The latest intellectual property news and articles by Benny Kong & Tsai — trademark, patent, copyright, design and litigation practice, updated monthly. Subscribe to our newsletter.
“Trademark Roll” frequently appear, the Trademark Office strikes a heavy blow
“Trademark Roll” frequently appear, the Trademark Office strikes a heavy blow In the past 2020, news in the trademark field has repeatedly appeared in hot searches. Waves of “free-riding” and “reverse passing-off” trademark cybersquatting news have attracted widespread attention. The problem of malicious cybersquatting and hoarding of trademarks has been around for a long time, and has become more and more serious in recent years, harming the development of new economic and new form of industry. In January this year,... Read more: “Trademark Roll” frequently appear, the Trademark Office strikes a heavy blow
HONG KONG : New Doxxing offence
HONG KONG : New Doxxing offence After the government discussion paper to combat doxxing acts was published over a year ago, the Personal Data (Privacy) (Amendment) Bill 2021 was gazetted on 16 July 2021 and is expected to be enacted by end of 2021. The Bill provides new provisions to combat doxing acts by regulating them criminal offences though nowhere in the Bill have mentioned the word “doxxing”. The new provisions read as follows- “A person commits an offence if... Read more: HONG KONG : New Doxxing offence
Government (not Starbucks) sued counterfeiter on civil public interest and successfully claimed huge amount of punitive damages for consumers.
China: Government (not Starbucks) sued counterfeiter on civil public interest and successfully claimed huge amount of punitive damages for consumers. (Right side is fake) After the court imposed a penalty of fine for an amount of RMB 3.2 million (US$330,000) against the counterfeiter for the criminal offence of trademark infringement, Consumer council in Jiangsu Province as opposed to the trademark owner (in this case Starbucks) the first time took initiative to sue the counterfeiter at court civilly on basis of... Read more: Government (not Starbucks) sued counterfeiter on civil public interest and successfully claimed huge amount of punitive damages for consumers.
Filing Basis for Trademark Application
Filing Basis for Trademark Application In Taiwan, there is no so-called filing basis for trademark application. However, when you need to file a trademark application in the United States, the application case in Taiwan would be crucial. Practical execution and opinions with regards to filing bases are as follows. There are multiple filing bases on trademark application in the United States. For example, “intent-to-use”, “used-in commerce”, and “foreign registration”. Among them, you must provide a certificate of use in the... Read more: Filing Basis for Trademark Application
Michelin Sues Hong Kong Company for Trademark Infringement
Michelin Sues Hong Kong Company for Trademark Infringement Michelin, the French-based Company behind the internationally-renowned restaurant ratings guide, namely “Compagnie Générale des Etablissements Michelin”, recently filed a law suit against a Hong Kong company operating business via an online platform, for trademark infringement and passing-off, seeking damages and injunctive relief. The French-based company is the owner of registered trademarks for various “Michelin” and “米芝蓮”(Chinese transliteration of “Michelin”) and related trademarks in Hong Kong. It has accused the Hong Kong company... Read more: Michelin Sues Hong Kong Company for Trademark Infringement
“Little Yellow Duck” lost the claim for copyright infringement in Guangzhou, China
“Little Yellow Duck” lost the claim for copyright infringement in Guangzhou, China Little Yellow Duck Walnut duck The “Little Yellow Duck” copyright owner sued the Walnut duck in China for copyright infringement. The Little Yellow Duck lost the battle at the stage of 1st instance and appealed. The appeal court (Guangdong High People’s Court) upheld the 1st instance verdict and dismissed the appeal. The court commented : Protecting copyright is to encourage creation. Over protecting would however restrict the freedom... Read more: “Little Yellow Duck” lost the claim for copyright infringement in Guangzhou, China
Hong Kong : Court refused to allow Appellant to adduce new evidence on appeal after having lost the trademark opposition
The trademark laws in Hong Kong provide that the court shall have power to receive further evidence on questions of fact, and the evidence may be given in such manner as the court may direct. The following factors are relevant when determining whether to admit new evidence on appeal: (a) Whether the evidence could have been filed earlier and if so, how much earlier; (b) If it could have been, what explanation for the late filing has been offered to... Read more: Hong Kong : Court refused to allow Appellant to adduce new evidence on appeal after having lost the trademark opposition
Regarding Changes to Registered Trademark
According to practical experiences, there will always be relevant degree of layout and planning within the anticipated period of trademark application. Notwithstanding, as an old time saying of the Chinese goes: “Planning is always playing a perpetual game of catch up with changes”. As a result, the Taiwan Intellectual Property Office proposed corresponding procedures that targets some unpreventable matters, as well as matters that must be changed. Through these proposed corresponding procedures, it wishes to make certain trademark registrants receive... Read more: Regarding Changes to Registered Trademark
Procedure and Evidence Requirements for Trademark Cancellation in Non-Use Areas
Procedure and Evidence Requirements for Trademark Cancellation in Non-Use Areas Cancellation is a request to cancel all or part of the registered trademark. The reasons for cancellation due to non-use are as follows: – The trademark is not actually used in Hong Kong by the owner for its registered goods or services, or with his consent, it has not been used for more than three consecutive years without reasonable reasons (such as import restrictions on goods or services protected by... Read more: Procedure and Evidence Requirements for Trademark Cancellation in Non-Use Areas
Amendment of Trademark applications and Registrations in Hong Kong
Amendment of Trademark applications Soon after submitting an application for trademark registration, the representation of the trademark and its particular information are entered into the official database and can be searched online. It is crucial for the applicant to accurately list out what are applying for in the application form so that the data can then be accurately entered into the database. Amendments are only allowed in very limited circumstances. The idea is that, from the date when the application... Read more: Amendment of Trademark applications and Registrations in Hong Kong
