Part III: Lessons Learned from Technology Transfer and Essential IP in China/HK

June 16th, the European Chamber of Commerce in Hong Kong (ECCHK) organised together with the European Union Business Information Programme of Hong Kong and Macao the 3rd annual China IPR SME Helpdesk seminar, this time about 'Technology Transfer and Essential IP Strategies for EU SMEs in Mainland China and Hong Kong'. 

For all companies that are involved in adding or acquiring technology to and from China and want to remit the Renminbis earned, this seminar could not have come more timely. You can find Part I here and Part II you can find here.

Peter Cheung, Director of IPD Hong Kong
Photo: Danny Friedmann

Then it was Peter Cheung's turn. Mr Cheung is the Director of Intellectual Property Department, Hong Kong SAR. He has been representing Hong Kong in WIPO law-making conferences. Mr Cheung settled two WTO disputes (DS 174 US versus EU and DS 290 Australia versus EU, both about trademark protection and Geographical Indications). Mr Cheung's message was that Hong Kong should and could become an IP hub. Hong Kong's advantages are, among many more factors, that it is a bilingual special administrative region and that it is part of China.

Claudia Xu, Director of Hong Kong University of Science & Technology
Photo: Danny Friedmann

After this hopeful and optimistic message Claudia Xu, director of Hong Kong University of Science & Technology (HKUST) spoke about the university's technology transfer centre.

Elizabeth Wong, Associate DLA Piper
Photo: Danny Friedmann

Elizabeth Wong, associate of the Intellectual Property & Technology group at DLA Piper Hong Kong, specialised in trademark law. Ms Wong guided the audience through the economically most important IPRs: copyrights, trademarks and patents. She warned that trademark holders that only have an English name should also register a Chinese character trademark, otherwise there is a big chance that the public will come up with a Chinese character version of the brand, as happened in case of Ralph Lauren's Polo, namely 三脚马 (three legged horse), and also with Salvatore Ferragamo 飞甩鸡毛 (fly off the chicken feathers).

Ralph Lauren does not always use the polo player on the pony
Festival Walk, Kowloon, Hong Kong
Photo: Danny Friedmann

Ms Wong's assessment of good and bad Chinese language marks

Ms Wong also assessed some Chinese characters chosen by international brands. My favorite is Heineken: 喜力 (xi3 li3 in Mandarin, but also phonetic in Cantonese hei lik) which means happy power.

Ms Wong explained that one should register your products/services as broadly as possible. She illustrated it with Apple's application for the iPhone trademark in China in 2002. However, under subclass 0901 computers and computer software. In 2004 Hanwang Technology registered the mark iPhone device in subclass 0907 communication and navigation instruments. Apple lost in the opposition and the subjsequent appeal. Apple had to pay Hanwang Technology a substantial amount to get its mark back. China does protect well known marks, but iPhone was at that time not well known, yet.

Philippe Healey, China IPR SME Helpdesk
Photo: Danny Friedmann

The excellent morning was closed by Philippe Healey who gave a good overview of all the services of the China IPR SME Helpdesk. Check out their website here.

Veronica Llorca and her team of the European Chamber of Commerce have again organised an insightful and inspiring event. Thank you Veronica.

Part I you can find here.
Part II you can find here.