IP in China: An Overview and the Latest Developments Giovanni Casucci IP Litigator China IPR SME Helpdesk External Expert Brussels, 29 October

Insert Photo Name: Giovanni Casucci Firm: Bardehele Pagenberg Location: Milan, Italy Giovanni F. Casucci is the founder of the Italian branch of the Bardehele Pagenberg. IP litigator in Italy since From 1999 to 2005 director of a Master program in IP Management at the Politecnico of Milano University. Since 2008, director of the Master program of ICE (Italian Trade Commission) on IP and China (“Ideacina”) and member of the faculty of the MBA programs of MIP Politecnico of Milano. Director of Centro Studi AntiContraffazione Milano 29 October 2015 Today’s Speaker

3 29 October 2015 Legal Framework Patents Design Trademarks Enforcement Trade Fairs Take-away Messages Agenda

EU and China 4 29 October 2015

5 EU and China

Intellectual Property 6 EUCHINA EU China WTO 9 May 2000 IPR 1 ( ) IPR 2 ( (2007 – 2012) IP Key (2013) TRIPS Agreement – 1996TRIPS Agreement – October 2015

Patents 7 EUCHINA Patents - technical teaching protection - examination through EPO - 20 years from filing date Utility Model - different aim for each member state - no examination - 10 years from the filing date Validity -before any IP court OR -before a centralised Court (Dual System (i.e. Germany) Patents - technical teaching protection - examination through SIPO - 20 years from filing date Utility Model - only for product innovation - no examination - 10 years from the filing date Parallel filing strategy Validity - before SIPO (Dual System) 29 October 2015

Wenzhou Court (Zhejiang province) assigned damages to CHINT against Schneider about Rmb330m (US$48mln) Settlement at $23mln) 29 October 2015 Case Study I: Chint / Schneider

Design 9 EUCHINA Duration - 25 years (5 years renewal periods) Novelty (relative) - 1 year grace period Individual Character Difference from prior art Filing - multiple filings Duration - 10 years (annual renewal) (maybe 15 years from 2017) Novelty (absolute) - 6 months priority Individual Character Substantial difference from prior art Filing - Individual shapes (option of multiple filings only for the same category – max 10) 29 October 2015

Duration 10 Grace Period 12 months Registration 5 years renewable x 5 times up to 25 years Unregistered Design 3 years Unfair Competition (only for the effective first sales markets ) Publication CHINA EU Registration Up to 10 years On public domain NO Registration EU up to 70 years post mortem CHINA / USA Up to 50 years post mortem WORLD ® © On public domain 29 October 2015

Industrial Designs and Applied Art on Commercial Products Drawings of engineering designs and product designs are categorized as “graphic works” under the Copyright Law and are copyrightable in China. Work of applied art is also protected by the Copyright Law as work of fine art, as long as the aesthetic features can be physically and conceptually separated from the utilitarian features. In some cases, China’s Unfair Competition Law can also protect such industrial designs. 11 “separability” ? 29 October 2015

Case Study II: Panda / Peri October 2015

Trade marks 13 EUCHINA Pre-registration Use - de facto trademarks are protected Format - Graphic - Latin characters Duration - 10 years (10 years periods renewal) - Form filing date Opposition - against unlawful filings Pre-registration Use - NOT admitted Format - Graphic - Latin characters - Chinese characters Duration - 10 years (10 years period renewal) - From the registration Opposition - against unlawful filings 29 October 2015

Case Study III: Tenax Case October 2015

Case Study IV: Tenax Case October 2015

Enforcement 16 EUCHINA Civil proceedings - specialised Courts (each member State) - injunctions & seizures - damage recovery - urgent proceedings (3/6 months) - ordinary actions (2/3 years - average) (Germany and the Netherlands 1 year average) Civil proceedings - Min San Ting (31 IP specialised Courts) - full specialized IP courts in: Beijing, Shanghai and Guangzhou - injunctions and seizures - damage recovery - ordinary actions 1,5 year Administrative proceedings - SAIC - only seizures and fines - no damage recovery 29 October 2015

Enforcement II 17 EUCHINA Criminal proceedings - only in case of evident infringement - no specialised Public prosecutors Customs - Import and Export IP control Criminal proceedings - rarely used Customs - Export and Import IP control 29 October 2015

Administrative Authority October 2015

Enforcement issues October 2015 A) Formalities all documents shall be duly translated /notarized B) Only the granted rights can be enforced need to file Patents / Utility Models / Design timely C) Choice between the Administrative / Civil

Case Study V: Silk Market 20 Beijing 29 October 2015

Case study VI: Ferrero Case 07/2003: FERRERO Spa summons 蒙特莎 ( 张家港 ) 食品有限公司 [“Méngtè shā (zhāngjiāgǎng) shípǐn yǒuxiàn gōngsī“] for unfair competition 02/2005: first instance decided against Ferrero 01/2006: appeal decision in favour of Ferrero with damages assignment about ￥ 700,000 03/2008: Supreme Court confirmed the appeal decision just reducing the damages October 2015

Case study VII: New Balance Case “GUANGZHOU, April 29 (Xinhua) -- A Chinese court has ordered an affiliate of U.S. sneaker maker New Balance to compensate a Chinese citizen 98 million yuan (16 mln U.S. dollars) for infringing his trademark rights. The Guangzhou Municipal Intermediate People's Court in south China's Guangdong Province also ordered New Balance Trading (China) Co., Ltd. to stop using "Xin Bai Lun" to promote its products in China, the court told Xinhua on Wednesday. The verdict, issued on April 24, said the New Balance affiliate sold its products in the Chinese market under the name "Xin Bai Lun," similar to the trademark "Bai Lun" registered by a man surnamed Zhou in Zhou also registered "Xin Bai Lun" in New Balance failed to block the registration after raising an objection with the Chinese trademark authority. The court defied the "necessity" argued by the U.S. company to use "Xin Bai Lun" instead of its registered trademark "New Balance" in China, as "Xin Bai Lun" is neither the translation or transliteration of "New Balance." According to the court, the compensation amounted to half of the profits the defendant made during the period the infringement took place.” 04/29/c_ htm October 2015

Trade Fair Issues Self regulatory options Rgulations of MACEF, Expocomfort, Marmomacc, Samoter October 2015

Trade Fair Issues 24 International Regulation project on trade fairs ? IPR2 Study China IPR SME Helpdesk Guide: IP Strategy for European SMEs at Trade Fairs in China 29 October 2015

Takeaway messages CHINA is rapidly growing in terms of quality of IP filing and prosecution as well enforcement rules and practice, so the first approach will be on acquiring knowledge about the opportunities offered (i.e. Administrative enforcement) and being really aware about the current limits, i.e. For patents: the “relative novelty” requirement applicable still to patents / utility models filed before the October 2009 For trade marks: the lack of protection for unregistered trademarks For designs: the lack of grace period for novelty not consistent with the EU Directive and the really limited term of protection (10 years) and the need to consider copyright as alternative against identical copies October 2015

China and South-East Asia IPR SME Helpdesks October Enquiry Helplines IP Guides & Newsletters E-learning & Business Tools Training Workshops & Live Webinars Websites & Blog

Enquiry Helpline IPR one-to-one consultations: , telephone, face-to-face First-line advice on China countries IPR matters Confidential Delivered by China IPR specialists Available for EU SMEs and SME intermediaries +86 (10) October 2015

Information & Materials Library of publications: – IP specific guides, incl. patents & trade marks – Industry specific guides, incl. textiles, machinery, creative industries – Business guides, incl. technology transfer – Hong Kong and Macao Factsheets Quarterly Helpdesk newsletters Article placement Topical blog posts October 2015

Training workshops & webinars Workshops across Europe and China Addressing general IPR and industry specific IPR matters Trainings delivered in several languages Free one-to-one consultations Webinars: Save time by joining these interactive training sessions from your own office or watch recordings online October 2015

Online portal Practical IPR guides E-learning modules Case study catalogue FAQs Helpdesk newsletters Event information Latest blog posts Helpdesk videos October 2015

The China IPR SME Helpdesk provides free, confidential, business-focused advice to European Small and Medium Enterprises (SMEs) relating to IPR in China  Helpdesk Enquiry Service / Training & Events: iprhelpdesk.eu  Materials  Online Services - For more information about our services and how the China IPR SME Helpdesk can add value to EU SMEs, please contact: Telephone/Hotline: +86 (10) October 2015

FeedbackQuestions Discussion October 2015