Monthly Archives: December 2013

New Chinese Trademark Law to be implemented on May 1, 2014

Published with permission of Eagle IP Ltd, a Hong Kong and Chinese IP Firm.

The Chinese Government announced that the 3rd amendment to the 1982 Trademark Law, passed by the 12th meeting of The Standing Committee of the National People’s Congress, will be implemented as of May 1, 2014.

Below are some major highlights:

Multi-class applications
At present, multi-class application is not available. Under the new Trademark Law, applicants who wish to obtain protection for a trademark in more than one class is required to file multiple applications with the Chinese Trademark Office.

Multi-class applications will likely decrease application costs for companies with diversified business and need to protect their marks on a wide range of goods and/or services.

Sound marks will be registerable
The existing Trademark Law only provides for the registration of words, figures, letters, numerals, color combinations, 3-D symbols and any combination of the above. The amendment allows registration of sound marks.
Cell phone manufacturers, software companies and entertainment companies such as Sony Mobile, Microsoft, Twentieth Century Fox are likely to benefit from the new provision.

Time limit on examination procedures
Lengthy application process is a flaw known well to both applicants in China and abroad. The new Chinese trademark law set the time limit for preliminary examination from filing to publication to 9 months. The stipulated time limit for the Trademark Review and Adjudication Board to make a decision regarding a trademark review case of trademark rejection is also set at 9 months. The examination period for making a decision regarding an opposition case is 12 months. Time limit for examination might be extended by no more than 6 months only under exceptional circumstance with the approval of the relevant officials.
This means the trademark application process is expected to be shortened considerably.

Prior use of a trademark will be considered
Currently, China adopts first-to-file principle. This means a trademark that has successfully registered will defeat a trademark that has long been in use in China for a longer time but has not obtained registration.
Under the 3rd amendment, prior use of a mark will be recognized. Provided that a trademark has been in use in China for a long period of time and has established reputation, the trademark owner will be allowed to continue to use the mark within the original scope.

Increased protection against bad faith registration
The existing Trademark Law only prohibits bad faith registration of a trademark by agents and representatives of a trademark owner. The new Trademark Law now stipulates that any party who has commercial or contractual relationship with the trademark owner is prohibited from registering a trademark in bad faith if opposed by the owner.

Well-known trademark
Ever since “Well-Known trademark” protection is introduced in China in 2001, Chinese companies are very keen on trying every possible way to have their trademarks declared “Well-known”. “Well-Known trademark” has become a means of advertising and sales promotion. The new Trademark Law prohibits companies from putting the words “Well-Known trademark” on the packaging of their products. It also stops use of such status in advertising, exhibition and commercial activities.

Increased damages for trademark infringement
Under the current Trademark Law, the maximum statutory damages for trademark infringement are RMB 500,000. The new Trademark Law pushes the ceiling up six-fold to RMB 3,000,000. Punitive damages are also introduced where the trademark infringement is intentional and has serious consequences.

Bread & Kaya: The law and the Sweet Young Malaysian Girls blog

The law and the Sweet Young Malaysian Girls blog
Nov 29, 2013

– Netizens are riled up over the blog that posted pictures of young Malaysian girls, many of them minors
– Determining which laws could be applied against the blogger in question is however a challenge

Bread & Kaya by Foong Cheng Leong

I AM sure many of you have read of the recent ruckus over the Sweet Young Malaysian Girls blog. It’s a blog which featured a compilation of pictures of young Malaysian girls that has now been deleted.

Fellow netizen Harinder Singh had exposed the person allegedly behind the blog (let’s call him the SYMG Blogger). You can read all about it at Harinder’s blog.

I must highlight that a person should not accuse someone of a crime or a wrongdoing without evidence, as it is defamatory. Such a person may claim that someone else has proven the crime or wrongdoing, but in the event that such person is sued in court, he will need to prove the crime or wrongdoing (i.e. to prove that it is true).

In the event that the person who exposed the crime or wrongdoing refuses or fails to attend court, the defendant may not be able to sustain his defence.

Furthermore, the law on electronic evidence in Malaysia is still developing. Many types of electronic evidence (such as emails or printouts) are ruled inadmissible by our courts. In this regard, to be on the safe side, if you can’t prove it, don’t repeat it.

Many people have asked me what the victims can do, in particular the girls who had had their pictures posted on the blog. Some are of the view that no crime had been committed and that the girls can only sue the person behind the blog for copyright infringement (i.e. a civil wrong).

Some proposed invasion of privacy. However, if the pictures were taken from blogs or social media accounts of the victims and were easily accessible, there may not be an action for invasion of privacy.

It also may not be an offence under Section 233 of the Communications and Multimedia Act 1998, which provides that a person commits an offence if he or she posts any content that is either indecent, obscene, false, menacing, or offensive in character with the intention to annoy, abuse, threaten or harass any person.

In this present case, the contents of the blog do not seem to indicate such an intention.

If the images were taken and posted on the blog without permission, the person would be infringing the right of a copyright owner. But note that copyright generally belongs to the photographer and not the person(s) featured in a picture unless the person(s) in the picture had commissioned the photographer.

Therefore, the victims may not have the right to sue the owner of the blog … unless it is a selfie!

Nevertheless, the Copyright Act 1987 provides for criminal sanctions against copyright infringers. Section 41(1)(c) of the Copyright Act 1987 makes it an offence to infringe a person’s copyright. This provision is normally used against people who sell pirated movie and music and recently, website owners who host pirated movies and songs.

However, this provision is wide enough to cover pictures. It is possible to prosecute a person for distributing pictures of others without permission, especially when it involves a massive number of pictures. Any person convicted under this provision is liable to fine of no less than RM2,000 and no more than RM20,000 for each infringing copy, or imprisonment not exceeding five years.

The SYMG Blogger may be possibly be charged under s. 41(1)(c) of the Copyright Act 1987 (and if so, he could have set a new legal precedent in Malaysia!)

Nevertheless, SYMG Blogger may claim a defence of fair dealing under the Copyright Act 1987. He may claim that the blog was created for the purpose of research. Thus, this probably explains the ‘social experiment’ explanation he has been trying to pull.

Whether he will succeed in this defence would depend on whether it is genuine research or merely an afterthought.

Notwithstanding the above, there were naked pictures of young girls in the blog. It is certainly an offence to post obscene pictures online (Section 292 of the Penal Code).

Then there is a question on whether reproducing an image which had already been reproduced in another page (e.g. by way of re-blogging) amounts to publication. If we follow Malaysian laws, reproducing an image through re-blogging is a publication of the image by the person who re-blogged it.

Unfortunately, I have been informed that none of the victims have made a police report. I am told that some girls do not want their parents to know. Unless a police report is made, the police will not start investigations.

Without a complainant, it will be very difficult for the Attorney-General’s Chambers to prosecute the case.

First published on Digital News Asia on 29 November 2013.

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