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Intellectual Property

Intellectual Property

The Monkey Selfie

Thursday, 14 August 2014 20:53

By Vincent Fong & Vera Sung

Wikipedia Commons / David Slater

Selfie: a photograph of one person taken by oneself, usually taken with a digital camera or mobile phone. This word has created quite a buzz on the Internet lately. The rise of the selfie has also created a number of selfie-related legal issues. One example is that of who owns the famous Oscar selfie.

The Monkey Selfie
In 2011, a macaque monkey in Indonesia took a camera from a British photographer, David Slater and took a couple of selfies. One of the selfies has gone viral and made it onto Wikipedia Commons.

Mr. Slater requested Wikipedia to remove the image from its site and stop the unauthorized use of the image, claiming ownership of the monkey selfie. However, Wikipedia has refused to take down the image, taking the view that under the U.S. copyright law, no one owns the copyright to the image and therefore they are free to use the image.

What about the ownership of the selfie under Hong Kong Copyright Law?
Under Hong Kong Copyright Law, an author of a work is the person who creates it. In general, the author of a work is the first owner of copyright in it.

According to the Interpretation and General Clauses Ordinance, “"person" … includes any public body and any body of persons, corporate or unincorporated…”

Therefore, the monkey in this case cannot be an author of the photo, as it is not a “person”. And since Mr. Slater did not create the expression of idea that may be protected copyright, namely the photo, he cannot be the author.

Further, under Section 178(1) of the Copyright Ordinance, a work qualifies for copyright protection if the author was at the material time:

(a) an individual domiciled or resident or having a right of abode in Hong Kong or elsewhere; or
(b) a body incorporated under the law of any country, territory or area.

A monkey is not an individual nor a body incorporated. The selfie does not fulfil the qualification requirements, and thus does not qualify for copyright protection.

What about the ownership of the selfie under PRC Copyright Law?

Under Article 2 of the PRC Copyright law, only persons, legal persons or other organizations can enjoy copyright in their work.

As the monkey is not a “person”, it does not enjoy copyright protection in its work. Similar to the case in Hong Kong, as Mr. Slater did not create the photo, he cannot be the author.

How can OLN assist?
OLN and our Intellectual Property team in Hong Kong and Shanghai can assist you with all your copyright and intellectual property issues and in particular, registering and enforcing your copyright in China.

This article is for information purposes only. Its contents do not constitute legal advice and readers should not regard this article as a substitute for detailed advice in individual instances.




By Vincent Fong & Vera Sung

On 1 May 2014, the China State Intellectual Property Office (the “SIPO”) revised its Patent Examination Guidelines to extend protection to graphical user interface (the “GUI”) under patent for design.

GUI is a type of interface that allows users to interact with electronic devices through graphical icons and visual indicators such as secondary notation, as opposed to text-based interfaces, typed command labels or text navigation.

Original Position
Prior to the amendment, according to the examination guidelines, “pattern shown on a product after it is switched on; for example, pattern on the electronic watch display, pattern on screen of mobile phone, software interface, and so on” are ineligible for design patent.

Subject matter
Subsequent to the amendment, GUI per se is not patentable.  However a product together with its GUI is patentable.

Samples of patentable GUI for design:
•    a mobile phone with its home screen and icons;
•    a PC with a software interface

Therefore, the same interface used on different products may require separation registration. For instance, same interface used on a mobile phone and tablet computer requires two design applications. The GUI could be static or dynamic (animated GUI). As the GUI must be registered as a part of a product, the protection in China is narrower than that in the U.S. and Europe.

Game interface, pattern that is not related to the human machine interaction or realization of product’s function are not patentable.

Samples of not patentable GUI for design:
•    Wallpaper for example the tulips wallpaper with a laptop
•    Startup animation;
•    Shut down animation; and
•    Layout of webpage.

As corresponding design application in the U.S. and Europe is unlikely to include view of the GUI as a part of a product, for example GUI of a phone without showing the phone, therefore it is uncertain that applicant will be able to claim priority to the foreign application when filing in China.

Contents of Application

The Design maybe presented in drawings or photographs.

Under the amended examination guidelines, on top of the general requirements apply to all patent for design application, applicant applying for patent for design for GUI is required to provide a brief description on the uses of the GUI, position of the GUI on the product, the way user and the GUI interacts and different states of the animation (if applicable).

How can OLN assist?
OLN and our Intellectual Property team in Hong Kong and Shanghai can assist you with all your patent and intellectual property issues and in particular, registering and enforcing your patent right in China.

This article is for information purposes only. Its contents do not constitute legal advice and readers should not regard this article as a substitute for detailed advice in individual instances.

By Vincent Fong, Patent Engineer

The Standing Committee of the National People’s Congress passed the third amendment to the PRC Trade Mark Law on 30 August 2013. The amendment to the law and the new implementation rules came to effect on 1 May 2014.

Here are the highlights of the new Trade Mark Law and Implementation Rules.

  1. Good Faith
  2. Scope of Trade Mark
  3. Well-known Trade Mark
  4. Time Limit
  5. Opposition
  6. Invalidation and Cancellation
  7. Enforcement of Trade Mark
  8. Administration of Trade Mark related matters
  9. Assignment, License and Renewal of Trade Mark

By Vincent Fong


Intellectual property right (“IPR”) owners may further protect their rights in China by recording their IPR with the General Administration of Customs of PRC (“GACC”). GACC will detain infringing goods entering and leaving China based on the recorded IPRs and will inform the IPR owners. IPR owners may then take appropriate action against the infringer.
To facilitate the paper-less operation of the recordal of IPR, GACC has developed a new system, IPR Protection System, for the recordal and the system went into operation on 1 March 2014. Under the new system, IPR right owner may apply for recordal, extension, amendment and revocation of the IPR record over the internet; IPR right owner is no longer required to file paper application form to GACC.


With the abolishment of paper application, the IPR owners are required to provide all supporting documents for the recordal in electronic form. It should be noted that such electronic documents must be colour scanned copies of the originals.


How can OLN assist?

OLN can advise on the procedures and the required documents for modification of PRC Customs record of IPRs as well as how to anti-counterfeiting act by using the IPR recordal by the Customs.


This article is for information purposes only. Its contents do not constitute legal advice and readers should not regard this article as a substitute for detailed advice in individual instances.

Introduction to the Third Amendment on the PRC Trade Mark Law

By Vincent Fong

 

The Standing Committee of the National People’s Congress passed the third amendment to the PRC Trade Mark Law on 30 August 2013. The amendment will be effective on 1 May 2014.
This amendment is widely regarded as the biggest change to the Trade Mark Law, since the Trade Mark Law was first created in 1982.
Here are the highlights of the amendment.

 

1. Good Faith
2. Scope of Trade Mark
3. Well-known Trade Mark
4. Time Limit
5. Opposition
6. Enforcement of Trade Mark
7. Administration of Trade Mark related matters

 

1.    Good Faith

The general requirement of good faith in applying and using trade mark is added to Article 7. This could be a catch-all clause against bad faith registration if the registration does not fall under any of the specific grounds provided in the law.

Further, trade mark owner may object to the application of mark which is the same or similar to his unregistered mark for the same or related goods, if the applicant is clearly aware of the existence of the owner’s prior mark and there is some relationship between the owner and the applicant. (Art. 15)

Trade mark agency may not apply a mark for an applicant, if the agency knows or ought to know that the mark infringes other’s prior right or the applicant is preemptive applying for the mark in bad faith. (Art. 19)

2.    Scope of Trade Mark

The amendment expands the definition of trade mark to include the non-traditional trade mark of sound.  However, single color remains outside of the definition. (Art. 8)

On the other hand, the amendment further restricts the use of mark related to or mark similar to those related to the PRC government. The amendment expands on the list of prohibited marks to prohibit the use of national anthem, military emblem, military song or mark that is similar to the aforementioned as trade mark. (Art. 10)

3.    Well-known Trade Mark

Under the new law, the process to recognize a well-known trade mark is clarified. (Art. 14)

The owner of trade mark may request for a determination on whether the mark is a well-known trade mark in various trade mark related proceeding. Upon the request, depending on the nature of proceeding, the relevant authority such as the Trade Mark Office, Trade Mark Review and Adjudication Board (TRAB) or the People’s court will make a determination.

The determination will be based on (1) the relevant public’s awareness of the mark, (2) duration of use of the mark, (3) duration, extent and geographic coverage of the promotion of the mark, (4) record that the mark was protected as Well-known Trade Mark, (5) other relevant factors.

In addition, the new law prohibits the abuse of well-known trade mark status. The owner may not put the term “Well-known Trademark” on products and product’s packages or containers or use the term in promotional or commercial activities. If the owner violated this clause, it can be fined up 100,000 CNY.

4.    Time Limit

Under the amendment, time limits for Trade Mark Office to issue its decision in various proceedings are set. This helps shorten the trade mark application process and provides more certain time estimate to the applicant regarding the timeline of the proceeding. For example, Trade Mark Office has to issue a decision on examination of application within 9 months under the new law, which is considerably quicker than the current average response time of about 12 months.

Various time limits in the new law are listed below:

Matter

Time Limit for issuance of decision

Examination of application (Art. 28)

9 months

Review of rejection of application (Art. 34)

9 months, could be extended for 3 months under special circumstances

Examination of Opposition (Art. 35)

12 months, could be extended for 6 months under special circumstances

Review of opposition decision against registration (Art. 35)

12 months, could be extended for 6 months under special circumstances

Examination of Invalidation application made by any third parties (Art. 44)

9 months, could be extended for 3 months under special circumstances

Examination of Invalidation application made by prior right owner or interested party (Art. 45)

12 months, could be extended for 6 months under special circumstances

Review of invalidation decision (Art. 44)

9 months, could be extended for 3 months under special circumstances

Examination of Revocation application (Art. 49)

9 months, could be extended for 3 months under special circumstances

Review of revocation decision (Art. 54)

9 months, could be extended for 3 months under special circumstances

 

5.    Opposition

The amendment removed the opponent’s right to appeal in the case of Trade Mark Office’s decision favor the applicant. Upon approval, the Trade Mark Office shall issue registration certificate and make a publication.

If the opponent is not satisfied, it has to further pursue the case by filing an invalidation proceeding at the TRAB. (Art. 35)

The amendment clarifies the right of the trade mark owner, in which the mark was allowed to registration after opposition. The registration of the opposed mark has no retrospective effect on other party who have using a mark identical or similar to the opposed mark in identical or similar goods or services between the expiration of the original publication of the opposed mark and the date of decision approving registration of the opposed mark. Unless, the other party was using the identical or similar mark in bad faith, in that case the other party is liable for the damages caused to the owner of the opposed mark. (Art. 36)

6.    Enforcement of Trade Mark

In the new law, the enforcement of trade mark has been strengthened by redefining the limit on the administrative fine in various trade mark related offences and assessment of damages in trade mark infringement.

Assessment of damages (Art. 63)
Under the new law, the damages of trade mark infringement will be assessed based on the actual damages of the right owner. If the actual damages is difficult to assess, then the damages could be assessed based on the illegal earning of the infringer. If both are difficult to assess, then the damages will be based on the reasonable multiples of the trade mark licensing fee.

If the court unable to assess the damages based on any of the methods, then the court may award damages not more than 3 million CNY depends on the seriousness of the infringement. The limit is 6 times higher than the current limit of 500,000 CNY. The higher damages should deter the trade mark infringement activities.

In the past, as there is a lack of discovery process in the trade mark infringement proceeding, trade mark owner faced difficulty in establishing the damages. Under the new law, the court may force the infringer to produce accounts or information related to the infringement in order to properly assess damages.

Punitive Damages (Art. 63)
If the circumstances of infringement are serious, the court may award punitive damages that are between 1 to 3 times of the damages determined by the assessment methods defined by law.

Infringement of trade mark not in use (Art. 64)
If the owner of registered trademark cannot prove use nor evidence of actual loss from the infringement, the infringer will not be liable for damages. This should help discourage the activities of trade mark trolls.

Limit on the fine/damages

Matter

Limit on the fine/damages

Violation of Art.6 – requirement by law or administrative regulations for some goods to bear registered trademark (Art. 51)

If illegal earning exceeds 50,000 CNY, fine imposed shall be not more than 20% of the earning.

If illegal earning is below 50,000 CNY, fine imposed shall not be more than 10,000 CNY

Use of prohibited mark in Art 10 or misrepresent unregistered trade mark as registered. (Art. 52)

If illegal earning exceeds 50,000 CNY, fine imposed shall be not more than 20% of the earning.

If illegal earning is below 50,000 CNY, fine imposed shall not be more than 10,000 CNY

Put the term “Well-known trademark” on products or use the term in promotional or commercial activities. (Art. 14 Clause 5 and Art. 53)

A fine of 100,000 CNY

Infringement of registered Trademark – Administrative Fine (Art. 60)

If illegal earning exceeds 50,000 CNY, fine imposed shall be not more than 5 times of the earning.

If illegal earning is below 50,000 CNY, fine imposed shall not be more than 250,000 CNY

Infringement of registered Trademark – Damages (Art. 63)

Statutory damages up to 3,000,000 CNY

 

7.    Administration of Trade Mark related matters

Application process will be simplified under the new law; multi-class application and electronic application are allowed under the new law. (Art. 22)

Further renewal of trade mark registration will be accepted within 12 months of expiration, compared to the current practice that renewal is usually accepted about 6 months prior to expiration. (Art. 40)

How can OLN assist?

OLN and our Intellectual Property team in Hong Kong and Shanghai can assist you with all your trade mark and intellectual property issues and in particular, registering and enforcing your trade marks right in China.
October 2013

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