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IP in Asia 2016: the key takeaways



James Nurton, London


Managing IP hosted our annual IP in Asia Forum in Paris and London, with sessions on China, Japan and South Korea. Here's a summary of the discussions

China

  • The event in London opened with a lively presentation on trade marks in China, including the 2013 revision to the Trademark Act and recent cases. Guan Tang of QMU discussed some of these, in the context of IP and public policy (see her book, Copyright and the Public Interest in China for more details).
  • Among the cases discussed were the controversial Bai-Lun v Xin-Bai-Lun (New Balance) case; note that the second instance decision in this is expected in the next month or so.
  • Speakers from law firm Beijing Sanyou emphasised the importance of sub-classes in China, as well as transliteration and the need to plan your trade mark strategy as early as possible.
  • We were reminded of the scale of IP litigation in China, in a panel run by law firm CCPIT, but also by problems in obtaining large damages awards. There was a warning that counterfeiters are getting smarter, requiring IP owners to work closely with police and other authorities, as well as through education and lobbying: "Patience, perseverance and budget" are key.
  • Representatives of Tyco and Vodafone brought an in-house perspective to the enforcement discussions, and echoed the need to use all available tools - particularly online. It was slightly alarming to hear about the volume of counterfeit fire-system sprinklers coming from China. 
  • In patents, the clear trend in China is that domestic companies are soaring ahead of foreign competitors in terms of the volume of applications, as speakers from Liu Shen illustrated. 
  • They added that the next (fourth) amendment to the Patent Law is expected next year. This may address concerns over both damages (notably punitive damages) and evidence (in particular preservation orders).
  • We had a wide-ranging discussion about crowdsourcing and crowd innovation in a panel led by Sean Cummings of Keltie and featuring Edmont Rao of WTOIP. 
  • In the day's final session, Jamie Rowlands of Gowling WLG and Haibin Xue, general counsel of Hexagon, gave a practical and informative overview of dealing with infringement, and particularly the options for arbitration and mediation in China.

Japan


  • Representatives of Seiwa Patent & Law reviewed recent patent and trade mark developments in Japan. 
  • In patents, two key developments are the recently resurrected opposition system, and a new decision on the doctrine of equivalents (Chugai v TKST Japan) from March this year. 
  • In trade marks, developments since the expansion of non-traditional marks in May last year were reviewed, notably cases involving sound marks and position marks, and the amended guidelines on acquired distinctiveness in April this year.

South Korea

  • Some important changes introduced in 2015 are particularly beneficial for foreign applicants, as attorneys from FirstLaw explained. These include the possibility to obtain a filing date with an English-language description. 
  • Further changes come into effect on June 30, including regarding the refund of official fees when an appeal is withdrawn or dismissed.
  • In litigation, the 2014 case on indirect infringement (involving Nokia) was discussed, and it was noted that there is an appeal pending at the Supreme Court in the entecavir patent case. 
  • An interesting and probably welcome development at the Seoul District Court (the busiest forum for IP cases) is that the judges' tenure is being increased.

The day concluded with a reception and dinner for speakers and sponsors at the Winston Churchill Room in London's Savoy Hotel.


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