In February 2013, the Supreme People’s Court (SPC) rendered a decision [The SPC Administrative Order (2012) Zhi Xing Zi No. 9] (the SPC No. 9 Order) on the re-trial case of the trademark “Duck King in Chinese” filed by Shanghai Huai Hai Duck King Roast Duck Restaurant Co., Ltd. (previously named as Shanghai Huai Hai Quanjude Roast Duck Restaurant Co., Ltd., hereinafter as “Shanghai Duck King”).

More and more multinational companies (MNCs) are realising that, as an indispensable part of a global IP strategy, importance of successfully enforcing IP right in China cannot be overstressed. Besides administrative remedy, initiating IP infringement lawsuit in China is widely considered as a feasible yet challenging measure for enforcing IP rights.

This article is the English translation for Mr. Wang’s article in Chinese published on China Trademark magazine (Issue 3, 2011). China Trademark magazine is sponsored by China Trademark Association under supervision of the State Administration for Industry and Commerce (SAIC) overseeing the Chinese Trademark Office (CTMO) and the Trademark Review and Adjudication Board (TRAB).

The DUCK KING trademark re-trial is listed as No. 7 of China 2013 Top 10 Innovative IP Cases (published by the Supreme People’s Court on April 21, 2014).
The English translation below [CASE BRIEF and INNOVATIVE SIGNIFICANCE] is prepared by Beijing East IP Law Firm for reference merely, based on Chinese Language Version published by the Supreme People’s Court. Beijing East IP Law Firm also provides comments and analysis on this case.

Article 31 of the Chinese Trademark Law states that “using unfair means to preemptively register the trademark of some reputation of another person has used” shall not be registered.　According to the provision’s language, fame of the prior mark and the bad faith of the trademark applicant are the two applicable elements of the bad faith filing prescribed by Article 31.

On March 17, 2014, the State Intellectual Property Office (SIPO) issued Order No. 68. Under this Order, graphic user interface (GUI) is becoming eligible for design patent protection as of May 1, 2014.

Since the reform and opening-up in 1978, China has seen huge increase of foreign direct investment. More and more foreign companies have set up their R&D centers in China, hence making more and more invention-creations therein.

As a famous luxury hotel band around the world, the RITZ-CARLTON mark owned by Ritz-Carlton hotel was recognized by China court recently. Both the trial court (Beijing First Intermediate Court) and the appellate court (Beijing High Court) overruled the decision of the Trademark Review and Adjudication Board (TRAB), and recognized the RITZ-CARLTON mark on hotel services and restaurant services as a well-known mark.

China is becoming an arena of significant importance where companies are taking advantage of patent portfolios against competitors. According to “2012 Intellectual Property Rights Protection in China” issued by State Intellectual Property Office of China, in 2012, local people’s courts around China accepted 9,680 patent civil cases, with year-on-year increase of 23.80%.

This “Guidance on Hearing Rewards or Remunerations Disputes of Service Invention Made by an Employee-Inventor or Designer” was promulgated by IP tribunal of Shanghai High People’s Court in June, 2013.