of the HKSAR government.
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| Left professor Peter K. Yu, Drake University and the right Peter Cheung, director IPD, HKSAR Government Photo: Danny Friedmann |
"Trading Intellectual Property in Hong Kong"
Mr Cheung recalled that he was invited by the Motion Picture Association of America (MPAA) to come to Hollywood. There, he familiarised himself with the Three-Act Structure, which is a success formula to make a blockbuster movie. But, as Mr Cheung explained, it can be applied to reach his goal, namely to use IP trade to drive stakeholders' economic development. In Act I the context is given, Act II the challenge, and Act III the resolution. I am sure that the Hong Kong movie scene uses a similar scheme to keep the audiences captivated. Those Chinese from the Mainland, versed in Marxism, might recall the different acts as Hegel's thesis, anti-thesis, synthesis, respectively. So if Act I is the setting whereby Hong Kong is introduced as a Special Administrative Region with the ambition to become a regional knowledge hub, Act II is the challenge of how to get there? In other words, how to apply IP, how to monetise these intangible assets? Mr Cheung was inspired by a Japanese car manufacturer who was not interested in cars, but in the money that you can make with cars. This same approach should be followed with IP. (IP Dragon wonders whether it is really possible to exploit IP, without really loving it?). MBAs teach you many interesting things but not about the role of intangibles, Mr Cheung said. Therefore, we need to map out our niche, and make an inventory of what is already available, predict change, seize opportunity and collaborate to innovate, and execute these processes in parallel. Because, we live in an IP economy, Mr Cheung told. The significance becomes clear when one looks at the most valuable brand in the world: Coca-Cola (71,861 million U.S. dollar, according to Interbrand in October 2011). If all tangibles are destroyed, Coca-Cola could resurrect itself because of the worth of its intangibles. IP can be lucrative, even though it is sometimes tiny. For example Mr Cheung knows the composer of the two second jingles.If one accepts that one person in a million goes to the best university and has the change to become really innovative, then Mainland China wins (with 1,340 people), Europe will be in second place (833 person ) and the US (312 person) third place. Hong Kong gets only 8 of these talented people. Hong Kong should become a platform where demand and supply come together. According to Mr Cheung Hong Kong can bring together IP owners that want to sell some of their IP, via IP intermediaries (for this Hong Kong needs officials, professionals, scientists and financiers) so that investors can buy IP. Now only goods and services are traded. There should be transformation to IP.
Hong Kong can have a first-mover advantage in IP trade. Hong Kong has a rule of law, attractive tax system, with a bilingual work force, and is not a gate-to-China, but is part of China. Hong Kong has to take the initiative and make it blaze its own trail. Shenzhen already has a trade platform, but just a website and they seem not very active, they do not have an international nor a holistic approach to the trade platform. China each province has its own platform. In Hong Kong there are more professionals.
The HKSAR government seems to have a lot of attention to niches such as Islamic banking. In the audience there was some concern about whether Mr Cheung is getting enough support from the government. Mr Cheung is well positioned to convince the HKSAR government for his case.
Friday, January 06, 2012
Key IP Question Before Considering Joint-Venture: Am I Educating My Future Competitor Or Building A Long-Term Partnership?
Colin Davies, managing director of Accenture Software, wrote a column for China Daily European Weekly (always asking whether the content is not usable for the Chinese edition) about ways that will make a better cooperation between Chinese and Western software companies possible: "The West will need greater assurances that the regulatory environment is friendly and conducive to building strong business relationships in ways that both sides can view as credible and mutually beneficial." Who can disagree with this.
Mr Davies also tries to answer the question of how a Western software developer can give a client in China a jump-start asset and let them customize it, while at the same time protecting their intellectual property?
"Although Chinese laws do exist to protect intellectual property (IP), the question is whether anyone is prepared to enforce them. IP protection will need to be adequately addressed before Western software developers are prepared to dive aggressively into the Chinese market."
Then he sketches the situation of a Sino-Western joint-venture, in a bit too optimistic light, in my view:
"Meanwhile, the prospect of a joint venture is attractive because Western companies, rather than investing resources to establish a foothold in a new and very different environment, have the advantage of leveraging the know-how of a local organization already well entrenched in China. This affords them the immediate benefit of a partner that has trust and recognition in the marketplace, knows the local players, and is more likely to defend the IP fiercely for the simple reason that it is also part of theirs."
When simple might be more complex
Some Western companies have been lured (or pushed) a bit too easily in "sharing" their intellectual property without rock-hard agreements that guarantee that the Western company is getting the intellectual property back once the joint venture dissolves. In other words, your joint venture partner can be a significant intellectual property challenge too. Also each company has to think carefully about how much of its knowledge it is willing to transfer in order to get market access. To sum up: Each potential Western company has to ask itself this question: Am I educating a future competitor or building a long-term partnership? Although Mr Davies is not asking the question, he is answering them: "Trust is vital." Read his article here.
Mr Davies also tries to answer the question of how a Western software developer can give a client in China a jump-start asset and let them customize it, while at the same time protecting their intellectual property?
"Although Chinese laws do exist to protect intellectual property (IP), the question is whether anyone is prepared to enforce them. IP protection will need to be adequately addressed before Western software developers are prepared to dive aggressively into the Chinese market."
Then he sketches the situation of a Sino-Western joint-venture, in a bit too optimistic light, in my view:
"Meanwhile, the prospect of a joint venture is attractive because Western companies, rather than investing resources to establish a foothold in a new and very different environment, have the advantage of leveraging the know-how of a local organization already well entrenched in China. This affords them the immediate benefit of a partner that has trust and recognition in the marketplace, knows the local players, and is more likely to defend the IP fiercely for the simple reason that it is also part of theirs."
When simple might be more complex
Some Western companies have been lured (or pushed) a bit too easily in "sharing" their intellectual property without rock-hard agreements that guarantee that the Western company is getting the intellectual property back once the joint venture dissolves. In other words, your joint venture partner can be a significant intellectual property challenge too. Also each company has to think carefully about how much of its knowledge it is willing to transfer in order to get market access. To sum up: Each potential Western company has to ask itself this question: Am I educating a future competitor or building a long-term partnership? Although Mr Davies is not asking the question, he is answering them: "Trust is vital." Read his article here.
China's NCA: Authorized Copyrighted Works on Video Sharing Sites Average 76 Percent
"China's National Copyright Administration (NCA) recently announced that on average, only 76 percent of the movies and TV series on the country's 18 major video-sharingwebsites are authorized copyrighted works", wrote Lu Yanxia of Beijing Daily, edited and translated by Yao Chun of People's Daily Online here.
Video sharing sites Xunlei, VeryCD, and Baidu video have not submitted the list of copyrighted movies and tv series they share to NCA. So the percentage might go up or down.
The top 5 most popular video sites in China are, according to Alexa:
1. Youku
2. Tudou
3. Ku6.com
4. 56.com
5. Joy.cn
I think this percentage is too low. This problem is not limited to China. I think the enforcement system for online copyrighted works is in need for a systemic overhaul. I will publish a paper on the subject soon.
Wednesday, January 04, 2012
Fast Moving Counterfeit Goods From China Found in India
For a long time FMCG was the abbreviation for Fast Moving Consumer Goods, also in India. But you might take the C to mean counterfeit, because an increasing amount of counterfeit healthcare, skin cremes, shampoos, toothpaste and cigarettes of famous Indian companies such as ITC (India's second biggest FMCG) and Dabur (India's fourth biggest FMCG) and are sold in India and some African countries. India's motto "Truth Alone Triumphs" hopefully provides solace.
Read The Economic Times article about fake Indian products made in China here.
Read The Economic Times article about fake Indian products made in China here.
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| There is something fundamentally wrong when the label Made in India is Made in China. |
Tuesday, January 03, 2012
Golden Combination: Chow Tai Fook and Disney
"You can't stay in your corner of the Forest waiting for others to come to you. You have to go to them sometimes," said Winnie the Pooh.
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| Winnie the Pooh: "All this gold makes me crave for ... honey." Exhibition at Yitian Holiday Plaza, Windows of the World, Shenzhen Photo Danny Friedmann |
Now Winnie is talking the talk and walking the walk, since Disney joined forces with Hong Kong jewelry chain store Chow Tai Fook Jewellery Group Ltd., that just was listed to the Hang Seng Stock Exchange (and as of today is part of the Hong Kong Global Composite Index and Hong Kong Composite Index, see here).
Chow Tai Fook raised 2 billion U.S. dollars in its Initial Public Offering to get enough funds to realise its plan to expand its points of sale in China, Hong Kong and Macau to 2,000 stores by 2016. Now, Chow Tai Fook has around 1,500 stores, mostly in China. In Macau it has about 80 stores. Chow Tai Fook also has stores in Taiwan, Singapore and Malaysia.
Chow Tai Fook was awarded Disney's product licence, see here, to take advantage from the recognition of Disney's iconic bear (which, according to girls and even grown up women has a high "cuteness" factor) and combine it with the jewelry retail expertise of Chow Tai Fook in China, Hong Kong and Macau.
Do you consider to engage in co-branding and you want to know more information about the legal implications, contact ipdragon at gmail.
Do you consider to engage in co-branding and you want to know more information about the legal implications, contact ipdragon at gmail.
Monday, January 02, 2012
Smartphone Patent War 2012: Chinese Alliance vs International Brands
The battlefield of patents are more and more the place where competitors are vying for market share. China has become the world's largest market for smart phones in the third quarter of 2011, according to Strategy Analytics. Some Chinese smartphone makers, including Lenovo, ZTE, TCL, Coolpad and Konka joined forces to protect themselves against the rising number of claims of patent infringement by international smartphone manufacturers, such as Apple, Nokia and Microsoft, and to dominate China's domestic market.
Huawei has around 65,000 patents and also ZTE has a substantial number of patents for wireless communication technologies. According to Erica Yen and Steve Shen of Digitimes many Chinese smart phone makers develop localized interfaces and even operation systems, see here.
Chinese smartphone manufacturers also launch their products via China-based telecom carriers and social networking websites operators, via dual branding. HTC and Sony Ericsson grew rapidly because their Android models were popular in major cities of east and south China, according to Linda Sui of Strategy Analytics. If China Telecom will launch the CDMA iPhone 4S early next year, Ms Sui expects Apple's market share to peak. Globally Nokia is still number one, closely followed by Samsung and Apple.
Huawei has around 65,000 patents and also ZTE has a substantial number of patents for wireless communication technologies. According to Erica Yen and Steve Shen of Digitimes many Chinese smart phone makers develop localized interfaces and even operation systems, see here.
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Saturday, December 31, 2011
Hong Kong's Original Grant Patent, Reciprocity And Hong Kong's Future As Legal Hub
On the last day one can send his or her opinion on the patent registration system in Hong Kong to the government, you will find an overview of what we can expect and what we can hope for. The patent system of Hong Kong, largely influenced by the re-registration patent system it inherited as a dependent territory of the United Kingdom, will be history soon. The Hong Kong government acknowledges that there is room for improvement. Reading the consultation paper makes clear that it is safe to say that Hong Kong will take this opportunity to set up a full fledged patent system, which will include original grant patent (OGP) and that the possibility to re-register existent patents of SIPO, UKPO and EPO will be maintained or extended.
In this article:
Before June 27, 1997, Hong Kong re-registered and enforced patents obtained in the United Kingdom (UKPO) and the European Patent Office (EPO) designating the United Kingdom. After the sovereignty change on July 1, 1997 Hong Kong started to re-register patents obtained in China (SIPO) next to patents obtained at UKPO and the EPO designating the United Kingdom. Hong Kong has accepted patents from SIPO, UKPO, EPO, but because Hong Kong does not grant any standard patents on its own there could be no reciprocity in this respect, so far.
Currently, you can get two kinds of Hong Kong patents:
- Standard patent. You can apply for a standard patent if you have already a patent granted by SIPO, UKPO or EPO, within six months of publication of a patent application in one of the before-mentioned designating patent offices (POs). The Hong Kong's Registrar needs to record the application and publish the request to record in the Hong Kong's Gazette. After both the publication of the request to record the application and the patent was granted in one of the before-mentioned POs, the request for registration of the designated patent and grant of a Hong Kong standard patent can be filed. Then, the Hong Kong Registrar will register the designated patent, grant a Hong Kong standard patent, issue a certificate of the Hong Kong standard patent and publish the specification in the Hong Kong's Gazette. Hong Kong's standard patent has a term of 20 years.
Please note that the substantive examination (novel=not belonging to the prior art, non-obvious and useful) is not done in Hong Kong but in one of the before-mentioned designating POs.
- Short-term patent. There are two routes to apply for a Hong Kong short-term patent.
If you have done an international application or via one of the designating POs for a utility model patent designating China, once that application entered its national phase you have six months to apply for a Hong Kong short-term patent. If you use these route you can use the search report of the international application.
The other route is to file the application with a specification with a description, one or more claims but only one independent claim, an abstract and a search report (prior art search by prescribed searching authority; Austria, Australia, Japan, Russia, Sweden, U.S. and EPO) to Hong Kong Registrar. The Hong Kong Registrar is only going to do a formal but no substantive examination.
A Hong Kong short-term patent has a term of 8 years. If you want more information on the current patent system in Hong Kong, I recommend you to read Professors Michael Pendleton and Alice Lee's authoritative book called 'Intellectual Property in Hong Kong' (published 2008 by LexisNexis).
New System
October 4, 2011, the Hong Kong government invited the public and stakeholders to give their view (until December 31, 2011) on how Hong Kong's patent system can be improved. See the consultation paper here. Three questions were posed:
1A It is important for Hong Kong as a regional innovation and technology hub that Hong Kong can grant its own patents. This will improve the investment climate for R&D activities. Now companies and universities that want to protect their inventions have to first get a patent from SIPO or UKPO or EPO before they can get a patent to protect and enforce their patents in Hong Kong.
1B The consultation paper is less neutral than one would expect. "For an economy like Hong Kong where the size of the local market is a relatively small part of the global market, going straight to route (a) in paragraph 1.45 above [i.e. in-house substantive examination] is probably out of the question, as it may well result in disproportionately high registration fees up-front." According to the writers of the consultation paper, which are the Commerce and Economic Development Bureau and Intellectual Property Department, it is more viable that on the short to medium term the substantive examination is outsourced (just as in Macao and Singapore) and on the long term, when Hong Kong has gained expertise is this area, to do the substantive examination. I agree with that. Hong Kong will not get any expertise if they do not start. Hong Kong should establish a HKPO and sent some of the HKPO employees to other Patent Offices around the world, to get experience and recruit some experienced Patent Office people from other countries. Search and substantive examination could not only be done in Hong Kong for the HKPO, but for other POs as well. If Denmark, with a population of only 5.5 million can do that for Singapore, then Hong Kong might be able to do it for other countries, if they got some expertise in this field. If Hong Kong is doing in-house search and substantive examination, a whole knowledge intensive industry will be created, which includes professionals that can establish and search databases for the state of the art in all kinds of technologies, and draft, examine and grant patents. In such a climate more R&D would flourish.
1C Next to the possibility of getting an OGP, the re-registration route of patents from SIPO, UKPO or EPO should continue to be possible. However, this possibility of re-registration should be based on the principle of reciprocity. So if other POs are willing to re-register Hong Kong's OGP then Hong Kong will be willing to re-register the patents they granted.
Reciprocity
The willingness of other countries to accept patent's granted by Hong Kong depends on the quality of Hong Kong's patents but foremost on politics. Since Hong Kong has re-registered patents from SIPO, UKPO and EPO without any reciprocity. Therefore Hong Kong seems to be in an excellent situation to start with these POs to strike deals. Now the good news is that there have been discussions between the Mainland and Hong Kong during the 16th Working Meeting of the Hong Kong/Guangdong Co-operation Joint Conference held February 28, 2011 in Guangzhou, see here. Possibilities of fostering mutual recognition of patent system between the two places under the Mainland and Hong Kong Closer Economic Partnership Arrangement (CEPA). It is thought that "if the Mainland enterprises could apply for internationally recognized standard patents for the products in Hong Kong, it would help them tap the overseas market, thus creating huge business opportunities for the patent industry in Hong Kong.
Legal hub
For Hong Kong the Mainland is the opportunity and threat. When the Renminbi will be convertible somewhere in the future (expected within 5 to 10 years), Hong Kong's position as a financial hub will be outflanked by Shanghai. Hong Kong aspires to become a regional innovation and technology hub. I think Hong Kong is well positioned here. But there are many Mainland cities, such as sistercity Shenzhen, that compete for the same kind of position in the region or a little further away but a formidable competitor: Singapore. But Hong Kong is much nearer the Mainland than Singapore, and Hong Kong has something the Mainland does not have yet. A lot of experience with the rule of law. This is Hong Kong's biggest asset, potentially much more valuable then trading reclaimed land. The rule of law is a crucial condition for sustained economic growth (read professor Randall Peerenboom's paper about it here). For economic growth innovation is a necessity. And innovation is harnessed by patents. In other words: patents can be important for economic growth. And Hong Kong's rule of law creates the right precondition for a effective patent system.
Another strength of Hong Kong is that it is still a trait-d'union between China and the rest of the world. The great universities of Hong Kong prepare skilled professionals that speak English, Chinese and Cantonese. All litigation in Hong Kong can be done in either English or Chinese. This makes it the natural place to bring legal cases, which include Chinese and overseas businesses. Hong Kong could become a legal hub, for litigation, arbitration and mediation where Mainland, Hong Kong and international businesses can solve their legal conflicts.
View Larger Map
In this article:
- I will first give a view of the old system;
- followed by the expected new system;
- then this author will make a case for reciprocity; namely that patents granted by Hong Kong will be mutually recognised, and thus re-registrable by China, the UK and the other members of the European Patent Convention.
- Hong Kong's new patent system could be an important building block to realise the position of legal hub for inter-Chinese and Sino-International commercial conflicts.
Before June 27, 1997, Hong Kong re-registered and enforced patents obtained in the United Kingdom (UKPO) and the European Patent Office (EPO) designating the United Kingdom. After the sovereignty change on July 1, 1997 Hong Kong started to re-register patents obtained in China (SIPO) next to patents obtained at UKPO and the EPO designating the United Kingdom. Hong Kong has accepted patents from SIPO, UKPO, EPO, but because Hong Kong does not grant any standard patents on its own there could be no reciprocity in this respect, so far.
Currently, you can get two kinds of Hong Kong patents:
- Standard patent. You can apply for a standard patent if you have already a patent granted by SIPO, UKPO or EPO, within six months of publication of a patent application in one of the before-mentioned designating patent offices (POs). The Hong Kong's Registrar needs to record the application and publish the request to record in the Hong Kong's Gazette. After both the publication of the request to record the application and the patent was granted in one of the before-mentioned POs, the request for registration of the designated patent and grant of a Hong Kong standard patent can be filed. Then, the Hong Kong Registrar will register the designated patent, grant a Hong Kong standard patent, issue a certificate of the Hong Kong standard patent and publish the specification in the Hong Kong's Gazette. Hong Kong's standard patent has a term of 20 years.
Please note that the substantive examination (novel=not belonging to the prior art, non-obvious and useful) is not done in Hong Kong but in one of the before-mentioned designating POs.
- Short-term patent. There are two routes to apply for a Hong Kong short-term patent.
If you have done an international application or via one of the designating POs for a utility model patent designating China, once that application entered its national phase you have six months to apply for a Hong Kong short-term patent. If you use these route you can use the search report of the international application.
The other route is to file the application with a specification with a description, one or more claims but only one independent claim, an abstract and a search report (prior art search by prescribed searching authority; Austria, Australia, Japan, Russia, Sweden, U.S. and EPO) to Hong Kong Registrar. The Hong Kong Registrar is only going to do a formal but no substantive examination.
A Hong Kong short-term patent has a term of 8 years. If you want more information on the current patent system in Hong Kong, I recommend you to read Professors Michael Pendleton and Alice Lee's authoritative book called 'Intellectual Property in Hong Kong' (published 2008 by LexisNexis).
New System
October 4, 2011, the Hong Kong government invited the public and stakeholders to give their view (until December 31, 2011) on how Hong Kong's patent system can be improved. See the consultation paper here. Three questions were posed:
- 1A. Should Hong Kong be able to grant its own patents (OGP)? 1B If so should Hong Kong outsource search and substantive examination? IC. If Hong Kong gets OGP, whether it should still re-register patents granted by other POs, and if so which POs?
- 2. What should happen to the short-term patent?
- 3. Should the profession of patent agents be regulated?
Questions 2 and 3 are easier to answered:
2. Hong Kong's short-term patent should be more aligned with China's utility-patent and the EPO's and conform this patent the term should be extended to 10 years.
3. The lower the barriers to enter this profession the better. The market is well-equipped to come up with some self-regulation.
1A It is important for Hong Kong as a regional innovation and technology hub that Hong Kong can grant its own patents. This will improve the investment climate for R&D activities. Now companies and universities that want to protect their inventions have to first get a patent from SIPO or UKPO or EPO before they can get a patent to protect and enforce their patents in Hong Kong.
1B The consultation paper is less neutral than one would expect. "For an economy like Hong Kong where the size of the local market is a relatively small part of the global market, going straight to route (a) in paragraph 1.45 above [i.e. in-house substantive examination] is probably out of the question, as it may well result in disproportionately high registration fees up-front." According to the writers of the consultation paper, which are the Commerce and Economic Development Bureau and Intellectual Property Department, it is more viable that on the short to medium term the substantive examination is outsourced (just as in Macao and Singapore) and on the long term, when Hong Kong has gained expertise is this area, to do the substantive examination. I agree with that. Hong Kong will not get any expertise if they do not start. Hong Kong should establish a HKPO and sent some of the HKPO employees to other Patent Offices around the world, to get experience and recruit some experienced Patent Office people from other countries. Search and substantive examination could not only be done in Hong Kong for the HKPO, but for other POs as well. If Denmark, with a population of only 5.5 million can do that for Singapore, then Hong Kong might be able to do it for other countries, if they got some expertise in this field. If Hong Kong is doing in-house search and substantive examination, a whole knowledge intensive industry will be created, which includes professionals that can establish and search databases for the state of the art in all kinds of technologies, and draft, examine and grant patents. In such a climate more R&D would flourish.
1C Next to the possibility of getting an OGP, the re-registration route of patents from SIPO, UKPO or EPO should continue to be possible. However, this possibility of re-registration should be based on the principle of reciprocity. So if other POs are willing to re-register Hong Kong's OGP then Hong Kong will be willing to re-register the patents they granted.
Reciprocity
The willingness of other countries to accept patent's granted by Hong Kong depends on the quality of Hong Kong's patents but foremost on politics. Since Hong Kong has re-registered patents from SIPO, UKPO and EPO without any reciprocity. Therefore Hong Kong seems to be in an excellent situation to start with these POs to strike deals. Now the good news is that there have been discussions between the Mainland and Hong Kong during the 16th Working Meeting of the Hong Kong/Guangdong Co-operation Joint Conference held February 28, 2011 in Guangzhou, see here. Possibilities of fostering mutual recognition of patent system between the two places under the Mainland and Hong Kong Closer Economic Partnership Arrangement (CEPA). It is thought that "if the Mainland enterprises could apply for internationally recognized standard patents for the products in Hong Kong, it would help them tap the overseas market, thus creating huge business opportunities for the patent industry in Hong Kong.
Legal hub
For Hong Kong the Mainland is the opportunity and threat. When the Renminbi will be convertible somewhere in the future (expected within 5 to 10 years), Hong Kong's position as a financial hub will be outflanked by Shanghai. Hong Kong aspires to become a regional innovation and technology hub. I think Hong Kong is well positioned here. But there are many Mainland cities, such as sistercity Shenzhen, that compete for the same kind of position in the region or a little further away but a formidable competitor: Singapore. But Hong Kong is much nearer the Mainland than Singapore, and Hong Kong has something the Mainland does not have yet. A lot of experience with the rule of law. This is Hong Kong's biggest asset, potentially much more valuable then trading reclaimed land. The rule of law is a crucial condition for sustained economic growth (read professor Randall Peerenboom's paper about it here). For economic growth innovation is a necessity. And innovation is harnessed by patents. In other words: patents can be important for economic growth. And Hong Kong's rule of law creates the right precondition for a effective patent system.
Another strength of Hong Kong is that it is still a trait-d'union between China and the rest of the world. The great universities of Hong Kong prepare skilled professionals that speak English, Chinese and Cantonese. All litigation in Hong Kong can be done in either English or Chinese. This makes it the natural place to bring legal cases, which include Chinese and overseas businesses. Hong Kong could become a legal hub, for litigation, arbitration and mediation where Mainland, Hong Kong and international businesses can solve their legal conflicts.
View Larger Map
Monday, December 12, 2011
Bizarre Chinese Brand Approved By Pro-Life and Pro-Choice
Sometimes it is better to avoid literal translations. This might be an example:
金 jīn 胚 pēi 玉 yù 米 mǐ 油 yóu = gold embryo corn oil. The association with embryos, even if they are golden, and corn oil, is probably not the most conducive to whet one's appetite.
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| Photos are shot in a lift in Fu Tian Ti Yu Gong Yuan, Shenzhen Photos: Danny Friedmann |
Friday, December 09, 2011
TGIF: Vacuum Cleaner Inventor Says The Darndest Things
Thank goodness it is Friday
Sir James Dyson was quoted by Dan Milmo in the Guardian, here, saying:
"They are running the risk of being expelled from the WTO. They are creating an unlevel playing field by taking our technology and selling it all over the world."
"They are running the risk of being expelled from the WTO. They are creating an unlevel playing field by taking our technology and selling it all over the world."
With "they" Mr Dyson means China. I understand Mr Dyson's frustration, but the quote is grotesque. China cannot be simply pulled out of the World Trade Organization (WTO) equation. China is one of its key players. The idea about the WTO is to resolve the issues via a binding dispute resolution system. When Mr Dyson would have said that a dispute resolution procedure could be started against China's lack of IP enforcement or non-compliance of the national treatment principle (treating foreign companies at least as good as domestic ones), it would have made more sense.
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| Police in Shenzhen. Aren't we ... visible? Photo: Danny Friedmann |
In the piece Mr Dyson, who invented the bagless vacuum cleaner and the bladeless electronic fan, makes the following clueless allegations to China:
Mr Dyson backs up his claim with anecdotal, evidence: a patent infringement case he won, but where the infringers did not pay the fine nor stop their infringing activities.
- "China's reputation among foreign investors is being diminished by the flouting of product copyrights and a two-speed patent system that appears to discriminate against non-Chinese applications."
With "product copyrights" probably intellectual property protection is meant, which includes invention-patents, utility-patents, design-patents, trademarks, copyrights and trade secrets. To make such sweeping statements is not useful unless they are backed up by research that gives the status on how the intellectual property rights of British industries or European industries are protected. Until now Chinese foreign direct investments did not correlate much with China's level of intellectual property enforcement level. It seems more to correspond to China's economic growth. And I have not come across evidence that foreign patents on average are examined slower. Very broadly speaking a utility and design patent takes about half a year and an invention patent can take up to two years time.
Dyson, the company, is spending 10 million UK pounds per year on legal costs (according to an article by James Hurley in the Telegraph, see here) and is also inventive to bring the intellectual property in China challenges under the attention of people in British government, such as David Cameron (prime minister) and Baroness Wilcox (IP minister).
Inconvenient truth about intellectual property infringement
A Dyson bagless vacuum cleaner costs about 4,000 Yuan in China. Factory workers in Shenzhen make about 1,200 Renminbi per month and middle class earnings are about 4,000 Renminbi per month. The inconvenient truth is that the more a company has spent on research and development (as is the case with Dyson) or marketing and advertising (as is the case with luxury brands) the bigger the incentive for infringers to ride on the coat tails of some other companies' economic activities.
Thursday, December 08, 2011
Will the iPad Trademark Be Apple's Forbidden Fruit?
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| Must Apple resellers in Dongmen, Shenzhen stop selling iPads? Photo: Danny Friedmann |
Kathrin Hille wrote for the Financial Times (FT) that (mother company) Proview Electronics of Taiwan agreed to sell Apple the “global trademark” for the iPad name for 35,000 UK pounds, according to Proview. "[B]ut the two companies have subsequently disagreed about whether that deal included China", read Ms Hill's FT article here.
Of course there is no such thing as a global trademark, that is why Ms Hill put it between quotation marks. Trademarks are rather territorial creatures. It is beyond my imagination that the lawyers of Apple did not check whether the trademarks for the iPad in China were included. If I would buy something for 35,000 UK pounds, I would check and double check.
When Apple applied for the iPad trademark in China, it was rejected by the trademark office, because Proview Technology already owned the trademark. And Apple sought a declaration of invalidity at the Shenzhen Intermediate People’s Court. The FT reports that the court rejected this request by Apple earlier this week. Apple can, and I am certain, they will appeal.
In the short term Apple has more problems, now that Proview Technology (Shenzhen) has started suing Apple resllers at the Shenzhen Futian District Court (December 30, 2011) and Huizhou Intermediate People's Court (January 7, 2012).
Chongqing Chaotianmen Different From Singapore Marina Sands Bay Architecture
In Chongqing, at Chaotianmen, at the Jiefangbei peninsula where the Yangtze and Jialing rivers come together, the complex designed by architect Moshe Safdie will be build. It is "an almost literal copy of their Marina Sands Bay scheme in Singapore", according to Daan Roggeveen, a Dutch architect quoted by Bert van Dijk, see here.
Mr Safdie is certainly not a lazy architect copying his own work (self-plagiarizing) as alleged by Maurits Elen in Shanghaiist here. Yes, both designs have a platform on top of the towers. Mr Safdie is the one who made that building structure famous and it seems to have become his "trademark". But nobody would say to an architect that is doing another tower, but in a different style, that he is copying himself because he is doing another tower.
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| Overall impression in Singapore will be completely different from the one in Chongqing Photo: Danny Friedmann |
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| Here you see the "card" like supports of the platform in Singapore. Photo: Danny Friedmann |
I do not concur, because it does not do justice to the creative work of Mr Safdie. I have been to the Marina Sands Bay in Singapore and you can see that Mr Safdie was inspired by a deck of cards, see here. The towers that support the platform are like three inverted V shaped cards. Mr Safdie makes clear that for the Chongqing Chaotianmen complex he was inspired by the sails of a ship. And the towers indeed look like curved sails, all to one side.
Mr Safdie is certainly not a lazy architect copying his own work (self-plagiarizing) as alleged by Maurits Elen in Shanghaiist here. Yes, both designs have a platform on top of the towers. Mr Safdie is the one who made that building structure famous and it seems to have become his "trademark". But nobody would say to an architect that is doing another tower, but in a different style, that he is copying himself because he is doing another tower.
Monday, December 05, 2011
China Wants Legally-Binding Climate Agreement, But Has Many Demands
The degradation of the environment is China's biggest challenge. Remember March of this year (2011), when the Chinese government released its 12th Five-Year Plan it emphasised sustainable economic growth and came up with policy objectives and quantitative targets that foster green technology. It also announced that there must be a 16 percent cut in energy consumption per unit of GDP by 2015, see here. 600 billion dollar is projected to, among other sectors green energy, environmental protection and innovation, read here. Great, so the Chinese government finally seems to take the environment serious? Not so fast. Let us see what China's role will be within the Conference of the Parties (COP 17). This United Nations Framework Convention on Climate Change is taking place from 28 November to 9 December 2011 in Durban, South Africa, to discuss how to stop global warming.
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| China might be willing to sign a climate deal... Do not hold your breath. On second thought, you'd better hold your breath. Photo: Danny Friedmann |
The economic troubles in Europe and the U.S. are probably not conducive to get an extension of the non-binding Kyoto commitments. India and South Africa are repeating the argument that developing countries are exempt from obligations to cut carbon dioxide, because they cannot afford to jeopardise economic growth for more environmentally responsible production. However, China seems open for a legally binding agreement for the period starting in 2020, according Marlow Hood's Agence France Presse article, under certain conditions:
- China wants the Kyoto commitments to become enforceable.
- European Union and "other countries" sign on to a new round of enforceable pledges under Kyoto.
- Countries need to invest in a 30 billion U.S. dollar "Fast start" climate fund for poorer countries for the period 2010-2012.
- Countries need to invest in a 100 billion U.S. dollar per year Green Climate Fund by 2020.
- The process started during the 2009 Copenhagen summit and continued in Cancun, Mexico must move forward. So, deals must be made about technology transfer, adaptation, helping vulnerable nations cope with impacts, and new rules for verifying that carbon-cutting promises are kept.
- The effects of China's carbon-cutting measures can be reviewed as of 2013. And to keep some diplomatic wiggle room China expects that "established principles in which historical responsibility for creating the problem of climate change, and the respective capacity of countries to fight it, are respected."
That is quite a wish list. And making your commitment or obligation contingent on the fulfillment of all these conditions is a recipe for failure. However, each condition seems reasonable. But the real question of course is what China is willing to agree upon. Mr Xie did not say anything about that. From a diplomatic point of view that is probably wise. We will see what kind of results will pan out of this conference.
Follow the conference live, here.
Green Innovation Should Be Patent Free Zone?
Since the environment is such a big problem, should not green technology be free of patents to that technology transfer and absorption goes fastest. I have not read any studies on this particular topic, but it probably will hold back investments of some companies in new green innovation. Patents can stifle innovation when licenses are too expensive (and then there are compulsory licenses, which have never been used in China, yet), but they can also be an incentive for other companies to invent around it, so that newer and sometimes better technology will be invented.
Tuesday, November 29, 2011
Think IP Strategy Workshop 23 November 2011 Shanghai
By Mathijs van Basten Batenburg
Seated behind a complimentary piece of paper and a familiar red and black Staedtler design pencil (made by Cheunghwa) I listened to our host of the day – Mr Duncan Bucknell- who introduced us to TIS and the way they aim to help their clients. He stressed the importance of a broad approach towards a company’s IP strategy and illustrated the importance of information gathering by a story about Alexander the Great who defeated a larger Persian army just by getting his intelligence right.
The key point Duncan made was that since business is getting ever more international, this means that the way a company will have to manage its IPR will increasingly call for an international perspective. Given the wide array of possible IPR, and the ways to utilize these, it therefore stands to reason that these days an effective approach towards IPR management can not simply be limited to claiming and enforcing IPR on a case to case basis. Companies will ever more often have to formulate a comprehensive strategy to successfully handle their IPR protection, taking into account their business strategy –such as the markets relevant to them- and preferred ways to use IPR to defend their positions. Obviously TIS’s focus is on advising on these issues. Law firms generally have a deep knowledge of their own jurisdiction but might miss the international and business perspectives. TIS aims to bridge this gap.
From Persian elephants that got routed by Greek archers we moved to the ancient game of “围棋”, known in English as “Go”. Apeng Shang listed many aspects that were good to bear in mind when working out your IP strategy. Quite a few sounded more like good business practise to me, such as improving the communication between legal and other departments, or working from a strategy instead of ad-hoc. However, although a lot of these points might sound like “common sense”, I have to admit that also in large multinational companies these bases are not always covered.
The third part was a nice horror story about a Chinese company that had a bright (patentable) idea, but missed out because they didn’t play their cards right. Step by step the company sunk deeper in a quagmire of issues, being out manoeuvred by competitors and abandoned by its business partners. Some lessons we should learn from this are: be pro-active regarding IP strategy and be practical (don’t only look at the legal points). As for being practical: it might help that Duncan also qualified as veterinarian; I imagine this profession teaches people to be more practical than law school does. In general it was an interesting pitch and TIS convinced me of having a refreshing and valuable approach towards dealing with a company’s IP.
Text Mathijs van Basten Batenburg
Outsmart the Outlaw
“The Art of Strategy”
By Michiel Tjoe-Awie
For today (November 24) Danny Friedmann has asked me to attend a workshop in Beijing that focuses on protecting patents. The presentation is hold by Duncan Bucknell (CEO) and Shang A Peng from "Think IP Strategy".
Mr. Bucknell started more than 10 years ago as a Australian attorney in Melbourne. Now he has offices in 10 countries. On his business card it says: ”IP Strategist, Lawyer & Patent Attorney”. Today’s presentation is one long argument to support the order in which he presents himself: the Strategist comes first.
For long Bucknell has many clients, operating or with a wish to operate in China, asking questions about how to protect their IP from Chinese competitors or potential perpetrators. Nowadays these old clients have to share his attention with many Chinese companies who came knocking on his door about how to protect themselves from home competitors or how to survive IP-wise in foreign markets.
This new diversity is reflected in today’s attendees. They represent pharmaceuticals, high-tech companies, lawyers and consultants. Both Chinese and Foreign. Law, health and technology, add education and you have the stardust countries are made off. Thus worth protecting one might say.
Let me start with introducing some of the challenges the Chinese judicial systems entails. China lacks a case law system which often results in comparable cases that are differently judged in different provinces and even in different cities. Adding to this: outside well developed provinces like Beijing, Shanghai, Jiangsu and Guangdong the probable outcome of cases is further mystified by judges who are not properly equipped to deal with the highly specialized character of patent law. A two years old proposal to follow the American example in creating a central court system to trial all patent cases, died a silent death. It’s whispered that the Chinese supreme court had other priorities. But one might speculate that local judges fearing erosion from their power also played a role in blocking this proposal. Last but not least: in China a party committee can overthrow a courts decision if this decision contradicts with party policy.
The last concern seems to decrease in importance now the Chinese party has declared and actively proven to be pro IP. The government, in it’s hope that incentives will spur innovation in China, subsidizes many Chinese companies as long as they are filing a minimum amount of patents. But sometimes the effect contradicts the purpose. A lot of “empty patents” or patents with weak innovative power are filed just to meet the subsidy guidelines. Other companies collects patents with only one purpose: to dazzle their competitors by repeating over and over again, with over with out ground: “That’s my idea it’s already patented, you are infringing!”. For newcomers it might not be worth the risk of proving that what might be a real innovative idea is not an infringement of one of the patents from existing companies. Afraid of the legal misery that might awaits them they back off.
A diffuse landscape to operate in, it seems. However comparing India, Russia and China the Australian strategist concludes that China in many cases has the best environment to protect company patents and role out an effective IP-strategy.
Bucknell and with him all attendees I have spoken to, agree that the legal environment to pursue IP rights has, in accordance with the party line, indeed improved in recent years. But a more important reason for Bucknell to state his claim is that although China’s system might not seem logical or even just in the eyes of many Western legal scholars, a more practical man might be able to look through this and to discover a system.
Understanding the machinations of this system is key in advising a company on protecting it’s IP-interests. This is why Bucknell calls himself a strategist rather than a lawyer. He proposes a holistic solution. Therefore the first question meeting a new client is not: show me a list of your patents but what do you want to achieve as a company or more precise: what is your business plan?
Sometimes it is wise to discourage a client to enter a market because it seems impossible to protect a patent, often the solution lays in buying or working closely together with other parties, preferable local Chinese companies. Bucknell calls this process getting to know the IP-landscape and act accordingly.
To be of good assistant to his clients Bucknell’s “international war-team” is a combination of Australian straight forwardness, knowledge of old and new Chinese culture and the way this effects the behavior of officials and local competitors and American military accuracy in locking the back door[1].
By combining these powers Bucknell tries to detect more or less predictable behavior of stakeholders including officials and courts to wrap his strategy around this behavior.
The difference between a lawyer and a strategist? A lawyer will bill you for the hours he makes filing and protecting or trying to protect patents, a strategist is focused on increasing profits instead of winning or losing cases. Some of the key advices that were discussed during the workshop are:
- The best IP-strategy relies on a business strategy. What can you do to protect your interests outside the help of the law?;
- Know your market (the IP-landscape) and act accordingly;
- Look for local partners to help you find your way (you even might find that it is sometimes more effective to buy a company than to fight this company);
- Be aware that aggressive behavior (being over protective, a strategy that focuses more on fighting than on working together) might not be the most beneficial behavior. Clients, manufacturers and competitors often have overlapping interests;
- (Nevertheless) establish an appropriate reputation for enforcement;
- (And) built your relationships selectively;
- Technological superiority might not be what the market wants most. Thus, build your IP-strategy around the products that are in a market where the competition is fiercest (don’t be blinded by your idealism and the possible technological superior future of your product and forget to protect your current cash cows);
- Shelf companies can veil the name of the owner company and thereby distract competitors who are closely watching you filing your patents.
By building a proper IP-strategy you outsmart your competition or potential perpetrators rather than fighting them in court. Doing so is in line with an ancient Chinese health system that reimbursed its doctors according to the amount of citizens they were supposed to keep healthy rather than to reimburse them according to the illnesses treated. This led to a system in which sickness was prevented and health was flourishing. “Think IP Strategy” aims in a similar way on helping companies to avoid frustrating and expensive court time by building the best prevention system possible.
The Dutch say:” Trust in God but lock your door.” Today’s message goes further: ”don’t rely on the law, rely on strategy and a little bit on Sunzi!”
After the meeting Mr. Bucknell asked me what I think. I tell him that for a non patent specialist there is a lot to process. He comfortingly replies: “Don’t worry we will send everybody sheets…”, to add,”… of course digitally copy and print protected.”
Text Michiel L. Tjoe-Awie
[1] Robert Cantrell has a prominent voice within the Think IP strategy-team, he is ex-American military and wrote a book in which he advices to look back to important Chinese philosophers like Sunzi (Art of War) and Laozi for advice how to create an effective IP-strategy . (Outpacing the Competition: Patent-Based Business Strategy, Robert Cantrell: Wiley 2009)
By Michiel Tjoe-Awie
For today (November 24) Danny Friedmann has asked me to attend a workshop in Beijing that focuses on protecting patents. The presentation is hold by Duncan Bucknell (CEO) and Shang A Peng from "Think IP Strategy".
Mr. Bucknell started more than 10 years ago as a Australian attorney in Melbourne. Now he has offices in 10 countries. On his business card it says: ”IP Strategist, Lawyer & Patent Attorney”. Today’s presentation is one long argument to support the order in which he presents himself: the Strategist comes first.
For long Bucknell has many clients, operating or with a wish to operate in China, asking questions about how to protect their IP from Chinese competitors or potential perpetrators. Nowadays these old clients have to share his attention with many Chinese companies who came knocking on his door about how to protect themselves from home competitors or how to survive IP-wise in foreign markets.
This new diversity is reflected in today’s attendees. They represent pharmaceuticals, high-tech companies, lawyers and consultants. Both Chinese and Foreign. Law, health and technology, add education and you have the stardust countries are made off. Thus worth protecting one might say.
Let me start with introducing some of the challenges the Chinese judicial systems entails. China lacks a case law system which often results in comparable cases that are differently judged in different provinces and even in different cities. Adding to this: outside well developed provinces like Beijing, Shanghai, Jiangsu and Guangdong the probable outcome of cases is further mystified by judges who are not properly equipped to deal with the highly specialized character of patent law. A two years old proposal to follow the American example in creating a central court system to trial all patent cases, died a silent death. It’s whispered that the Chinese supreme court had other priorities. But one might speculate that local judges fearing erosion from their power also played a role in blocking this proposal. Last but not least: in China a party committee can overthrow a courts decision if this decision contradicts with party policy.
The last concern seems to decrease in importance now the Chinese party has declared and actively proven to be pro IP. The government, in it’s hope that incentives will spur innovation in China, subsidizes many Chinese companies as long as they are filing a minimum amount of patents. But sometimes the effect contradicts the purpose. A lot of “empty patents” or patents with weak innovative power are filed just to meet the subsidy guidelines. Other companies collects patents with only one purpose: to dazzle their competitors by repeating over and over again, with over with out ground: “That’s my idea it’s already patented, you are infringing!”. For newcomers it might not be worth the risk of proving that what might be a real innovative idea is not an infringement of one of the patents from existing companies. Afraid of the legal misery that might awaits them they back off.
A diffuse landscape to operate in, it seems. However comparing India, Russia and China the Australian strategist concludes that China in many cases has the best environment to protect company patents and role out an effective IP-strategy.
Bucknell and with him all attendees I have spoken to, agree that the legal environment to pursue IP rights has, in accordance with the party line, indeed improved in recent years. But a more important reason for Bucknell to state his claim is that although China’s system might not seem logical or even just in the eyes of many Western legal scholars, a more practical man might be able to look through this and to discover a system.
Understanding the machinations of this system is key in advising a company on protecting it’s IP-interests. This is why Bucknell calls himself a strategist rather than a lawyer. He proposes a holistic solution. Therefore the first question meeting a new client is not: show me a list of your patents but what do you want to achieve as a company or more precise: what is your business plan?
Sometimes it is wise to discourage a client to enter a market because it seems impossible to protect a patent, often the solution lays in buying or working closely together with other parties, preferable local Chinese companies. Bucknell calls this process getting to know the IP-landscape and act accordingly.
To be of good assistant to his clients Bucknell’s “international war-team” is a combination of Australian straight forwardness, knowledge of old and new Chinese culture and the way this effects the behavior of officials and local competitors and American military accuracy in locking the back door[1].
By combining these powers Bucknell tries to detect more or less predictable behavior of stakeholders including officials and courts to wrap his strategy around this behavior.
The difference between a lawyer and a strategist? A lawyer will bill you for the hours he makes filing and protecting or trying to protect patents, a strategist is focused on increasing profits instead of winning or losing cases. Some of the key advices that were discussed during the workshop are:
- The best IP-strategy relies on a business strategy. What can you do to protect your interests outside the help of the law?;
- Know your market (the IP-landscape) and act accordingly;
- Look for local partners to help you find your way (you even might find that it is sometimes more effective to buy a company than to fight this company);
- Be aware that aggressive behavior (being over protective, a strategy that focuses more on fighting than on working together) might not be the most beneficial behavior. Clients, manufacturers and competitors often have overlapping interests;
- (Nevertheless) establish an appropriate reputation for enforcement;
- (And) built your relationships selectively;
- Technological superiority might not be what the market wants most. Thus, build your IP-strategy around the products that are in a market where the competition is fiercest (don’t be blinded by your idealism and the possible technological superior future of your product and forget to protect your current cash cows);
- Shelf companies can veil the name of the owner company and thereby distract competitors who are closely watching you filing your patents.
By building a proper IP-strategy you outsmart your competition or potential perpetrators rather than fighting them in court. Doing so is in line with an ancient Chinese health system that reimbursed its doctors according to the amount of citizens they were supposed to keep healthy rather than to reimburse them according to the illnesses treated. This led to a system in which sickness was prevented and health was flourishing. “Think IP Strategy” aims in a similar way on helping companies to avoid frustrating and expensive court time by building the best prevention system possible.
The Dutch say:” Trust in God but lock your door.” Today’s message goes further: ”don’t rely on the law, rely on strategy and a little bit on Sunzi!”
After the meeting Mr. Bucknell asked me what I think. I tell him that for a non patent specialist there is a lot to process. He comfortingly replies: “Don’t worry we will send everybody sheets…”, to add,”… of course digitally copy and print protected.”
Text Michiel L. Tjoe-Awie
[1] Robert Cantrell has a prominent voice within the Think IP strategy-team, he is ex-American military and wrote a book in which he advices to look back to important Chinese philosophers like Sunzi (Art of War) and Laozi for advice how to create an effective IP-strategy . (Outpacing the Competition: Patent-Based Business Strategy, Robert Cantrell: Wiley 2009)
Monday, November 21, 2011
Patents, Trade and Innovation in China, December 13, 2011 George Washington Law School
George Washington University Law School and Fordham Law School have organised a public discussion on “Patents, Trade and Innovation in China." The goal is conveying practical Strategies for engaging China.
When: December 13, 2011
Where: George Washington Law School.
Who are your discussion partners? The "lineup" is experienced and knowledgeable:
- David Kappos, director USPTO;
- Chief Judge Rader, Court of Appeals for the Federal Circuit;
- Professor Mark Cohen (Fordham), who worked as director international IPR at Microsoft and before that, did a lot of negotiating with the Chinese government as senior IPR attache for the U.S. government;
- Professor Carl Minzner (Fordham), who wrote an interesting article called 'China's Turn Against Law' about China's policy to de-emphasis formal law and court adjudication. I think this also applied to intellectual property conflicts for a long time, but since the last few years I have noticed things are changing.
If you are interested in participating in the discussion RSVP to iplaw@law.gwu.edu with the subject line: “China Conf.”
Shenzhen Intellectual Property Index Starts Before Hong Kong's
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| Race has only just begun, everything is still possible... |
Read Anita Lam's SCMP article here. Hat tip to Ron Yu.
Sunday, November 13, 2011
Hu in Honolulu: Reform into Open Green Innovative Economy
During the CEO summit of the Asia-Pacific Economic Cooperation (APEC) in Honolulu on November 12, China's president Hu Jintao announced 4 points to continue economic growth. All points are relevant to intellectual property rights.
Is American Superconductor Fighting Chinese Windmills?
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Don Quixote: "Do you see over yonder, friend Sancho,
thirty or forty hulking giants?"
Sancho Panza: "What giants?"
|
In Don Quixote, Miguel de Cervantes' masterpiece (1605 part I, 1615 part II) Cervantes wrote that Quixote was tilting at windmills, because he thought they were ferocious giants. This lead to the English expression: "tilting at windmills", which means: "attacking imaginary enemies" or "fighting unwinnable or futile battles".
American Superconductor is suing its former largest customer Sinovel Wind Group Co. of Beijing in several law suits in China for alleged trade secret theft and "copyright" (I think it might be patent and copyright) infringements.American Superconductor is seeking 1.2 billion dollar in damages.
Is American Superconductor the 21st century version of Don Quixote?
In June 2011, American Superconductor discovered an imperfect replica of its software in a Sinovel wind turbine. Then they found the possible leak, an engineer at a subsidiary in Austria, who was sentenced to a year in prison.
American Superconductor chief exectuvie Daniel McGahn was quotes saying that they had strong evindence against Sinovel and that hundreds of emails between senior Sinovel staff members and our now incarcerated former employee were found. That these messages give a detailed account of the timetable of the crime and show that certain senior level Sinovel employees knew that these intellectual property rights were illegally obtained.
To find trade secret thiefs can be elusive. Unless your company have the right safety procedures in place so that trade secret theft can be avoided or at least traced, courts will think you are fighting an imaginary enemy, just like Don Quixote was doing. So protect your company so that your battles will be neither unwinnable nor futile.
Thursday, November 10, 2011
Think IP Strategy Has A Free Seminar in Shanghai and Beijing
Think IP Strategy has two promising events:
- Building a first class IP Strategy for a Product;
- Establishing Global IP Freedom of Action to Compete on the World Stage;
- 6 Ways to Improve your IP Strategy.
- November 23 in Shanghai
- November 24 in Beijing
- Building a first class IP Strategy for a Product;
- Establishing Global IP Freedom of Action to Compete on the World Stage;
- 6 Ways to Improve your IP Strategy.
Speakers will be:
- Duncan Bucknell, founder and CEO of Think IP Strategy, which exists out of a team of eleven experts in the field of IP. In his free time Duncan authored the book Pharmaceutical, Biotechnology and Chemical Inventions World Protection and Exploitation, which is full of invaluable information, and is not expensive if you divide the 2,536 pages through the price. Duncan thinks and breathes intellectual property. He is the initiator of IP Think Tank, which provides weekly all-inclusive overviews of the IP related news, see here.
- Apeng Shang, Consultant and China Specialist of Think IP Strategy with a decade of experience.
Find more information the events here.
Wednesday, November 09, 2011
Sunday, November 06, 2011
Star-struck and Creatively Challenged Movie Poster
A U.S. movie and Taiwanese movie poster both use the sky of Starry Night by Vincent van Gogh. Independently created? I have seen both movies, and beside the poster, they have nothing in common.
Starry Night also inspired Starry Starry Night by Don McLean's, listen to it here.
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| Woody Allen's Midnight in Paris September 2011 |
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| Tom Lin's 星空 (Starry Starry Night), Taiwan November 2011 |
Saturday, November 05, 2011
Chinese Trade Secret Cases via Internet Might Be Tip of The Iceberg
Foreign Spies Stealing US Secrets In Cyberspace, Report to Congress on Foreign Economic Collection and Industrial Espionage 2009-2011 is published this October, see here.
In the report both China and Russia were named as the most important culprits in the area of misappropriation of intellectual property and stealing trade secrets. The reports confirms that data on the internet are, indeed, vulnerable to cyber attacks. And that corporate victims are, indeed, not very eager to share to the world that they there information has been stolen because they do not want to expose the vulnerabilities in their system to their world.
The most interesting of the report is that only so little corporate trade secret thieves were caught. Based on the sheer number of inhabitants in China these cases below must have been the tip of the iceberg:
In the report both China and Russia were named as the most important culprits in the area of misappropriation of intellectual property and stealing trade secrets. The reports confirms that data on the internet are, indeed, vulnerable to cyber attacks. And that corporate victims are, indeed, not very eager to share to the world that they there information has been stolen because they do not want to expose the vulnerabilities in their system to their world.
The most interesting of the report is that only so little corporate trade secret thieves were caught. Based on the sheer number of inhabitants in China these cases below must have been the tip of the iceberg:
- "In a February 2011 study, McAfee attributed an intrusion set they labeled “Night Dragon” to an IP address located in China and indicated the intruders had exfiltrated data from the computer systems of global oil, energy, and petrochemical companies. Starting in November 2009, employees of targeted companies were subjected to social engineering, spear-phishing e-mails, and network exploitation. The goal of the intrusions was to obtain information on sensitive competitive proprietary operations and on financing of oil and gas field bids and operations." (p. 5)
- "In January 2010, VeriSign iDefense identified the Chinese Government as the sponsor of intrusions into Google’s networks. Google subsequently made accusations that its source code had been taken—a charge that Beijing continues to deny." (p.5)
- "Mandiant reported in 2010 that information was pilfered from the corporate networks of a US Fortune 500 manufacturing company during business negotiations in which that company was looking to acquire a Chinese firm. Mandiant’s report indicated that the US manufacturing company lost sensitive data on a weekly basis and that this may have helped the Chinese firm attain a better negotiating and pricing position." (p. 5)
- "Participants at an ONCIX [Office of the National Counterintelligence Executive] conference in November 2010 from a range of US private sector industries reported that client lists, merger and acquisition data, company information on pricing, and financial data were being extracted from company networks—especially those doing business with China." (p.5)
- "Dongfan Chung was an engineer with Rockwell and Boeing who worked on the B-1 bomber, space shuttle, and other projects and was sentenced in early 2010 to 15 years in prison for economic espionage on behalf of the Chinese aviation industry. At the time of his arrest, 250,000 pages of sensitive documents were found in his house." (p. 2) Read the Bloomberg article Ex-Boeing Engineer Chung Guilty of Stealing Secrets by Edvard Pettersson, here.
- "David Yen Lee ... chemist with Valspar Corporations ... between late 2008 and early 2009 used access to internal computer network to download about 160 secret formulas for paints and coatings to his own storage media ... intended to take his proprietary information to a new job with Nippon Paint in Shanghai, China ... arrested March 2009 ... pleaded guilty to one count of theft of trade secrets; sentenced in December 2010 to 15 months in prison." (p. 4) Read the article Trade Secrets: They're Not Just for Civil Actions Anymore. New Justice Department Task Force Takes Aim At Prosecuting Trade Secret Theft by Robert Silverman of Foley and Lardner, here.
- "Men Hong ... DuPont Corporation research chemist ... in mid-2009 downloaded proprietary information on organic light-emitting diodes (OLED) to personal e-mail account and thumb drive ... intended to transfer this information to Peking University, where he had accepted a faculty position; sought Chinese government fundting to commercialize OLED research ... arrested October 2009 ... pleaded guilty to one count of theft of trade secrets; sentenced in October 2010 to 14 months in prison." (p. 4) Read the Computerworld article DuPont sues Chinese scientist for trade-secret theft by Jaikumar Vijayan here.
- "Yu Xiang Dong (aka Mike Yu) ... product engineer with Ford Motor Company who in December 2006 accepted a job at Ford's China branch ... copied approximately 4,000 Ford documents onto an external hard drive to help obtain a job with a Chinese automotive company ... arrested in October 2009 ... pleaded guilty to two counts of theft of trade secrets; sentenced in April 2011 to 70 months in prison." (p. 4) Read the WSJ article China Singled Out for Cyberspying by Siobhan Gorman here.
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