APAC IP Update  – Spring 2021 

China

SPP issues guiding cases targeting intellectual property-related crimes

On 4 February 2021, the Supreme People's Procuratorate (SPP) issued the 26th Batch of Guiding Cases targeting intellectual property-related crimes, including three trademark infringement cases, one copyright infringement case and one trade secret infringement case.

• For trademark infringement, the SPP provided guidance in handling cases involving multiple parties in an organised crime for selling food with counterfeit registered trademarks; where a suspect raises a prior use defence and the use of a registered trademark potentially constitutes fair use; and where the counterfeit goods are manufactured in China and sold abroad.
• For copyright infringement, the SPP provided guidance on how to consolidate evidence for cases involving copyright infringement of a large number of audio-visual works where the authors are located overseas.
• For trade secret infringement, the SPP provided guidance on how to consolidate evidence for cases where the suspect pleads not guilty.

Please click here for the full text (Chinese only) of the guiding cases.

NMPA issues guidelines for medicines and medical devices

In early February 2021, the National Medical Products Administration (NMPA) issued a series of technical guidelines covering biological products, chemical drugs and traditional Chinese medicines. The guidelines are related to:

• technical questions in clinical trials and clinical trials of specific drugs, such as therapeutic or prophylactic drugs for treating influenza, several types of antibiotic drugs, improved new chemical drugs, biosimilars of the Omalizumab and Oncolytic viruses, and combination therapy for treating cancer;
• pharmaceutical research and the development of drugs, such as technical instructions for researching pharmacokinetics, bioequivalence, and the interactions of different types of drugs; and
• drug registrations, such as document preparation for meeting safety requirements for an innovative cancer medication.

Please click here for a list (Chinese only) of the guidelines.

CNIPA issues draft measures for administrative adjudication of drug patent disputes

On 9 February 2021, China's National Intellectual Property Administration (CNIPA) issued a Draft for Comment of Measures for Administrative Adjudication of Early Resolution Mechanism for Drug Patent Disputes (Draft Measures), which was open for public comment until 27 March 2021.

According to Article 76 of the amended Patent Law of PRC (which took effect on 1 June 2021), the CNIPA will have jurisdiction to adjudicate medical product-related patent infringement disputes. The Draft Measures shed light on how CNIPA intends to handle cases and clarify the following issues:

• eligibility;
• documents and information required when a request is made; and
• procedural rules, including recusal of administrative judges, acceptance of cases, notice to the parties, ability to verify relevant evidence from the NMPA, hearings, decision making especially in disputes involving a patent invalidation defence, settlement, suspension, withdrawal, and appeal.

Please click here for the full text (Chinese only) of the Draft Measures.

Chinese court finds companies liable for RMB 159 m in trade-secret infringement dispute

On 26 February 2021, the Supreme People’s Court (SPC) issued a decision in a trade-secret infringement dispute, finding the companies Wanglong Group, Ningbo Wanglong Technology Co. Ltd., and Xifushi Wanglong Co. Ltd. and two individuals guilty as infringers and ruling that they should award RMB 159 million in damages to rights holders Jiaxing Zhonghua Chemical Co. Ltd. and Shanghai Xinchen Co. Ltd.

This judgment marks a historic high for an award in a trade-secret infringement case. For details, please click here for a Law-Now article.

Abuse of the trademark opposition and invalidation procedures constitute unfair competition

On 20 February 2021, Shanghai IP Court held that the appeal of the decision of BRITA GmbH (BRITA) and BRITA China Co., Ltd. (BRITA China) vs. Shanghai Kangdian Industrial Co., Ltd. (Kangdian) is deemed withdrawn for the reason that the appellant, Kangdian, failed to appeal within the designated time period, which concludes the intellectual property dispute that lasted over five years.

During the first instance, Shanghai Minxing District Court found that Kangdian used and manufactured water filter bottles and filters with trademarks confusingly similar to the registered trademarks of BRITA, operated a WeChat account named “BRITA Official Flagship Store” and advertised that it cooperates with brand-name companies such as BRITA, and engaged in registering confusingly similar trademarks in bad faith and abusing the trademark opposition and invalidation procedures that harms the legitimate interests of BRITA. On 25 September 2020, Shanghai Minxing District Court delivered its decision holding that Kangdian infringed trademark rights of BRITA and engaged in unfair competitions with BRITA and BRITA China, and awarded BRITA and BRITA China a damage of RMB 2.3 million and reasonable expenses of RMB 500,000, and ordered Kangdian to publish a statement in the media to eliminate the negative impact on BRITA’s brand.

Although Shanghai IP Court did not have the opportunity to rule on the merits of the case, the holding from Shanghai Minxing District Court indicates that Article 2 of the Anti-Unfair Competition Law of PRC prohibits the abuse of the trademark opposition and invalidation procedures by infringers to harass the right holders.

Please click here for full text of the first instance judgment (Chinese only).

NMPA issues guidance on the registration and record-filing for new raw materials of cosmetics

On 26 February 2021, the National Medical Products Administration (NMPA) issued the Administrative Provisions on Registration and Record-filing Materials for New Raw Materials of Cosmetics (“Administrative Provisions”), which was implemented on 1 May 2021.

The Administrative Provisions set out detailed rules on:

• documents required for submission (e.g. the safety risk monitor and evaluation system description, the registrant / record-holder information tables, technology requirements, development reports, and the research reports on procedures, stability and quality control) and the requirements for materials submitted by the registrant or record holder of new cosmetics raw materials;
• the update and maintenance of the provided information (e.g. updating information of the registrant / record-holder, drafting and submitting annual reports on the new raw materials safety monitor, and safety risk control reports); and
• the requirements on the submitted new raw-material sample (e.g. complete package and label, and information to be included in the label).

The Administrative Provisions also provide guidance on the registration and record-filing of new raw materials by a foreign registrant/record-holder with a designated local responsible party.

Please click here for the full text (Chinese only) of the Administrative Provisions.

NMPA issues guidance on the registration and record-filing for cosmetics

On 26 February 2021, the National Medical Products Administration (NMPA) issued the Administrative Provisions on Registration and Record-filing Materials for Cosmetics (Administrative Provisions), which was implemented on 1 May 2021.

The Administrative Provisions consists of six chapters, providing general provisions, user information-related data requirements, registration and record-filing requirements, change of item requirements, and extension and cancellation requirements.

The Administrative Provisions mainly specify:

• the formality requirements on the submitted documents (e.g. the requirements on the signature and/or stamps, and the measurement units of cosmetics);
• the information of the registrant / record-holder to be submitted (e.g. the registrant / record-holder information table and the resume of personnel who is responsible for quality and safety, safety management system report, adverse reaction monitor and evaluation system report, designated local responsible party information table if the registrant or record-holder is a foreigner, and the original authorisation letter and its original notarisation document, and the information of the manufacturer and personnel who is responsible for quality and safety);
• information update (e.g. information of the legal representative and the personnel who are responsible for the quality and safety, and contact information can be updated by the user; other information, such as the safety management system report, adverse reaction monitor and evaluation system report; designated local responsible party information table will be examined); and
• documents related to the product to be submitted (e.g. the cosmetics registration and record-filing information table, the name, recipe, executive standard, label, product-examination report, and safety-evaluation materials).

The Administrative Provisions also provide guidance to the foreign registrant/record-holder with a designated local responsible party.

Please click here for the full text (Chinese only) of the Administrative Provisions.

SPC publishes top 10 typical technology-related IP cases for 2020

On 27 February 2021, the Supreme People's Court (SPC) issued the Intellectual Property Tribunal’s Top 10 Typical Technology Related Intellectual Property Cases in 2020 (Typical Cases).

The cases selected included:

• Huawei anti-suit injunction lawsuit concerning three SEP patents;
• Vanillin trade secret wilful infringement case award with punitive damages;
• “Kabo” trade secret wilful infringement case award with punitive damages;
• NX computer software copyright infringement case award with increased amount of damages for the defendant’s obstruction of preservation;
• “Selfie stick” utility model patent infringement series cases with heavy punishment on the manufacturer;
• “Secondary lithium ion battery” invention patent invalidation dispute on the criteria for determining whether claims are supported by the description;
• “Method of accessing to a portal site” administrative (invalidation action) and civil (infringement action) cross actions;
• “Li-ion Battery Protective Chip” infringement case concerning infringement of layout-design of integrated circuits;
• “T-mall” reverse behavioural preservation case concerning restoring previously removed linkages; and
• “Bricks & Tiles Association” anti-trust case concerning cartel.

Please click here for the full text (Chinese only) of the Typical Cases.

CNIPA issues draft measures for administrative adjudication of major patent infringement disputes

On 2 March 2021, China’s National Intellectual Property Administration (CNIPA) issued the Measures for Administrative Adjudication of Major Patent Infringement Disputes (Draft for Comment) (Draft Measures), which was open for public comments until 2 April 2021.

According to Article 70 of the Patent Law, the CNIPA has the jurisdiction over major patent infringement disputes. The Draft Measures specifies what constitutes major patent infringement disputes, conditions and required documents for filing administrative adjudication, procedural rules for the acceptance and adjudication of the cases, evidence collection, and examination and appraisal when the patent disputes involve complicated technology problems.

Please click here for the full text (Chinese only) of the Draft Measures.

SPC issues interpretation on the application of punitive damages in IP infringement civil cases

On 2 March 2021, the Supreme People’s Court (SPC) issued the Interpretation of the Supreme People's Court on the Application of Punitive Damages in the Trial of Intellectual Property Infringement Civil Cases (SPC Interpretation), which came into effect on 3 March 2021.

There are seven articles in the SPC Interpretation, which provides specific provisions on the scope of application, the content and timing requirements for raising the punitive damage claims, determination of the intention and seriousness of circumstances, and the determination of the calculation base and folds (up to five) of punitive damages (the punitive damage is a base damage multiplied by a fold). Highlights include clarifying that the meanings of “intentional” and “malicious” stated under different intellectual property laws are the same, the criteria for determining the seriousness of the circumstances, and the calculation method for the base of punitive damages.

Please click here for the full text (Chinese only) of the SPC Interpretations.

SPC issues interpretations of punitive damages in civil IP infringement disputes

On 2 March 2021, Supreme People’s Court (SPC) issued Judicial Interpretations on the Issue of Applicability of Punitive Damages in Civil Intellectual Property Infringement Case (Interpretations) in order to guide the lower courts to correctly implement punitive damage clauses, punish serious intellectual property infringements, and strengthen intellectual property protection. The Interpretations took effect on 3 March 2021.

Specifically, the Interpretations provide that:

• A people’s court should adjudicate a punitive damage claim if brought by the plaintiff. If the plaintiff brings a punitive damage claim before the end of the court hearing during the first instance, the court should allow it. If the plaintiff supplementally submits the punitive damage claim during an appeal, a people’s court may mediate the claim. If no agreement is reached, the plaintiff will be asked to bring a separate complaint claiming the punitive damage.
• A plaintiff is required to submit the claimed damage amount, the calculation method, and the factual basis and the reasoning behind the submission.
• For recognising the existence of wilfulness or bad faith (the meanings of which are the same), a people’s court will consider factors such as the subject intellectual property, the status of the rights and the popularity of the products, and the relationship between the plaintiff and the defendant. The Interpretations list several circumstances where the infringement will be deemed wilful or in bad faith, such as when a defendant receives a cease-and-desist letter from the plaintiff but continues with the infringement actions, or a defendant is linked to the intellectual property through its relationship with the plaintiff.
• For determining its seriousness, a people’s court will consider the infringement measures, times, duration, geographic scope, scale, consequences, and the infringer’s behaviour in the lawsuit. The Interpretations list several circumstances where the infringement will be considered serious, such as forging, destroying, or conceiving the infringement evidence, and refusing to follow the court order on preservation.
• Unless stipulated by the relevant law, a determination of actual damages should be based on actual loss, illegal gains or profits received due to the infringement, but not include reasonable litigation expenses. If the actual damage is difficult to determine based on any of the above methods, the amount can be based on multiplying the licensing royalties for intellectual property right by several times or “fold” (e.g. multiplying the licensing royalties by two or three times). If the defendant refuses to provide evidence related to damages or forges the relevant documents, the court may determine actual damages based on the plaintiff’s claim.
• When determining the fold, a people’s court should consider factors such as subjective fault from the defendant’s side, and the seriousness of the infringement. If the defendant has been fined for the same infringement act, a people’s court may consider this factor when determining the fold.

Starting in 2018, intellectual property laws including Patent Law, Trademark Law, Copyright Law and Anti-Unfair Competition Law were amended to strengthen intellectual property rights protections. One of the major changes was the introduction of a punitive damage clause. In 2020, Article 1185 of the Civil Code of PRC was amended to stipulate that the intentional infringement of the intellectual property rights of others and its circumstances are serious, and the right holder can request punitive damages. As a result, punitive damage systematically applies to civil intellectual property infringement cases. The Interpretations clarify issues ranging from requirements for claiming punitive damage to the determination of punitive damage, which will help people’s courts and the public better understand the newly added clause and encourage its implementation.

Link to the interpretations:

http://www.court.gov.cn/fabu-xiangqing-288861.html

Fendi wins parallel import case against outlets

On 4 March 2021, the Shanghai High People’s Court (SHPC) entered a judgment on the review application from Shanghai Yilang International Trade Co., Ltd. (Yilang) and Capital Outlets (Kunshan) Business Development Co., Ltd. (Outlets), who sought to reverse a trade mark infringement and unfair competition judgment against their parallel importation and sale of Fendi products. The SHPC upheld the judgment in favour of Fendi and held that the above Defendants infringed Fendi’s service trade mark rights and engaged in unfair-competition. The court confirmed a damages award of RMB 350,000 in favour of Fendi.

Fendi is the trade mark holder of a series of trademarks (including “FENDI”) both abroad and in China. Over the years, this trade mark has become known to the public and enjoys a reputation among Chinese consumers. Starting in 2015, Yilang imported Fendi products from France, which it sold in its store using Fendi’s trade mark on its store sign, shopping bags, product packages, discount information boards, and receipts. Outlets presented Fendi’s trade mark on advertising boards, brochures, and WeChat posts. Fendi sued the Defendants for trade mark infringement and unfair competition.

During the first instance, the court held that there as no trade mark infringement and unfair competition, finding that the products are authentic products imported through parallel importation, and the use of Fendi’s trade mark and name for the purpose of demonstrating the origin of goods thus constitutes fair use. Shanghai IP Court reversed the judgment and held that the use exceeds the scope of fair use causing consumer confusion over whether the shop is directly operated by Fendi, which is an infringement of Fendi’s service trade mark and constitutes unfair competition. Shanghai IP Court found Yilang and Outlets jointly liable for RMB 350,000 in damages.

The SHPC upheld the Shanghai IP Court’s judgment. Over the issue of trade mark infringement, the SHPC pointed out that in order to decide whether there is fair use, three factors should be considered: if the use is in good faith; if the use is reasonable; and if the use is consistent with conventional business practices. The SHPC clarifies that whether the consumer confusion is actually caused is not a factor. Instead, the issue that should be addressed by the court is whether the defendant used the trademark in such a way that could have led to consumer confusion, thus creating harm to the trade mark’s function being an indication of origin. In this situation, the SHPC found that the Defendants used the trade mark in a way that could have caused consumer confusion over the origin of service.

For the unfair competition issue, the SHPC held that Fendi’s name enjoys certain market popularity and is known to the relevant public, which is enough to be covered in the protection scope under the Anti-Unfair Competition Law of PRC. The Defendants use of Fendi’s name on its store sign could have caused consumers to mistakenly believe that Fendi operated the store and thus violates the Anti-Unfair Competition Law of PRC.

According to this decision, a parallel importer cannot be found liable for infringing a commodity trademark when the parallel importer purchases the brand-name products from abroad from the trademark holder and sells the products in China, if the same trademark holder owns the commodity trademark in China. However, before concluding that parallel importation is legal, more factors need to be considered. As in this case, if the parallel importer improperly promotes the sale of products to the extent that cause the consumer to believe a connection exists between the importer and trademark holder, the parallel importer can be found liable for service trademark infringement and unfair competition.

NMPA announces the implementation of the registration and record-filing for cosmetics

On 5 March 2021, the National Medical Products Administration (NMPA) published the Announcement for Implementing the Administrative Provisions on Registration and Record-filing Materials for Cosmetics (Announcement). The Announcement states that:

• information should be registered on the Information Service Platform for the Registration and Record-Filing of Cosmetics;
• what type of documents should be submitted by the registrant / record-holder who has already registered and recorded the products on the previous platform;
• requirements on the submission of safety-related information of the raw materials of cosmetics; and
• requirements on the submission of an efficacy evaluation report of cosmetics for freckle removal, whitening and anti-hair loss;
• requirements on the submission of annual report for general cosmetics.

Please click here for the full text (Chinese only) of the Administrative Provisions.

SPC publishes the 10 important IP cases and 50 typical IP cases in 2020

On 22 April 2021, the Supreme People's Court (SPC) published the ten Important Intellectual Property Cases and 50 Typical Intellectual Property Cases Heard by Chinese Courts in 2020 (Important and Typical Cases).

The ten important IP cases include:

• Patent invalidation dispute over an invention patent between Apple Computer Trading (Shanghai) Co., Ltd., and the China National Intellectual Property Administration, Shanghai Xiaoi Robot Technology Co., Ltd.;
• Three cases of confirming non-infringement of patent rights and standard essential patent license between Shenzhen Huawei Technologies Co., Ltd., Huawei Terminal Co., Ltd., Huawei Software Technology Co., Ltd., and Conversant Wireless Licensing S.à.r.l;
• Trademark ownership dispute between Red Bull Vitamin Drink Co., Ltd. and T.C. Pharmaceutical Industries Co., Ltd.;
• Infringement dispute over exclusive rights in layout design of integrated circuits between Suzhou Saixin Electronic Technology Co., Ltd., and Shenzhen Yusheng Technology Co., Ltd., Hu Caihuan, Huang Jiandong, Huang Sailiang;
• Disputes over corporate surplus distribution between Wuhan Atlantic Metallurgical Engineering & Technology Co., Ltd. and Song Zuxing;
• Standard essential patent license dispute between OPPO Guangdong Mobile Communication Co., Ltd., Shenzhen Branch of OPPO Guangdong Mobile Communication Co., Ltd., and Sharp Corporation, ScienBiZip Japan Corporation;
• Copyright infringement dispute between Shanghai Xuanting Entertainment Information Technology Co., Ltd., and Chengdu Jigan Technology Co., Ltd., 4399 Network Co., Ltd.;
• Unfair competition dispute between Shenzhen Tencent Computer Systems Company Limited, Tencent Technology (Shenzhen) Co., Ltd., and Zhejiang Sodao Network Technology Co., Ltd., Hangzhou JukeTong Technology Co., Ltd.;
• Monopoly dispute between Huizhou Joy Sing One Hundred Entertainment Co., Ltd. and China Audio-Video Copyright Association;
• Copyright infringement by Li Haipeng and another nine people.

Among the 50 typical IP cases, there are 41 civil cases, four administrative cases and five criminal cases.

Please click here for the full text (Chinese only) of the Important and Typical Cases.

CNIPA publishes the top 10 patent re-examination / invalidation cases in 2020

On 27 April 2021, China’s National Intellectual Property Administration (CNIPA) published the Top ten Patent Re-examination / Invalidation Cases in 2020. They include:

• Invalidation dispute over an invention patent named "Use of β-blockers in the preparation of drugs for the treatment of haemangioma";
• Invalidation dispute over an invention patent named "Distributed power collection system using DC power supply";
• Invalidation dispute over a utility model patent named "Plate loading and unloading device and mobile phone glass processing centre";
• Invalidation dispute over a utility model patent named "A voice coil motor for driving a liquid lens and its lens group";
• Invalidation dispute over an invention patent named "Wireless communication system";
• Invalidation dispute over a design patent named "Graphical user interface for mobile communication device";
• Invalidation dispute over an invention patent named "Butylphthalide cyclodextrin or cyclodextrin derivative inclusion compound and preparation method and use thereof";
• Invalidation dispute over an invention patent named "A rental method, system and rental terminal of a mobile power supply";
• Invalidation dispute over an invention patent named "Plain knitting machine";
• Invalidation dispute over an invention patent named "Substituted oxazolidinone and its application in the field of blood coagulation".

Please click here for the full text (Chinese only) of the 10 invalidation cases.

SPC publishes summary of the annual report on IP cases in 2020

On 26 April 2021, the Supreme People's Court (SPC) published the Summary of the Annual Report on Intellectual Property Cases in 2020 (Summary).

According to the Summary, the SPC received 5,390 new intellectual property rights cases in 2020. Among them, there were 2830 patent cases, 1490 trademark cases, 111 copyright cases, 31 anti-trust cases, 66 unfair competition cases, 51 new plant varieties cases, 205 intellectual property contracts cases, 7 integrated circuit layout design cases, 457 computer software cases, 75 trade secrets cases and 67 other cases. There was a significant increase in patent and trademark related cases.

The SPC summarised the characteristics of IP cases in 2020. In patent civil litigation, "anti-suit injunction" became a contentious and difficult issue, the standard of claim construction was further clarified, the damages calculation was better refined, and strict protection has achieved positive results.

In addition, the SPC picked 55 typical cases and summarised 63 issues to guide the application of law in the future.

Please click here for the full text (Chinese only) of the Summary.

SPC publishes judicial IP protection plan by the people’s courts (2021-2025)

On 22 April 2021, the Supreme People's Court (SPC) published the Judicial Protection Plan of Intellectual Property by the people’s courts (2021-2025) (Plan).

The Plan includes five chapters. In general, strengthening the intellectual property protection is still recognised as an important task. In particular, the Plan intends to strengthen the protection of scientific innovations, copyright and related rights, commercial signs, the trials of anti-monopoly and anti-unfair competition cases, and increase the punishment for intellectual property rights infringements.

The Plan also intends to continuously reform the IP trial system, optimising IP protection mechanisms, and strengthening the support of IP trials. It should be noted that the Plan especially pointed out the task of deepening IP international cooperation and competition, such as strengthening foreign-related IP trials, properly handling major international trade-related IP disputes, and protecting the legitimate rights and interests of Chinese and foreign right holders on an equal footing in accordance with the law. The Plan calls for strengthening the international judicial cooperation and coordination, properly resolving international parallel litigation, and safeguarding national security in the field of intellectual property rights.

Please click here for the full text (Chinese only) of the Plan.

Wyeth wins trade mark infringement and unfair competition case with RMB 30.5 million awards

On 26 April 2021, The High People’s Court of Zhejiang Province applied the Supreme People's Court's Interpretation on the Application of Punitive Damages in the Trial of Civil Cases of Infringement of Intellectual Property Rights (Interpretation), and affirmed the lower court’s decision to impose a punitive damage of RMB 30 million and a reasonable cost of RMB 550,000 on the defendants Guangzhou Huishi Co., Ltd., Chen Zeying, Guan Xiaokun, Guangzhou Zheng’ai Co., Ltd., Qingdao Huishi Company, Hangzhou Xiangdi Company.

The dispute surrounds the defendants’ unlawful trade mark application and usage of “Wyeth” and “惠氏” (“Wyeth” in Chinese). During the first instance, the Hangzhou Intermediate Court applied the punitive damage clause and awarded Wyeth LLC. and Wyeth (Shanghai) Co., Ltd. a damage of RMB 30 million and a reasonable cost of RMB 550,000. Parties from both sides appealed. The High People’s Court of Zhejiang Province clarified the criteria for the determination of "intentional" and "serious circumstances" in the application of punitive damages, calculated the illegal gain by referring to the evidence submitted by the plaintiff and the defendant respectively, and determined the range of the base and also the base and the folds separately. This case is considered the first case that applies the Interpretation since its issuance, which sets an example for determining the punitive damage in accordance with the Interpretation.

Please click here for the full text (Chinese only) of the SPC news report on this case.

NMPA issues guidelines for the submission of record-filing materials for cosmetics

On 12 April 2021, the National Medical Products Administration (NMPA) published the Technical Guide for the Submission of Record-filing Materials for Cosmetics (For Trial implementation) (Guide), which took effect on the same day.

The Guide includes six articles providing applicable scope, basic requirements on the submitted materials, obtaining and accessing an online application account, the submission of record-filing materials for cosmetics or new raw materials, the requirements on the standard and format of the submitted materials, and the paper submission routes and relevant requirements.

Please click here for the full text (Chinese only) of the Guide.<

NMPA issues evaluation criteria for claimed effects of cosmetics

On 8 April 2021, the National Medical Products Administration (NMPA) published the Evaluation Criteria for the Claimed Effects of Cosmetic (Criteria), which was implemented on 1 May 2021.

This Criteria has 21 articles covering the requirements on the submission of a summary supporting the claimed effects of cosmetic products, examples of proposed tests and testing methods for the evaluation of certain types of cosmetics, the requirements for the institute that issues evaluation reports and the requirements for a report for the evaluation of cosmetics that claim new effects, the equivalence evaluation for makeup in the same series, as well as the publication of exemptions of the summary under certain circumstances. For example, if the effect can be directly recognised by sensory such as by vision or smell, or achieved through simple physical covering, adhesion, friction, etc. and the claimed effect represents only physical functions that are clearly marked on the label, the summary of the basis for the claimed effect can be exempted from publication.

Please click here for the full text (Chinese only) of the Criteria.

NMPA issues assessment guidelines for the safety of cosmetics

On 8 April 2021, the National Medical Products Administration (NMPA) published the Technical Assessment Guidelines for the Safety of Cosmetics (2021 Edition) (Guidelines), which was implemented on 1 May 2021.

The Guidelines provide ten articles covering their application scope, the general principle and requirements, requirements for cosmetic-safety assessors, risk-assessment procedures, toxicological studies, safety assessments of raw materials, safety assessments of cosmetic products and the requirements of the safety assessment report. The Guidelines also provide examples of safety assessment reports of raw materials and cosmetic products.

Please click here for the full text (Chinese only) of the Guidelines.

NMPA issues cosmetics classification rules and catalogue

On 8 April 2021, the National Medical Products Administration (NMPA) published the Cosmetics Classification Rules and Catalogue (Classification R&C), which was implemented on 1 May 2021.

The Classification R&C provides how cosmetic registrants and record holders must classify and code cosmetics according to the claimed effects, action sites, product-dosage forms, user population and methods of use. For a product with multiple claimed effects, actions sites, user population or product-dosage forms, it is possible to choose multiple corresponding numbers with “/” separating them. New effects, action sites, user populations are marked with letters A to C, respectively. The products that have a letter (i.e. A, B or C) in its category will be recognised as products claiming new effects.

Please click here for the full text (Chinese only) of the Rules and Catalogues.

NMPA issues the list of used raw materials of cosmetics

On 27 April 2021, the National Medical Products Administration (NMPA) published the List of Used Raw Materials of Cosmetics (2021 Edition) (List), which was implemented on 1 May 2021.

This List was revised based on the 2015 edition. It includes the name of raw materials in Chinese and in English or according to the INCI, the highest historical usage in eluting cosmetics (i.e. by percentage), and the highest historical usage in leave-on cosmetics (i.e. by percentage) and notes (indicating the relevant laws, regulations, national standards and technical standards).

Please click here for the full text (Chinese only) of the List.

Hong Kong

Judgment made against manufacturer of copycat Chinese medicinal products

The manufacturer and owner of the business of a popular medicated oil carried on under the trading names “Wong To Yick Wood Lock Medicated Balm 黃道益活絡油”, “Wong To Yick Wood Lock Medicated Balm” and/or “中國跌打風濕醫館 (黃道益醫館) Wong To Yick Clinic” received a favourable ruling in a trade mark infringement and passing-off case, which protects its famous product against a group of local medicinal oil manufacturer infringers who have been using similar product names (“黃道益” such as “黃道人”,“黃道老人”and “正宗老人“) with packaging that is confusingly similar to the genuine product.

In Wong To Yick Wood Lock Ointment Limited v. Singapore Medicine Co. & Ors [2021] HKCFI 920, the defendants based its case on the argument that the plaintiff’s features consist mainly of common features in the trade that are easily distinguishable and do not cause confusion. The plaintiff argued that the plaintiff’s features are distinguished by the combination of the features in which the overall visual effect is to be appreciated as a whole, thereby establishing a case for passing-off based on the whole visible external appearance of goods. The defendant’s further arguments were based on a case of independent creation of its packaging and that it had been using this packaging since the 1990s, all of where were This argument was rejected by the Court.

In coming to its judgment, the Court admitted evidence of “similar facts” if it is logically probative – if it is logically relevant in determining the matter at issue, provided that it is not oppressive or unfair to the other side, and also that the other side has fair notice of it and is able to respond. Therefore, whether the similarity between the plaintiff’s product and the infringing products is due to copying or a coincidence, the defendant’s past act or propensity of copying was relevant.

In respect of infringement of trade marks, the Court applied the global appreciation test and the imperfect recollection test and concluded that there existed visual, aural and conceptual similarities between the defendants’ packaging and the plaintiff’s registered trade marks by reason of the defendants’ use of the characters 黃 and 道. There is a greater likelihood of confusion because the plaintiff’s registered trade marks have a highly distinctive character per se and because of the use made of them. Additionally, the Court accepted that the plaintiff’s trade marks are well-known marks within the meaning of the Trade Marks Ordinance on evidentiary grounds including promotion and use records, and were found to have been infringed.

For more information, please click here.

Singapore

Singapore High Court finds licence to use Mendelssohn’s “Wedding March” in Golden Village cinemas is terminated

On 19 January 2021, the Singapore High Court delivered its judgment on a dispute between the Composers and Authors Society of Singapore Ltd (COMPASS), a collective management organisation operating in Singapore that has the right to administer the copyright in musical works in its repertoire, and Golden Village Multiplex Pte Ltd (GV), Singapore’s largest cinema operator.

GV and COMPASS entered into a licence agreement in 1995, which granted GV the right to use Mendelssohn’s “Wedding March” in films that GV might screen in its cinemas. At the time the licence agreement was entered into, the “Wedding March” was no longer copyrighted since it had passed into the public domain. The “Wedding March” could therefore freely be performed in public without a licence. GV later contended that it was misled by COMPASS into entering into the licence agreement since COMPASS had wrongly claimed to administer the copyright in all musical works.

The High Court decided that GV was not entitled to terminate the licence agreement on the ground of breach of contract or misrepresentation by COMPASS. However, the High Court found that a letter sent by GV to COMPASS on 16 June 2016 was effective as a notice of termination and therefore the licence agreement had been terminated on 30 June 2017. As a result, GV was ordered to submit its gross receipts from 1 April 2016 to 30 June 2017 to COMPASS for computation of the licence fee for that period.

This decision highlights the importance of ascertaining copyright ownership in works. Otherwise, parties may unnecessarily incur expenses for the licence fees of works that can be freely used.

Medical Devices Branch introduces new Medical Device Grouping Tool

The Medical Devices Branch introduced a new self-help medical device grouping tool on 25 February 2021. The tool assists users by determining the appropriate grouping category for their medical devices when submitting a product registration application. This tools help reduce the costs and time required for pre-market registrations and the number of applications that have to be made.

The medical device grouping tool can be found here. Other available self-help tools by the Medical Devices Branch can be found at the following links: checking if the device is considered a medical device, medical device risk classification tool and medical device registration and licensing requirements.

National Day song “Count On Me, Singapore” embroiled in copyright saga

“Count On Me, Singapore”, an iconic National Day tune in Singapore, that was originally composed by Hugh Harrison in 1986, was the subject of a recent copyright tussle. Videos of a plagiarised version of the song titled “We Can Achieve” was found on YouTube, with virtually identical lyrics except for changes switching “Singapore” to “India” / “Mother India”.

A chronological timeline of the saga is set out below:

• Sometime around 11 March, videos of “We Can Achieve” on YouTube garnered the attention of the public with more than 62,000 views as of that date.
• On 16 March, Indian composer Joseph Mendoza (Mendoza) claimed in a media statement to have written the song in 1983 while teaching music at an orphanage in Mumbai. In his statement, he claimed that the only evidence he has is the 250 orphans that performed the song in 1983 as the original tapes of the composition were swept away in the 2005 Mumbai floods. Mendoza also said that he sold the rights to the song were later sold to a Christian book and record store, Pauline India, and recorded in 1999.
• On 18 March, Singapore’s Ministry of Culture, Community and Youth (MCCY) said in a Facebook post that they contacted Mendoza to invite him to substantiate his claims. In the post, it was noted that Pauline India had publicly acknowledged that “We Can Achieve” appeared to have been substantially copied from “Count On Me, Singapore” and had since apologised (which MCCY accepted) and removed the song from their platforms.
• On 21 March, MCCY stated in a Facebook post that, following its probe, Mendoza admitted that he did not have evidence to prove that had had written “We Can Achieve” and had “unconditionally and irrevocably withdrawn any claims of whatsoever nature, directly or indirectly, with regard to the lyrics and tune of We Can Achieve, which is similar to the song". Mendoza also apologised for the confusion.

Media reports of the “Count On Me, Singapore” copyright saga can be found here, here, and here.

Medical Devices Branch publishes draft “Medical Devices Product Classification Guide” for feedback

The Medical Devices Branch published a draft “Medical Devices Product Classification Guide” for comments and feedback. The consultation period for the guide commenced on 15 March 2021 and ended on 15 April 2021.

The document assists stakeholders with determining whether a device falls within the definition of “medical device” of the Health Products Act. To determine whether a product is a “medical device”, the key considerations are (a) the intended purpose of the product taking into account the way the product is designed and/or presented, and (b) the primary mode of action by which the intended purpose is achieved. The guide provides specific examples of products with medical related purposes (sterilisation or disinfection, contact lens care products, products used in hospitals/laboratory, ophthalmic products, solutions or media for tissue/cells), general purpose products, assistive technology products, products for sports/physical fitness/general health, and personal protective equipment.

Please click here for a copy of the draft guide.

Arrest made for alleged online sales of suspected counterfeit respirators

In a 12 April 2021 joint operation by the Criminal Investigation Department and the Health Sciences Authority, officers arrested a 34-year old man suspected of involvement in the online sales of suspected counterfeit respirators. More than 41,000 units with an estimated street value of more than SGD 201,000 were seized, and tests are currently being conducted to determine if they are counterfeit. The seized items included N95 masks.

Investigations are currently ongoing. Under the Health Products Act, the suspect may be liable for importing or supplying counterfeit health products with criminal sanctions of a fine of up to SGD 100,000 and/or imprisonment for a term of up to three years. Additionally, under the Trade Marks Act, the suspect may be liable for selling or distributing goods with falsely applied trademarks with criminal sanctions of a fine of up to SGD 100,000 and/or imprisonment for a term of up to five years.

Please click here for the press release by the Health Sciences Authority and here for the press release by the Criminal Investigation Department.

Singapore IP Strategy 2030 announced

On 26 April 2021, the Singapore IP Strategy 2030 (SIPS 2030) was announced at the World IP Day event. SIPS 2030 is a 10-year blueprint to enhance Singapore’s position as an international intangible assets (IA) and intellectual property (IP) hub.

Building on the 2013 IP Hub Master Plan, SIPS 2030 makes key recommendations in the following areas to:

• Strengthen Singapore’s position as a global hub for IA/IP: To boost economic growth through IP transactions and activities, offer a conducive environment for businesses to protect, manage, and transact their IA/IP, and ensure that Singapore remains an attractive investment destination.
• Attract and grow innovative enterprises using IA/IP: To grow and attract innovative enterprises through IA/IP and give enterprises better access to publicly funded IA/IP for commercialisation.
• Develop good jobs and valuable skills in IA/IP: To help enterprises manage and obtain value from their IA/IP and seize business opportunities.

The full media release by the Intellectual Property Office of Singapore can be found here. For the full text of the SIPS 2030 report, please click here.

Singapore High Court dismisses appeal against IPOS decision for declaration of invalidity against the trade mark “VAGISAN”

Dr. August Wolff GmbH & Co. KG Arzneimittel (the plaintiff) was the registered proprietor of the trade mark “VAGISAN” registered on 12 March 2012 in Classes 3 and 5 in respect of its vaginal care products. Combe International Ltd (the defendant) is the registered owner of the “VAGISIL” marks in Singapore for Classes 3, 5 and 10 in respect of its products for feminine care. On 14 November 2017, the defendant applied for a declaration of invalidity of the plaintiff’s “VAGISAN” marks.

On 21 February 2021, the Principal Assistant Registrar (PAR) allowed the application by the defendant and declared the registration of the “VAGISAN” mark invalid on the grounds of (a) Section 23(3)(a)(i) read with Section 8(2)(b) and Section of the Trade Marks Act, and (b) Section 23(3)(b) read with Section 8(7)(a) of the Trade Marks Act.

The plaintiff subsequently appealed to the Singapore High Court against the decision of the PAR. On 25 February 2021, Justice Hoo Sheau Peng dismissed the plaintiff’s appeal.

On the ground under Section 23(3)(a)(i) read with Section 8(2)(b) and Section of the Trade Marks Act:

• Based on a comparison of the “VAGISAN” and “VAGISIL” marks, the judge found that the marks are similar to an average degree (as opposed to the PAR’s views that the similarities were of an above average degree). The prefix “VAGI” is of weak distinctive character, but the suffix “SIL” is distinctive, and therefore when taken as a whole, the “VAGISIL” marks possess a normal degree of distinctiveness. The marks are visually similar to an average degree owing to the differences of two out of three letters in the distinctive suffix components (“SIL” and “SAN”). The marks are also aurally similar to an average degree as the “SAN” and “SIL” components, being the distinctive components of the marks, are acoustically and phonetically distinct.
• The plaintiff did not dispute the PAR’S position that the goods claimed under the marks in Classes 3 and 5 are similar, and in some cases identical, such as the plaintiff’s “soaps” and “cosmetics” in Class 3 overlaps with the defendant’s “cosmetics and toiletries for feminine use”.
• On balance, there exists a likelihood of confusion on the part of the public., There were six factors supporting a finding of a likelihood of confusion: (i) the marks are similar to an average degree and the “VAGISIL” marks are distinctive as a whole; (ii) the “VAGISIL” marks have a respectable degree of reputation in Singapore; (iii) the goods covered by the “VAGISAN” and “VAGISIL” marks are similar; (iv) both the “VAGISAN” and “VAGISIL” products target the same segment of the market (i.e. females in Singapore); (v) the relevant segment of the public would carry in their minds an imperfect recollection of the overall impression of the marks; and (vi) the products in question are relatively inexpensive and therefore do not involve the type of expenditure that would mandate significant prior due diligence on the part of females in Singapore. Two factors, however, militated against a finding of likelihood of confusion: the nature of the goods would tend to command a degree of fastidiousness and attention on the part of a prospective purchaser, and consumers normally purchase these goods in brick-and-mortar shops with purchase decisions likely to be made with the assistance of specialists.

On the ground under Section 23(3)(b) read with Section 8(7)(a) of the Trade Marks Act:

• The “VAGISIL” marks possess a normal distinctive character to pass the threshold inquiry that the plaintiff had committed an actionable misrepresentation. For the same reasons as the grounds under Section 23(3)(a)(i) read with Section 8(2)(b) of the Trade Marks Act, the use of the plaintiff’s “VAGISAN” mark amounts to a misrepresentation that creates the likelihood of confusion.
• There is a real likelihood of damage to the defendant’s goodwill arising from the diversion of custom if female consumers in Singapore are led to believe that goods bearing the “VAGISIL” marks are goods of or are connected or associated with the plaintiff. This is due to the parties’ direct competition in the same lines of products, the similarity of the marks, and the existence of a likelihood of confusion.

Please click here for the decision by the PAR, and here for the decision by the High Court.

IPOS allows opposition of trade mark registration for “MiChat” in part (decision pending appeal to Singapore High Court)

On 6 June 2018, MiChat Pte Ltd. (the Applicant) sought to register its “MiChat” marks in Classes 9 and 42 and Classes 38 and 45. Later on 12 November 2018, Xiaomi Inc. (the Opponent) filed its Notice of Opposition to oppose the registration of the “MiChat” marks. One of the main grounds of opposition was Section 8(2)(b) of the Trade Marks Act where it must be shown that (1) the “MiChat” mark is similar to one of the Opponent’s earlier marks; (2) the goods/services applied for are similar to the goods/services for which the Opponent has protection; and (3) as a result, there is a likelihood of confusion. In its opposition, the Opponent relied on its earlier “Mitalk” marks in Classes 9, 35 and 42, and its “Mi” mark in a number of Classes.

The Registrar found that the opposition under Section 8(2)(b) of the Trade Marks Act succeeded in relation to the Applicant’s “Michat” mark in Classes 9 and 42:

• Mark similarity: The “MiChat” marks were overall more similar than dissimilar in comparison to the Opponent’s “Mitalk” marks as they were (a) visually more similar than dissimilar to a low extent; (b) aurally more similar than dissimilar to a low extent; and (c) conceptually considerably more similar than dissimilar. However, the Opponent’s “Mi” mark was more dissimilar than similar to the Applicant’s “MiChat” marks in totality since the “Mi” mark is sufficiently stylistic the average consumer may not perceive it by the sole word “Mi”. Therefore, the Registrar was of the view that there was no need to analyse the “Mi” mark any further in relation to the opposition.
• Goods/services similarity: The element of similarity of goods/services was not satisfied for the opposition to the Applicant’s mark in Classes 38 and 45 because while the services in these classes are related to goods in Class 9, they are not substitutes. On the other hand, the element was satisfied in respect of the opposition to the Applicant’s mark in Classes 9 and 42 as the item “computer software applications, downloadable” sought to be registered for the Applicant’s “MiChat” mark is similar to “recorded computer software” and “downloadable software, namely computer programs” registered for the Opponent’s “Mitalk” mark.
• Likelihood of confusion: The Registrar was of the view that the effect of the mobile application's low price will take precedence over the application's specific function such that the general public will not pay much attention when downloading/purchasing the application. Regarding the factors related to the impact of marks-similarity and goods-similarity, there was a likelihood of confusion that the marks are one and the same or are at least economically linked.

The decision is currently pending appeal in the Singapore High Court. For the full decision by IPOS, please click here.