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It can be seen from the newest “Apple Peel” sample that Pan ... infringes Apple Inc.'s right never vanish. ... prote
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IN THIS ISSUE

CHINA IPR NEWS 1. Patent Filings from Abroad Roll Over 1,000,000 in China

CHINA IPR NEWS 1. Patent Filings from Abroad Roll Over 1,000,000 1 in China 2. Brothers Pan are Applying for US Patent on “Apple Peel” 1 3. Applications for Trademark Exceed 7,700,000 in China 2

TRADEMARK PRACTICE 1. Strategy of Review for Trademark Application 2 Refused by Prior Marks Q & A CHINA

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With the climate favorable for IPR protection constantly improved, patent applications from abroad maintain strong momentum in recent years. As of September 9, 2010, SIPO had received a total of 1.002 million applications from abroad. In terms of types of patents, there are 865,000 for invention applications, 16,000 for utility models and 121,000 for designs. The top 4 countries are Japan, the United States of America, Germany and the Republic of Korea with 361,000, 242,000, 89,000 and 81,000 patent applications respectively. Patent applications from abroad are generally of high quality, nearly 90% for invention and 95.3% applied by enterprises. 491,000 patent applications from abroad are granted. From the implementation of the Patent Law till 2005, patent applications from abroad reached the number of 500,000 using over 20 years. The number is soon doubled in the following 5 years, breaking 1,000,000. From January to August of this year, the number of patent applications from abroad had increased by 12.9%. Source:http://www.sipo.gov.cn/sipo2008/mtjj/2010/201009/ t20100929_539778.html

2. Brothers Pan are Applying for US Patent on “Apple Peel” Pan Yong and Pan Lei, the Chinese brothers who invented the “Apple Peel” which is very popular on the Internet, said they were trying to apply for a patent in US and the product may come out soon. It can be seen from the newest “Apple Peel” sample that Pan Lei presented to the reporter of CCTV, the material of the product has changed into hard plastic instead of a rubber coating. Meanwhile, a rear-cover design is adopted and it is very convenient to be removed. The only word on the sample

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product is “PATENT PENDING”, which means a patent application for it is being processed.

TRADEMARK PRACTICE

Pan Lei told the reporter that, they had submitted a test application for “Apple 520” to FCC via a US company. If passing the tests of FCC, it will become a legal product in US market. The result will come out next week at the earliest.

Strategy of Review for Trademark Application Refused by Prior Marks By Jiayan Xie

The Chinese trademark system adopts a full examination on application for registration. Only by passing both the formality and the substantive examinations of the Chinese Trademark Office (CTMO), could the mark be approved for registration. If the application does not meet the substantive requirements of the Chinese Trademark Law, the application would be refused. The refusal grounds are diverse, the actual situations of marks and applicants are also different. Thus the applicants of the refused mark should take different strategies according to specific situation of their marks, which is very important to overcome the refusal and get the trademark approved in the review procedure. The refusal by prior marks described in Article 28 occupies a big portion, thus the author here is providing a simple discussion of this kind of refusal and its corresponding review strategies, for reference of the applicants and their agents.

However, disputes on whether the “Apple Peel” infringes Apple Inc.’s right never vanish. It is said that Apple is also applying for a patent on this technique. The time when “Apple 520” of brothers Pan can come into the market is still under the examination of FCC. Source: www.people.com.cn - intellectual property channel (September 25, 2010)

3. Applications for Trademark Exceed 7,700,000 in China Up to July of this year, the total number of application for trademark registration had reached 7,702,000 in China, the number of registered trademark is 4,956,000 and 4,022,000 of them are valid, these three numbers all rank first in the world. Works on trademark registration and protection provide a stable base for promotion of trademark strategies. It is said that the time for examining a trademark application has been shortened to 17 months now. The State Administration of Industry and Commerce will further improve the system of right confirmation. Trademark oppositions, review and adjudication cases for enterprises in important industries, like strategic new industries and modern service industries are expected to be further expedited. Up to July of this year, the total number of trademark registrations for farm-produce had reached 8,540,000, and the number of geographical indication registrations had reached 866. Supports on trademarks for typical farm-produces have been strengthened all over the country. In the first half of this year, domestic applicants had filed 780 international trademark applications under the Madrid protocol. The cumulative total number had reached 105,01, ranking 8th for consecutively 5 years and ranking first among developing countries.

According to Article 28 of the Chinese Trademark Law, where a trademark the registration of which has been applied for is not in conformity with the relevant provisions of this law, or it is identical with or similar to the trademark of another party that has, in respect of the same or similar goods, been registered or, after examination, preliminarily approved, the Trademark Office shall refuse the application and shall not publish the said trademark. “the relevant provisions of this law” in this article is referring to provisions of Article 10, 11 and 12 of the Trademark Law, but here we only discuss the latter part of this article, namely “the trademark shall not be identical with or similar to trademark of another party that has been registered or preliminarily approved in respect of same or similar goods.” After receiving the Refusal Notification, the applicant (or its agent) should carefully analyze the refusal grounds, the involved trademarks and their designated

Source: http://www.sipo.gov.cn/sipo2008/yw/2010/201009/t20100903_534836.html

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goods/services, and the conditions of the applicants/registrants. According to our experience, the following questions should be paid attention to during the analyzing process, and then different measures should be taken for responding to the refusal. A. Whether the cited mark is owned by the applicant also? The applicant might have changed its name/address during its business history, or the cited mark is actually also owned by the applicant, but since the change or the assignment was not recorded at the CTMO timely, the examiner will not know the marks are actually owned by the same entity. If this situation happens, the applicant should file a review to the Trademark Review and Adjudication Board (TRAB), stating the two marks have no conflict as they belong to the same entity. Meanwhile, the applicant should file an application of change or assignment to the CTMO as soon as possible, and supplement a copy of this application to the TRAB as evidence within three months after filing the review. B. Whether the trademark is really similar to the cited mark? The Examination Standards on Trademark has detailed regulations on how to judge identical and similar marks, but examiners might still have different opinions and results on the application. There is only one examiner in the application procedure, whose decision might be subjective. While in review procedure there will be three examiners and they are considered to be able to give a more candid decision. On the other hand, the examination regulations could not cover all the practical situations and the examiners should make their decisions based on specific conditions of each application. For example, the refused mark might have its special meaning or origin, or it has obtained stronger distinctiveness through use, but this information could not be known by the examiner in application procedure. Therefore, if the applicant believes its mark could be distinguishable from the cited mark, he/it may file a review based on argument of dissimilar and file as many

as possible documents that are helpful to prove the origin, the meaning, the use of his/its mark. C. Whether he designated goods of the mark is really similar to those of the cited mark? Normally, the examiner in application stage will judge whether the goods of two marks are similar according to the Classification of Similar Goods and Services, but the services and goods, as well as the markets keep developing, the standards on similar should also change with them. For example, similar goods in two years ago might not be considered similar now. Thus the application should be examined on a case by case basis according to his/its own actual situation. In addition, the examiner in application stage makes his judgments only by the names of the goods/services, and no more materials could be referred to. This is different in the review procedure, introduction of the goods/services could be provided to state the differences of them. For the professionals in its industry, if the applicant finds his/its designated goods/services are actually different from those of the cited mark, a review should be filed based on the dissimilar and evidences thereof should be provided. D. Whether the cited mark could be refused or cancelled? The cited mark as prescribed by Article 28 should be preliminarily approved or registered. For preliminarily approved mark, if it is still in the opposition period, the applicant could oppose it according to Article 30 of the Law. For registered mark, the applicant could file request to cancel it according to Article 41 of the Law. If the cited mark could be refused or cancelled, the applicant’s mark would be approved accordingly. Grounds of opposition or cancellation could be found in Article 10, 11,12,13,15,16,28,31 of the Law, which are not further discussed here. Of course, there is another possibility, when issuing the Refusal Notification, the cited mark is already be opposed or requested to be cancelled, this is also very favorable for the applicant. But there is a risk should be noted, the TRAB will not wait for the results

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of the opposition or the cancellation, so if the decision of the opposition or the cancellation could not be made before the review decision, the applicant’s mark will still be refused since the cited mark is still valid until the TRAB makes its decision. E. Whether the cited mark has been unused for a long time? According to Article 44 of the Trademark Law, if the use of a registered mark has ceased for three consecutive years, anyone could request CTMO to cancel it. The cancellation could cover all the designated goods, or only a partial of it. Actually, a large amount of registered marks are not used after their registration, or not used consecutively. The applicant is advised to make a rough investigation on the cited mark, if it has been registered more than three years and no use evidence is found, a cancellation of non-use against the cited mark could be filed and a review could be field based on the cancellation. But, the same risk is, the cancellation action might be finished after the review of the mark. F. Whether the owner of the cited mark could provide a letter of consent? Letter of Consent is a written document that the owner of a prior registered mark consenting to the use and registration of a similar mark by a later applicant on same or similar goods/services. Although the Trademark Law has no regulations on Letter of Consent, the TRAB recently has been accepting such a document in many cases, so, if the mark is only moderately similar to the cited mark, and the applicant has not direct conflict or completion with the owner of the cited mark, or they even have cooperation relationship, the applicant could consider negotiating with the other side and obtaining their consent to the registration of the mark.

alive, the grounds for review could be dissimilar of marks, goods or others. When the cited mark is invalid due to non renewal or withdrawal, the application could be approved for registration accordingly. All the above grounds or strategies for review have been used by us in practice and there are also successful cases for them. But, each application is different and special, the applicant should use one of or several strategies flexibly based on his/its own situation. Nevertheless, we suggest the applicant not give up easily when receiving the Refusal Notification, there is a chance of success if a review is filed, otherwise, the mark is lost.

Q & A CHINA Please advise whether it is possible to complete a PCT application in China after 30 months from the priority date. Is there any time limit for the late entry? ----From Japan Please be advised that the Chinese SIPO offers a twomonth grace period to the PCT application. That is, the applicant can use the grace period, with payment of corresponding fees, to enter a PCT application into the Chinese national phase within 32 months from the priority date, which is the time limit for the late entry. (end)

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G. Whether the cited mark is still valid? If at the time of receiving the Refusal Notification, the cited mark will become due soon (for example validity is less than two years), or a withdrawal application is filed against it, then it could be very likely that the cited mark will be invalid in the examination period of the of the review (currently 1-2 years) due to withdrawal or failure of renewal. If this situation happens, the applicant should file the review within the deadline to keep the application

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