Patent Amendments ©(Part II of II)

The Greater China IP Updates – December 2021

By Lyndon

Mainland Chinese Technology Firms Use Injunctions to Fight Claims of Intellectual Property Theft

An Anti-Suit Injunction is a restraining order issued by a court against a party within the jurisdiction of the country to prevent the party from filing or continuing a lawsuit in a foreign court regarding the same or similar dispute that has been accepted in the court. Courts in common law countries such as the United States, the United Kingdom, Australia, Canada, Singapore and Germany have issued anti-suit injunctions previously. Huawei, which had been on the receiving end of several anti-suit injunctions issued by foreign courts, successfully applied for the first anti-suit injunction issued in China against Conversant in 2019. In October 2020, Interactive Digital Corp. brought a lawsuit against Xiaomi to the Delhi High Court in India which upheld Interactive Digital’s application for an anti-anti-suit injunction. However, the most alarming aspect of these cases is that the response of Chinese Courts is to refuse to recognize or enforce foreign anti-suit injunctions or to use the preservation of conduct system to make the aggrieved party drop the suit. As the Chinese court lacks transparency, there are suspicions that the civil procedure rules which permit courts to avoid disclosing a filing of a case until 10 days after the case has been formally established gives a Chinese company a chance to backdate their filing and gain a strategic advantage. The thinking behind this is that, by having daily fines levied against it during this disadvantageous process, the foreign party will move to settle out of court on terms that the Chinese court decides.

China Issues First Mediation Rules for International IP Disputes

The Mediation Center of the China Council for the Promotion of International Trade (CCPIT) issued the Mediation Rules for Intellectual Property Disputes of the Mediation Center of the China Council for the Promotion of International Trade on November 1, 2021. There are four main points.

1. Technical investigations are part of the mediation process. By having technical consultation for technology-centered cases, the level of authentication, auditing, evaluation, and testing will be better and fairer.
2. Multilateral or bilateral mediation mechanisms have been established with the cooperation between the CCPIT and 21 international mediation organizations.
3. Conduits between the uses of various types of dispute resolution are formed under the rules. Mediation, arbitration, and litigation are available for parties to use according to their needs.
4. The rules are in line with the international primary principles of mediation such as autonomy, information confidentiality, convenience, economy, and efficiency. The rules are set to achieve a balance between the respect for party autonomy and the provision of standard and fair mediation procedures.

The notes published by the I.P. Office are accompanied with example drawings and provide a useful tool for the applicant to prepare proper specifications and drawings.

CNIPA’s New Formalities for Petitioning for Protection of Well-Known Marks

Effective September 1, 2021, the China National Intellectual Property Administration (CNIPA) announced that an applicant and their related trademark agency will need to submit a letter of good faith in support of any opposition, opposition appeal, and invalidation submission that includes a claim for well-known protection under Article 13 of the PRC Trademark Law. Accordingly, a document entitled “Letter of Good Faith of the Party Petitioning for Protection of Well-Known Marks” will need to be prepared. The Letter of Good Faith provides that the applicant and the trademark agent are fully aware of the relevant provisions for the determination and protection of well-known marks under the Trademark Law, Regulations on the Implementation of the Trademark Law, Regulations on the Identification and Protection of Well-Known Trademarks, and similar such laws and regulations, and the applicant and the trademark agent will fill out and submit all relevant materials in accordance with the regulations as well as follow the principles of honesty and good faith. The Letter of Good Faith also provides that the relevant information and evidential materials submitted to support opposition, opposition appeal, and invalidation submissions are authentic, accurate, and complete, and that there are no false circumstances, such as forgery, alteration, concealment of evidence, or bribery or coercion of false testimony of others. Further, the Letter of Good Faith states that there are no dishonest acts, such as malicious collusion, and no acts of fraudulently petitioning for protection of well-known marks by other improper means. The CNIPA hasn’t yet confirmed whether an original Letter of Good Faith should be submitted at the time of an initial filing when it involves a foreign entity or whether the original letter can be supplemented 3 months after the initial submission. The best action a foreign applicant can take is to submit an original Letter of Good Faith with the initial submission for each matter that involves an Article 13 claim so as to avoid outright rejection.