The World Intellectual Property Organization (WIPO) had recently published the "2019 Madrid System Yearbook" (English version).

According to the yearbook, in 2018, the Madrid System for the International Registration of Marks had hit a new record with the annual total application volume exceeding 60,000, a year-on-year increase of 6.4%, after 9 years of consecutive growth. As of December 31, 2018, the Madrid System had 103 members covering 119 countries or regions.

In 2018, the US ranked first in the number of Madrid applications (8825) for the fifth consecutive year, Germany (7495) and China (6900) ranked second and third.

In 2018, the number of Madrid applications filed by foreign applicants in China was 24,289, second only to the European Union (25030), and the third was the US (22,827).

In 2018, China Madrid applications are found with the most extensive reach geographically, with a total of 59,624 designated countries, followed by the US (57,878) and Germany (463,45). And the average number of designation countries of each China application is 12, about twice that of the US and Germany.

(Source: WIPO website)

Recently, the National Development and Reform Commission (NDRC) and the Ministry of Finance (MOF) issued “the Notice on Reducing Certain Administrative Fees” which came into effective from July 1, 2019. Among which, the following articles concerns trademark:

1.The acceptance of the trademark registration renewal fee, reduced from 1000 yuan to 500 yuan;

2.The change fee, reduced from 250 to 150 yuan;

3.For the trademark services that can be submitted online and accept the electronic publication,

-change fee will be waived; and

-other charging items, including the acceptance of the trademark registration fee, the reissuance of the trademark registration certificate fee, the acceptance of the transfer of the registered trademark fee, the acceptance of the trademark renewal registration fee, the acceptance of delayed renewal registration fee, the acceptance of trademark review fee, the trademark certification fee, the acceptance of collective trademark registration fee, the acceptance of certifiying trademark registration fee, the trademark opposition fee, the trademark revocation fee, the trademark license contract filing fee, will be charged for 90% of the preexisting rates.

(Source: CNIPA website)

Recently, the National Development and Reform Commission (NDRC) and the Ministry of Finance (MOF) issued “the Notice on Reducing Certain Administrative Fees” which came into effective from July 1, 2019. Among which, the following stipulations concerns Patent: 　　

The conditions of patent applicants and patentees who can apply for the reduction of patent fees, as stipulated in Article 3 of the “Notice of the Ministry of Finance and the National Development and Reform Commission on Issuing the Measures for the Reduced Payment of Patent Fees” (No. 78 [2016] of the Ministry of Finance), will be adjusted for individuals, from those with an average monthly income of less than 3,500 yuan (42,000 yuan per year) to those with an average monthly income less than 5,000 yuan (60,000 yuan per year); for business, from those with the taxable income less than 300,000 yuan in the previous year to those with taxable income of less than 1 million yuan in the previous year.

(Source: China IP Magazine)

The 12th IPR Office Directors' Meeting was jointly held by the Korean Patent Office, the CNIPA of China, the European Patent Office, the Japanese Patent Office, and the US Patent and Trademark Office in Incheon, South Korea this June. Francis Gurry, the Director General of the WIPO attended the meeting as observer.

At the meeting, the Directors of the 5 IPR offices signed the joined declaration of cooperation of 2019. The statement summarizes the cooperation results of the five offices in the recent years in the areas of coordination and simplification of procedures, enhancement of work sharing, improvement of patent quality, convenient provision of patent information and statistical data, and timely revision of patent classification, meanwhile, it points out that the future cooperation among the 5 offices will focus on global technological change, providing high quality and reliable review, and innovation and improvement of the 5 offices cooperation mechanism.

(Source: CNIPA website)

Case Summary:

SALEEN is the world's top supercar brand of the US. Since its inception in 1983, it has won the World Super Run Manufacturer Award for 13 times. Its products include super-run cars, super-run SUVs and urban electric sports cars. Upon entering the Chinese market, SALEEN Automobile Company found that there was a malicious squatter, namely the plaintiff - Changzhou Lv Pai Electric Vehicle Co., Ltd. (hereinafter referred to as “Changzhou Lv Pai Company”), in Class 12 for car, which is its core product. The plaintiff applied for the registration of “SALEEN” and “賽麟” (pronounced as “sai lin” in pinyin) trademarks, which had hindered SALEEN company from registering its brand name as trademark. As a usual practice for a foreign company in face of squatting, SALEEN initially resorted to negotiating the trademark transfer with Changzhou Lv Pai Company, however, the other party maliciously changed the offer for numerous times, so that SALEEN decided to abandon the transfer negotiation and adjusted its strategy to entrust Unitalen to propose opposition to the No. 16896174 “SALEEN” and No. 16896286 “賽麟” trademarks (hereinafter referred to as “the disputed trademarks”) during the preliminary review and publication period, which was supported by the then Trademark Office (known as CNIPA now) with refusal of registration ruled, and was also supported by TRAB in the review of the refusal decision. Changzhou Lv Pai Company, in disagreement with the above decisions, appealed to the Beijing IP Court.

Court Decision:

In April 2019, the Beijing IP Court issued the judgement of the first instance arguing that the two disputed trademarks are respectively related to the constituent elements of the cited No. 14139175 “WM-Saleen” and No. 14139168 “威蒙賽麟” (pronounced as “Wei Meng Sai Lin” in pinyin) trademarks, although with slight difference, the disputed and cited trademarks had constituted similarity as the difference is not obvious on the whole. Meanwhile, considering the factors such as the function and use of the designated goods of the disputed and cited trademarks, which are the same or similar, so it has constituted similar trademarks on similar goods. Therefore, the plaintiff’s claim is rejected. 　　

Recently, the representative of the patent office of CNIPA attended the meeting held at Unitalen concerning a series of invention patents filed by Unitalen on behalf of Shanghai Huahong Hongli Semiconductor company.

At the meeting, Hua Hong Hongli engineers and Unitalen patent attorneys introduced the status quo of the company's technology R&D and patent layout to the reviewers of the patent office, with focus on the details of a series of invention patents mentioned above, including the inventive features of the claims, so as to help the reviewers sort out the in depth findings on the applications and close the cases more efficiently and effectively.

IAM had recently published the IAM Patent 1000 rankings of 2019. Unitalen, again, was selected among the “2019 IAM Global Patent 1000” and presented as a recommended firm in patent litigation and patent filing. Meanwhile, Deshan Li, the deputy director of Unitalen, appears again in the distinguished personnel as a well-known expert in patent filing.

IAM Ranking made the following comment on Unitalen:

Unitalen Attorneys at Law has a ubiquitous presence in Greater China,where it operates from a remarkable 22 offices in addition to its three overseas locations in Japan,Germany and the United States.The firm’s stable of 236 patent attorneys has an extremely broad technical scope and can prosecute patents with ease in areas ranging from biotechnology to telecoms and semiconductor patents.Au fait with prosecution procedures in China and other countries,it handles more than 8,000 applications per annum.Unitalen Attorneys at Law also possesses robust contentious capabilities,with attorneys at law including DeshanLi stationed in its many offices.Li is a physics maven who holds a PhD from Frankfurt University；the firm’s chief vice president provides an ideal doorway to China for many would-be international filers and litigants.