APAC IP Update – Autumn 2022



CNIPA releases China Patent Survey Report 2021

In July 2022, the China National Intellectual Property Administratiion (CNIPA) released the China Patent Survey Report 2021. The data in the report shows that, at this stage, China’s patent transfer and transformation situation remains active, the rate of invention patent applications continues to rise, cooperation and innovation between industry, universities and research institutes are effective, and the domestic intellectual property protection environment is stable and improving.

Meanwhile, the report also states that with the increasing international business of Chinese enterprises and increasingly fierce competition in the market, the protection of intellectual property rights (IPRs) in China also faces a rapidly increasing trend of overseas IPR disputes. The Report also provides an outlook on the development of IPRs in China in the coming years, with a key thematic analysis on the industrialisation rate of patents and their benefits for patent protection.

Click here for the full text of the Report (Chinese only).

CNIPA issues full text of the Understanding and Application of Judgment Criteria for Trademark Infringement

On 15 June 2020, the CNIPA issued the Standards for Judging Trademark Infringement. In order to further promote the guidance of trademark enforcement, further improve the interpretation of the Standards, help law enforcement officers accurately understand the meaning of the provisions and promptly answer questions on the application of the Standards in the process of implementation in various regions, on 12 August 2022 the CNIPA published on its official website the full text of the 99-page Understanding and Application of Judgment Criteria for Trademark Infringement.

The introduction of this interpretation should result in the better use of the Standards in the judicial practice of trademark infringement. This also demonstrates the increasing protection of trademark rights holders in China.

Click here for more details (Chinese only).

EUIPO summarises main achievements of IP Key China project over past five years

On 8 September, the European Union Intellectual Property Office (EUIPO) issued a press release summarising the main achievements of the IP Key China project over the past five years, and the future objectives of the project. The IP Key China project is a technical cooperation project on IPRs, directed by the European Commission and organised and co-financed by the EUIPO, which has been a priority between China and the EU, the release said. Over the past five years, the project has been dedicated to helping EU companies, enterprises and innovators explore the Chinese market, facilitating ongoing exchanges among Chinese and EU authorities, business associations and the China-EU IP dialogue. In the future, the project will promote the convergence of Chinese, EU and international IPR protection standards with a stronger focus on enforcement. In addition, the project will focus on strengthening partnerships and strategic engagement with companies and industry associations operating in China and will promote greater involvement of the EU and its member-state institutions.

Click here for more details.

SAMR seeks public comments on the Regulations on Prohibition of Abuse of Intellectual Property Rights to Exclude and Restrict Competition (Draft for Comments)

On 27 June 2022, shortly after the announcement of the new Anti-Monopoly Law, the State Administration for Market Regulation (SAMR) issued the Provisions on Prohibition of Abuse of Intellectual Property Rights to Exclude and Restrict Competition (Draft for Public Comments) for public consultation.

Previously, on 23 October 2020, the Regulations had been amended in accordance with SAMR Order No. 31.

These provisions were first created in June 2014 when the China State Administration for Industry and Commerce (SAIC, the predecessor of SAMR) drafted the Provisions on Prohibition of Abuse of Intellectual Property Rights to Exclude and Restrict Competition (Draft for Public Comments) and issued the Provisions on Prohibition of Abuse of Intellectual Property Rights to Exclude and Restrict Competition on 7 April 2015, which came into effect on 1 August 2015.

Click here in the link for more details (Chinese only).

First litigation case under China’s patent linkage system

On 5 August 2022, the Supreme People’s Court issued the first instance decision of the case between Chugai Pharmaceutical Co., Ltd. (i.e. the Plaintiff) and Wenzhou Haihe Pharmaceutical Co., Ltd. (the Defendant). The court ruled that the generic drug in question did not fall within the protection scope of the patent right owned by the Plaintiff, and ruled to dismiss the Plaintiff’s appeal.

This case is the first litigation case after China established the patent linkage system. On 15 April 2022, the Beijing IP Court announced the first instance judgment on the dispute to confirm whether Generic drugs applied for registration by the Defendant must fall into the scope of protection of the Plaintiff’s patent right, in which the court held that the generic drug in question in this case did not fall within the protection scope of the patent right in question in this case, and ruled to dismiss the Plaintiff’s litigation claims.

This case has important implications for the development of China's patent linkage system. The final court decision was made within the nine-month waiting period, which means the court proceedings did not cause an extra waiting period for the drug's marketing.

Click here in the link for the full text of the court decision (Chinese only).

Hong Kong

Hong Kong Copyright (Amendment) Bill 2022 goes to LegCo

Underscoring that copyright system is an important part of the intellectual property (IP) regime in Hong Kong, the Copyright (Amendment) Bill 2022 went to the Legislative Council in June 2022.

Previous to this, efforts have been made throughout the years to update Hong Kong’s copyright regime and to strengthen the copyright protection in Hong Kong. The Hong Kong government introduced amendment bills in 2011 and 2014 respectively, into the Legislative Council (LegCo). While the respective LegCo bills committees supported the passage of the amendment bills on both occasions, the corresponding legislative processes could not be completed before the expiry of the respective LegCo terms.

The government had conducted a three-month public consultation on updating Hong Kong’s copyright regime in November 2021. Majority of the respondents agree that there is an imminent need for Hong Kong to update the copyright regime and generally support the government’s key legislative proposals.

Therefore, the Copyright (Amendment) Bill 2022 (Bill) was listed into the gazette on 27 May 2022, and the Secretary for Commerce and Economic Development had introduced the Bill into LegCo for first and second readings on 8 June 2022.

The first reading is the formal introduction of the Bill to the LegCo.

The second reading takes place right after the first ready, where the motion “the bill be read the second time” will need to be agreed upon. It is normal for the debate on the Bill to be adjourned. If the motion for the second reading is agreed upon, the Bill will be submitted to a “Committee of the whole LegCo” for examination and voting. If the report of the Committee is adopted, the LegCo is deemed to have ordered the Bill to be set down for the third reading.

The third reading takes place and members may deliver speeches on whether the Bill should be supported. If the motion on third reading is passed, the Bill completes its passage in the LegCo. A Bill passed by the LegCo will then need to be signed and promulgated by the Chief Executive for it to be effective.

Click here (link - Copyright (Amendment) Bill 2022 gazetted (info.gov.hk)) for the full text.

Hong Kong Chief Executive’s 2022 Policy Address released

Hong Kong Chief Executive John Lee released his 2022 Policy Address on 19 October 2022, which outlined several development plans in relation to intellectual property.

  • Trademark
    • Introduction of the relevant subsidiary legislation into the LegCo in 2023, with a view to implementing the international trade-mark registration system (The Madrid Protocol) as soon as possible.
  • Copyright
    • Strive for the passage of the Copyright (Amendment) Bill 2022 to the Copyright Ordinance in 2023 to strengthen copyright protection in the digital environment, and embark on a new round of review upon bringing the new legislation into operation.
  • Patent
    • Roll out a pilot project with the China National Intellectual Property Administration to enable Hong Kong applicants to enjoy prioritised examination of qualified patent applications in Mainland China.
    • Enhance the substantive examination capability of the patent examiners of the Intellectual Property Department of Hong Kong (IPD) under the original grant patent system by increasing the number of patent examiners in phases from the existing 11 to approximately 100 in 2030, with a view to acquire institutional autonomy for conducting substantive patent examination by 2030.
  • Registered Design
    • Launch a review of the current registered design regime in 2024 and strive to commence consultation in 2025 on the way forward in updating the regime.
  • General
    • The IPD will develop a talent pool and enhance its manpower training programmes, with a target to provide IP training for 5,000 personnel across different industries over these years.
    • The IPD will collaborate with the Department of Justice to continue promoting IP mediation and arbitration services, and will strengthen its co-operation with the Law Society of Hong Kong to enhance the free IP Consultation Service in 2022-2023.
    • The IPD will reach out to 100,000 students within these years to enhance their awareness for respecting and protecting IP rights, and to encourage them to actively explore and innovate.
    • The IPD will continue its liaison with Mainland China, regional and international organisations to promote Hong Kong’s role as the regional IP trading centre, and work with other departments and organisations to promote IP trading and professional services through trade missions, seminars and publicity programmes (e.g. the Hong Kong Trade Development Council’s annual Business of IP Asia Forum).

Click here (link - Policy Measures (policyaddress.gov.hk)) for the full text.

Hong Kong Customs regularly conducts enforcement operations and seizes counterfeit products

Over the past two months, in September and October 2022, the Customs and Excise Department (C&E) conducted a number of enforcement operations to combat the online sales of counterfeit products including perfume and cosmetics products, accessories, watches and wheel rims. This follows a string of high-value seizures of a variety of counterfeit products over the summer including the seizure of counterfeit shoes, handbags and clothing valued at over HKD4.1m.

Customs appeals to consumers to purchase goods at shops with a good reputation and to check with the trademark owners or their authorised agents if the authenticity of a product is in doubt.

Click here for the full text:

  • Hong Kong Customs seizes suspected counterfeit goods worth about $3 million (with photos) (info.gov.hk)
  • Hong Kong Customs seizes suspected counterfeit goods worth about $4.1 million (with photos) (info.gov.hk)
  • Hong Kong Customs seizes suspected controlled items and suspected counterfeit goods worth about $6.3 million (with photos) (info.gov.hk)
  • Hong Kong Customs seizes counterfeit goods of famous brands worth about $1.5 million (with photos) (info.gov.hk)
  • Hong Kong Customs combats sale of counterfeit wheel rims (with photo) (info.gov.hk)
  • Hong Kong Customs special enforcement operation combats sale of counterfeit watches (with photo) (info.gov.hk)
  • Hong Kong Customs combats online sale of counterfeit perfume and cosmetics products (with photo) (info.gov.hk)
  • Hong Kong Customs combats online sale of counterfeit accessories (with photo) (info.gov.hk)


99 domain names associated with illegal streaming sites blocked under dynamic injunction granted by the Singapore High Court

On 20 September 2022, the Asia Video Industry Association’s Coalition Against Piracy (CAP) announced that 99 more domain names associated with illegal streaming sites have been blocked by Internet service providers under the terms of a dynamic site-blocking injunction first granted by the Singapore High Court in February 2022. The injunction was originally granted to block 30 illegal streaming sites and about 150 associated domain names. The blocking of the additional domain names was made in favour of CAP members, BBC Studios, Discovery Communications, LaLiga, the Premier League and TVB International, and effectively prevents illegal streaming sites from circumventing the original court order by blocking associated domains that the sites would redirect to.

IPOS extends IP acceleration programme to April 2024

The Intellectual Property Office of Singapore has extended the SG IP FAST programme, which supports the acceleration of patent applications in all technology fields, to April 2024 with a doubled annual cap of 120 patent applications. Under the SG IP FAST programme, straightforward patent applications can be granted in six months and applicants with a patent application accelerated under the programme can request for acceleration of their related trade mark and registered design applications.

Click here for more information on the eligibility criteria and request procedures for the SG IP FAST programme.


Amendments to Copyright Act

On 23 August 2022, the amendments to the Thai Copyright Act came into force, which introduced a number of changes to the law for the purposes of compliance with the World Intellectual Property Organization Copyright Treaty and to address online infringement.

The key changes include (i) the extension of the protection period for photographic work from 50 years to the lifetime of the creator plus 50 years; (ii) introduction of a notice & takedown procedure through which a copyright owner with reasonable evidence may notify an Internet service provider to remove computer information infringing on their copyright; (iii) the broadening of the scope of technological protection measures covered by the Copyright Act to technologies that protect the rights of copyright owners or actors or that are used to effectively control access to copyrighted work or performance records, and deeming any attempt to circumvent such technological measures (i.e. any act that results in the inefficiency of technological protection measures used for access control) as a violation.


Amendments to IP laws to take effect on 1 January 2023

On 16 June 2022, amendments to several IP laws were officially passed by the National Assembly of Vietnam to align the laws more closely with international norms and standards. These amendments will take effect on 1 January 2023.

The amendments introduce (i) additional grounds for invalidating patents; (ii) changes to the assessment of novelty to include disclosures in publications of previous patents that are published on or after the filing date or priority date of the patent application; (iii) patent opposition proceedings; (iv) definition of a well-known mark and providing for the registration of sound marks; (v) “bad faith” as a ground for trade mark opposition or invalidation; (vi) a wider definition of “industrial design” that includes parts of a product (to be assembled into a finished product) and features that are visible during the use of the product; and (vii) the right to defer the publication of a design.