Dear readers,
We start this issue of Gossip with some amazing news: actually, you can find it at the end of the issue, but we are so excited that we can't wait to let you know: HFG is among the top 100 trademark agencies in China! Selected from over 32,000 agencies registered with CNIPA. Isn't that fantastic?
Ok, now back to the topics with a question: Will the CNIPA's recent decision to make online oppositions mandatory be a problem for famous brands?
And then another question: What is Apostille Convention and how it works? Don't worry – we give you the answers too!
The third article talks about the first case where the Anti-unfair Competition Law is cited by the court to protect a foreign GI across industries in China (cars and drinks involved – you have something to talk about with your buddies!).
While trademark filing in bad faith is old news for CNIPA, on the patent-side, bad faith patent applications have not had the proper attention they deserve. But something is changing...
Emblematic on design side the victory of Decathlon, that won a 1st instance case in a civil litigation against Guangdong Camel Clothing, a well-known domestic outdoor sports brand company, for unauthorized use of several distinctive elements, and particularly for imitating the store design and decoration.
Another big question (with answer, again!): What do foreign companies need to know about data privacy when dealing with China? And then an explanation about why class 35 is so popular in China.
Finally, we give you an overlook about the "Law on the Protection of Rights and Interests of Women" (Women Protection Law) of which the revision becomes effective since 2023.
Enjoy reading and get ready for the festivities to come!
HFG Law & Intellectual Property
IP CHINA – Opposition goes digital: a problem for famous brands!?
Fabio Giacopello, April Fan
HFG Law & Intellectual Property
Recently, on October 7th, 2023, the CNIPA published an official Notice by which it informed that, starting from December 1st, 2023, for all opposition cases, trademark agencies "should submit electronic applications through the trademark online system, and no longer submit paper materials".
With this move Chinese trademark agencies will not anymore be able to use the traditional paper system and can only rely on CNIPA online system to file oppositions. Being the Notice only applicable to trademark agencies, it seems that IP owners can still file paper oppositions (if not formally represented by trademark agencies).
We understand that CNIPA is trying hard - and this is much appreciated! - to accelerate the trademark examination and granting process, even in cases where rejection and/ or opposition are encountered.
Indeed, we have first-hand experience that online system for trademark filing, appeal against preliminary rejection and opposition works better in terms of total time of the process comparing to the paper system. The online system ensures a faster processing than the paper system.
The online system for oppositions has been already in place from quite some time and therefore this should not be an issue for trademark agencies that have already created and used CNIPA online system. For those agencies that have not used online system, they have to move quickly and adopt it.
However, we foresee some issue with oppositions online system especially for famous brands with large reputation evidence file. The online system allows the opposition applicant to upload a maximum of 250MB, while a typical file for an opposition relating a trademark which enjoys certain reputation or is well-known might go up to 1 or 2 GB. Reputation is a heavy burden.
In the current practice trademark agents deal with the maximum storage issue by using the paper procedure and physical filing of materials (usually in CD-Rom), meaning that, despite the availability of the online system, they have kept filing oppositions via the paper system circumventing the 250MB limit.
Now, with the abolition of the paper filing system this possibility will be stopped and the storage space in the online system is clearly not enough for oppositions in which the opponent is an IP owner of a trademark which enjoys certain reputation or is well-known.
Now, in this coming scenario, Chinese IP owners can still file oppositions using the paper system and not using a trademark agent that can only use the online system. A trouble, with some kind of solution.
Foreign IP owners instead need - by law - to appoint a local trademark agent to file any procedure at CNIPA and therefore they only have the possibility to file oppositions via online system.
This means that foreign IP owners will necessarily have the limit of 250 MB evidence storage. If the foreign trademark is highly reputed or well-known, 250MB of storage space for evidence is not enough. A trouble with no solution, at currently.
If no changes are implanted before December 1st Chinese IP owners of famous brands can still adopt the paper system to file opposition and provide reputation material through this system. On the opposite, foreign IP owners, that necessarily need to appoint an agent, Will suffer the 250MB limit to the storage space.
Given what above, with humble attitude we would suggest CNIPA to put in place solutions as soon as possible since pressure on trademark agents representing foreign famous brands is increasing day by day.
Herein a few solutions we have thought to possibly tackle the 250MB limit.
- CNIPA enlarges the online storage space for all cases or for cases in which well-known or reputed trademark are at stake;
- CNIPA allows filing paper materials for longer time period for trademark agencies (but this would be in contrast with the recently issued notice);
- CNIPA allows that evidence materials are stored into some external online cloud disk reachable with a link provided in the evidence file without possibility to alter the file after the deadline;
- CNIPA allows agencies that represent opponents with certain degree of reputation/opponents that are well-known trademark owners to file opposition in paper when the reputation files are too big.
Meanwhile, considering the worries that no solution will be ready for December 1st, careful attorneys representing foreign famous brands are preparing a special mini reputation file that can fit the 250MB storage space that will be used from December 1st if no solution is found.
[NEWS] Online filing for opposition cases from December 1st 2023
Notice on the Full Implementation of Online Application for Opposition Cases
In order to further enhance the electronic level of trademark opposition applications and promote the green development of the trademark cause, the Trademark Office of the State Intellectual Property Office (SIPO) will fully implement the online application for opposition cases by trademark agencies.
The relevant matters are hereby notified as follows:
- First, from December 1st 2023, trademark agencies for opposition business, in principle, should submit electronic applications through the trademark online service system, and no longer submit paper materials.
- Second, from the date of issuance of this notice to 1st December is the "transitional period" for comprehensively enhancing the online application for opposition cases by trademark agencies, trademark agencies should make all preparations, and agencies which do not have an account in the trademark online service system should apply for registration as soon as possible.
According to the official listing fee from CNIPA, the official fee for e-filing is CNY 450.
At the moment, though, there might be a problem because the maximum upload size of evidence is only 100MB. This limit is too small for opposition cases that require large amounts of evidence to prove the popularity and influence of client's brand.
Hopefully this limit will be expanded by December 1st. See the notice from CNIPA here (in Chinese).
IP CHINA – Apostille for China instead of legalization: what to do?
Reinout van Malenstein
HFG Law & Intellectual Property
The Apostille Convention came into force for China on 7 November 2023. This Convention replaces the traditional and cumbersome legalization process with a single formality: the issuance of a certificate called an Apostille.
An Apostille, issued by the State of origin, authenticates the origin of a public document so that it can be presented abroad in another contracting Country or State. So, it can work for documents that originate outside of China, that needs to be used in China, and vice-versa.
What is an apostille and who issues it?
Apostilles may only be issued by Competent Authorities formally designated by Contracting Parties. Competent Authorities will issue an Apostille once they are satisfied of the authenticity of the signature, stamp or seal on a public document.
The only effect of an Apostille is to certify the authenticity of the signature, the capacity in which the person signing the document has acted, and the identity of the seal or stamp which the document bears. The Apostille does not authenticate the content of the underlying public document.
Notices from Chinese embassies on the Apostille Convention
The embassy of China in the Netherlands, but also many other embassies of China around the world (for example the Chinese embassy in Australia), on 25 October 2023, published a notice on the new system of apostille instead of legalization for continental China.
As similar notices have been published by Chinese embassies worldwide, they need to be checked per the applicable country, even though the language is very similar.
After all, the Convention goes into force on 7 November 2023 for all member states that did not object. And it seems that only India objected.
Apostille instead of legalization
For the Netherlands, the notice mentions that an Apostille shall be issued onto the public documents as referred to in the Convention that are issued in the Netherlands and are to be used in continental China, instead of legalization by Chinese Embassy in the Netherlands.
Hence, from 7 November 2023, the Chinese Embassy in the Netherlands will cease to provide legalization service. For the public documents that are issued in the Netherlands and have to be used in China, therefore please apply for an Apostille from the Dutch authorities. The Convention shall continue to apply to the Hong Kong Special Administrative Region of China and the Macao Special Administrative Region of China.
What needs to be checked in advance?
The notices mention that there is possibility that the public documents with an Apostille be rejected in China. In order to do the maximum so that this not happen, applicants are recommended to check the format, content, time limit, translation and other specific requirements of foreign public documents with relevant Chinese authorities in advance.
More information
For information on applying for an Apostille in any country that is part of the Hague Convention, please contact us. We will guide you in this process for your specific country and case.
To read this article in full, please click here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
