China’s IP makeover

Top-down intellectual property reforms include major judicial and legislative change, solving problems that have affected enterprises for decades. But do the changes go far enough? Luna Jin spoke to senior in-house counsel and practitioners in China for their observations

On the very last day of 2020, a storm surrounding copyright lit up China’s social media. After 15 years, popular Chinese novelist Guo Jingming finally made his first public apology to another novelist, Zhuang Yu, on Weibo, China’s twitter equivalent, for his past conviction for plagiarism, which became the No. 1 trending topic on the platform.

Four days later, a Guo-directed, big-budget film, The YinYang Master: Dream of Eternity, was withdrawn from cinemas nationwide. Although the reason for this is unknown, industry insiders believe it was a backlash against Guo’s plagiarism exploits as a creator. Earlier, 156 screenwriters, novelists, directors and other industry professionals issued a joint letter calling on the public to boycott Guo and others for their plagiarism acts in the film and television industry.

Even though the court ordered Guo to apologise as early as 2006, the difficulty in enforcing civil judgments has been a longstanding problem. In December last year, the Supreme People’s Court (SPC) issued its Guidelines for the Enforcement of Intellectual Property Judgments to facilitate parties to apply to the courts for enforcement of judgments.

Recently, there have been numerous judicial developments related to IP rights. On 19 November 2020, in the electronic map infringement dispute of NavInfo v Baidu, Beijing Intellectual Property Court ordered the defendant, Baidu, to make compensation of RMB64.5 million (US$10 million). In December last year, the court confirmed the invalidity of the “Green Lantern” trademark, registered by a lamp factory in Beijing, for damaging the name and title of the Green Lantern film.

Meanwhile, reaching a finale of the prolonged trademark disputes between US basketball player Michael Jordan and the Chinese sportswear company Qiaodan Sports, where the superstar sued the Chinese shoe manufacturer and its sales firm in 2012, Shanghai No. 2 Intermediate People’s Court ruled, on 30 December 2020, that Qiaodan Sports should stop using the trade name “Qiao dan” (which is also the phonetic Chinese translation for “Jordan”) in its company name, and on 12 January 2021, the Chinese company changed its name to “Zhongqiao Sports”.

In early January, Hangzhou Intermediate People’s Court ordered Guangzhou Wyeth to pay RMB30.55 million in damages to American pharmaceutical company Wyeth, which is also the first case in Zhejiang province where the highest award of punitive damages was applied, since the products involved are related to the health and safety of infants and children.

And recently, the market supervision administration of Fujian, Putian, China’s fake sneaker city, published its top 10 cases of trademark infringement, all related to shoes, in an endeavour to rectify counterfeit production in the city.

On the law-making side, the National People’s Congress (NPC) passed amendments to the Patent Law on 17 October 2020, and on 11 November amendments to the Copyright Law were also passed. Both will take effect on 1 June this year. The newly amended laws are considered to be the last two pieces of China’s current legal protection system for intellectual property (IP). Previously, protection of trademarks and trade secrets were covered respectively by the Trademark Law and Anti-Unfair Competition Law (amended in 2019).

In the arena of copyright and patents, major legislative amendments will have a significant impact on enterprises’ daily operations and legal affairs, but are these enterprises ready to embrace the new protection regime?