Showing posts with label IPD. Show all posts
Showing posts with label IPD. Show all posts

Monday, January 09, 2012

"Rethinking IP" Round Table HKU - Drake University

Knowles Building, at HKU
Photo: Danny Friedmann
Last Saturday morning, lawyers, academics and students from Hong Kong, Macau, Singapore, Australia, Japan and the U.S., all passionate about intellectual property rights, gathered at the University of Hong Kong for a round table discussion on intellectual property and policy. It was organised by the Law & Technology Centre of the University of Hong Kong (HKU) and the Intellectual Property Law Center at Drake University Law School located in Des Moines, Iowa. The 10th floor of the Knowles building with its great wooden concentric structure accommodated the participants for this purpose.

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.

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. 

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.
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Sunday, June 19, 2011

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.
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Tuesday, April 19, 2011

Why Could Polo Ralph Lauren/Burberry Clone Get Trademark In Hong Kong?

The outdoor advertisement of Polo Santa Roberta no longer has the
Burberry tartan pattern background

"Buy one get one free"
Is this what luxury goods manufacturers such as
Polo Ralph Lauren and Burberry want to be associated with? 

Here you can see the ® of registered trademark on the promotional poster

Still Polo Santa Roberta bags use Burberry-like tartan patterns
Polo Santa Roberta shop seen yesterday in Mongkok, Hong Kong. Remember my January 2011 posting when I thought that these kinds of shops were closed in Hong Kong, see here.

Polo Santa Roberta uses the ® of registered trademark in their promotional material. After checking the database of the Intellectual Property Department of Hong Kong, see here, they indeed have registered their brand (which is in my eyes controversial). 

The Polo/Lauren company registered (actual registration) its logo with the polo player with a stick high in the air in combination with the words 'Polo' and trademarks in July 12, 1994 in class 25 and July 17, 1996 in class 42. In February 2, 1999 was the actual registration of the word mark Polo for class 25. 

Santa Roberta Polo & Racoquet Club (owned by Hampton, Winter and Glynn), actual registration for class 25 on January 27, 2006. stick low. See the spelling of Racoquet. 
Polo Santa Roberta (owned by Santa Roberta Polo & Racquet Club International Limited), actual registration for classes 3 and 25 July 7, 2009, stick high in the air. 

I am interested to know why the Trade Mark Registry of the Hong Kong Intellectual Property Department did not refuse the registration of Polo Santa Roberta based on article 12 (3) Trade Marks Ordinance: 

"A trade mark shall not be registered if -
(a) the trade mark is similar to an earlier trade mark;
(b) the goods or services for which the application for registration is made are identical or similar to those for which the earlier trade mark is protected; and 
(c) the use of the trade mark in relation to those goods or services is likely to cause confusion on the part of the public.

Not only The Polo/ Lauren company's trademark is harmed, but the registered designs of Burberry tartan patterns as wel

Polo Santa Roberta shirts are no longer sold at the Ladies Market (女人街) in Mongkok. Instead "Polo" shirts are sold.
Polo shirts with the iconic Polo player logo
 at sale at Ladies Market (女人街), Mongkok, Hong Kong
One "Polo" shirt for 45 Hong Kong dollar (a little over 4 euro),
three for 120 Hong Kong dollar (almost 11 euro)
During the Tang dynasty, early 8th century CE, polo was a popular sport
This figurine can be found at Musée Guimet in Paris 
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Thursday, August 07, 2008

Hong Kong Olympic Games: "Dress Code and Leave Branded Gifts At Home"

Mr Stephen Selby, director of the Intellectual Property Department urges spectators to the Olympic equestrian (horses) event in Hong Kong to abide by the Olympic rules on brand protection and advertising. This means that in the Olympic stadium and venues you can not wear clothes with large or obvious advertising of a brand. If people wear these, they have to remove them or cover them. And spectators cannot carry branded gifts that were handed outside the stadium.

See article 4C House Rules for Spectators (Ticket Holders):
No form of unauthorized publicity, commercial or otherwise, and no form of political propaganda, appearing on flags, banners, clothing, sportswear, accessories or, more generally, on any article of clothing or equipment whatsoever worn or used by spectators, athletes or other participants in the events is permitted. However, this shall not apply to identification of the manufacturer of the article or equipment concerned, provided that such identification shall not be marked conspicuously for the purposes of advertising.

and article 5A House Rules for Spectators (Ticket Holders):
Persons entering venues are prohibited from bringing any of the following items without authority: Any banners, propaganda, leaflets, and/or other promotional and display materials, the contents of which are discriminatory, political, or have any association with the activities described in para. (4) c. and d. above;



Read Mr Selby's press briefing last August 2 here.
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Hong Kong's Top e-filers of Patent, Trademark and Design Right Applications

According to the Intellectual Property Department (IPD) of the Hong Kong Government the top e-filers of all e-transactions in 2008 were:

Ranking Firms
1 UNDISCLOSED
2 DEACONS
3 WILKINSON & GRIST
4 JSM
5 BAKER & MCKENZIE
6 SIT, FUNG, KWONG AND SHUM SOLICITORS
7 CLT PATENT & TRADEMARK (H.K.) LIMITED
8 CHINA.HK INTELLECTUAL PROPERTY SERVICES CO., LTD.
9 MARKS & CLERK
10 NTD PATENT & TRADE MARK AGENCY LIMITED
11 ELLA CHEONG (HK) LIMITED
12 VIVIEN CHAN & CO.
13 HASTINGS & CO.
14 ROBIN BRIDGE & JOHN LIU
15 LIU, SHEN & ASSOCIATES

So who do you think is on number one? Please tell me ipdragon (at) gmail (d0t) com.

Read more here.
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