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Intellectual Property Working Group: Advertising Mascots

Advertising Mascots: Creating and Protecting in 2019

advertising mascots
Photo by Aaron Sebastian on Unsplash

Topic

China has become a highly competitive market. Companies here are crawling to get just a few seconds of attention from consumers. When they succeed, infringers are quick to react and take advantage of what others have done. In that respect, creating and protecting in 2019 is way different from a few years ago.

Advertising mascots are key, with a growing range of forms (e.g. emoticons, GIFs, stickers, memes) and channels (e.g. flesh-and-bone KOLs, virtual KOLs).

The same goes for IP protection: new tools are available in 2019, and they should be taken into consideration.

Let’s see how developing advertising mascots works live with Benoit Raoult, the Shanghai-based guru in this field. Two major legal firms (i.e. LEAF and LLR) will also elaborate on protection tips and blockchain-style solutions.

Q&A afterwards.

Agenda

Date: Thursday, 14 March 2019

Time: 6:30 pm – 8:00 pm

Language: English

Fees: Free, strictly reserved to CCI FRANCE CHINE Members

Venue: CCI FRANCE CHINE Shanghai Office

2/F, Mayfair Tower, 83 Fu Min Road, Shanghai 200040, P.R.C.

Speakers

Benoit RAOULT CEO, Dunho

Born and raised in Celtic-influenced Brittany (France), Benoit Raoult is a computer science engineer with over 15-year experience of entrepreneurship in North America, Europe and Asia. Benoit has been successful so far in developing software, exhibiting his photography work, providing consulting expertise in healthcare and corporate digitalization. In addition to B2B-oriented Jumo, Benoit established in 2017 Dunho, a character branding agency that engages audiences through illustrative content.

Bruno GRANGIER Partner, Leaf

Founding Partner of multi-award winner Leaf law in Shanghai, Bruno Grangier is a lawyer based in China since 2004. He has worked in M&A for major international law firms in Shanghai, Hong Kong and Paris, and is officially registered with the Chinese Ministry of Justice. He has gained extensive experience in transactions and negotiations across China, conducting many M&A and private equity operations, joint ventures with both private and public partners, as well as crisis management.

Coordinators

FENG Shujie Senior IP Counsellor, Law Professor, LLR-HD

Feng Shujie is professor and senior counsellor at LLR-HD, a Paris-headquartered European IP firm with offices in Beijing and Shanghai. Shujie has rich experience in advising companies on the protection of intellectual property. With a Ph.D. of Pantheon-Sorbonne University, Shujie is also Vice-President of the Trademark Case-Law Committee of the Supreme Court.

 

Séverin MÉLÈS Managing Director, Vidon (Shanghai) IP Law Group

Séverin Mélès is an IP counsel at Vidon IP Law Group, a French headquartered IP boutique with several offices across Europe and Asia. Séverin is involved in all kinds of IP-related cases (invention patents, design patents, trademarks, copyright).

 

For more information, please visit CCI France Chine’s events page.

 

Infringement proceedings: to divulge is to denigrate

to divulge is to denigrate
Photo by Kristina Flour on Unsplash

This case, on which the supreme court ruled on 9 January 2019, relates to legal action brought by Keter Plastic, a company specialising in plastic products that includes garden furniture which, on 6 August 2012, filed a complaint for infringement against Shaf, a company specialising in garden furniture, with regard to its European Union designs.

However, Keter Plastic’s commercial agent, Plicosa France, disclosed the existence of these infringement proceedings on 29 August 2012, resulting in several of Shaf’s clients cancelling their orders.

The tribunal and the court of appeal that heard the case brought by Shaf for payment of damages for unfair competition against Plicosa France, considered that there was no evidence to demonstrate that the information communicated by the defendant with regard to the infringement proceedings it had brought against the plaintiff lacked objectivity, was excessive, disparaging or even misleading.

The supreme court overturned the judgement by the Paris Court of Appeal of 17 January 2017 in application of Articles 1240 of the Civil Code and 10 of the European Convention on Human Rights, on the grounds that the disclosure by Plicosa France to Shaf’s clients of the legal proceedings for infringement not giving rise to a court ruling had no sufficient factual basis because it only relied on the sole complaint filed by the holder of the rights and represented a blameworthy disparagement.

This case demonstrates the need for extreme caution when using information about lawsuits, and even more so when there has been no ruling, given that the presumption of innocence must be respected.

The decision of the supreme court is all the more welcome since the initial infringement case was rejected by a ruling of 27 June 2013 confirmed by a decision on 27 January 2015.

 

Article by Gilles Escudier from LLR

Intellectual Property Working Group: How to Use Intellectual Property as Asset?

Advice from Legal and Financial Experts

Intellectual Property as Asset
Photo by Chrissy Jarvis on Unsplash

Topic

As intellectual property (IP) right owners, you make and sell your patented products, sell your products or services under your trademark, sell or license your copyrighted software, movies, paintings. IP is also a kind of asset that you make other use of it:

  • You can sell your IP,
  • You can create a company with your IP as investment and become shareholder
  • You can invest the property or license of your IP into a joint venture created with your Chinese partner
  • You can get a loan from the bank with your IP as a guaranty
  • You can qualify your company as Hi-tech enterprises with your IP and other innovation conditions in order to benefit from preferential tax rate, etc.

But, how to determine the value or price of your IP? How to use your IP as an asset? Our invited legal and financial experts will tell you the Chinese law and practice.

Agenda

Date: Thursday, March 7th, 2019

Time: 6:30 pm – 9:00 pm

Language: English

Fees: Free, reserved to CCI FRANCE CHINE Members

Venue: CCI FRANCE CHINE Beijing Office

2F, Building 81, No. 4 Gongti North Road, Chaoyang District, Beijing

Speakers

Joey ZHOU

Joey ZHOU Partner, Tax Adviser of Mazars

Joey has over 16 years of tax advisory and audit experience. She graduated from London School of Economics, majoring in Accounting & Finance. She serves a number of sizable multinational corporations with investments and operations in China as well as owner-manager businesses.

Audrey DrummondAudrey DRUMMOND Intellectual Property Counsellor of LLR China

Audrey provides legal advice in IP contracts, trademarks, patents, domain names and copyright, most particularly for European clients doing business in China. She once worked as in-house lawyer in several international firms in France and Singapore. She has experience in various fields such as the telecommunications, information technology, music and TV industries. 

 

SUN HanSUN Han Associate Lawyer of Zhonglun W&D Law Firm

Graduated from University of Bristol, Han specializes in areas of IPO, material assets reorganization, VC and corporate affairs and has served both foreign and Chinese enterprises in M&A and investment projects. 

 

Dr YUAN HuangDr. YUAN Huang Asset Auditor, Vice President of China Tong Cheng Assets Appraisal Co., Ltd.

Huang is Senior Economist and senior member of China Appraisal Society. He has more than 20-year experience and dealt with hundreds of asset appraisal cases. 

 

For more information about this event coordinated by FENG Shujie, Law Professor and Senior IP Counsellor (LLR China) and GUAN Ning, Legal director of Safran China, please visit CCI France Chine’s events page.

 

Intellectual Property Working Group: How to Conserve, Obtain and Use Evidence in Intellectual Property Counterfeiting Cases?

Evidence is a key element of litigation. This is more than true in counterfeiting cases.

evidence of counterfeiting
Photo par 3dman_eu sur Pixabay

In France, the procedural weapons offered to the plaintiff facilitate the demonstration of the infringement while, in China, it is generally up to the parties of litigation to collect evidence on their own.

In this case, how to obtain evidence in the hands of the infringers in a lawful manner? You need lawyers, investigators and notaries: lawyers determine and indicate what relevant evidence to collect and require, investigators use their ways to obtain them and notaries certify that the evidence collected is authentic and lawful.

This topic will be addressed by 4 intellectual property specialists during a CCI FRANCE CHINE Intellectual Property Working Group on Wednesday October 31st in Beijing:

  • Céline THIRAOUNNHO, senior intellectual property (IP) counselor of LLR China.
  • LIU Daochen, senior partner of Beijing Handing United Law Firm.
  • Andrew HOULBROOK, director of PSU Business Intelligence and Investigations
  • YU Kun, senior Chinese notary of Beijing Changan Notary Office.

For more information about this event coordinated by FENG Shujie, Law Professor and Senior IP Counsellor (LLR China), please visit CCI France Chine’s Beijing events page.

 

French Health Tour 2018 – 9 October 2018

French Health Tour 2018
Photo by chuttersnap on Unsplash

Our specialists, Clémence Vallée-Thiollier and Qiang Cen, will participate in the French Health Tour 2018, a one-day crash course dedicated to innovative biotech and medtech companies who will:

  • Learn more about partnering opportunities in China
  • Learn from the experience of successful French companies in China
  • Learn from experts about best practices (regulatory, IP, market access, etc.).

Clémence VALLEE, a French and European Patent Attorney who spent several years working in Beijing and still works closely with LLR China to serve French and European companies who want to develop strategic partnerships and raise funds in China, and Qiang CEN, an IP Legal Counsel, will point out stereotypes and share recommendations on intellectual property in China.

Find out more.

11 October 2018 – Symposium Paris, European hub for Business, Digital, IP and Tech law

Paris - European Hub for Law

Our IP experts, Guillaume de la Bigne, Gilles Escudier, Emmanuel Potdevin and Kristell Erout, are participing in the upcoming International Symposium “Paris, European hub for Business, Digital, IP and Tech law” that will take place at the new Tribunal de Grande Instance in the 17th arrondissement in Paris on 11 October.

This event is organised, among others, by the CNCPI and the Paris Bar with support from the Ministry of Justice.

The goal of this international symposium is to promote the French capital as a center where industrial property litigations, in particular international ones, can be settled; and to identify how to consolidate Paris’s status as a leading European business-friendly hub with a robust legal system.

Follow the link to read the detailed programme of the symposium. Debates will be held in English. English to French translation will be provided.

We would be thrilled to meet you there

Our trademark protection experts are at the MARQUES Annual Conference in Paris

 

2018 MARQUES Annual Conference
Kristell Erout and Qiang Cen at the 2018 MARQUES Annual Conference<?small>

Our  trademark, design and domain name protection experts, Kristell Erout and Qiang Cen, are attending the 2018 MARQUES Annual Conference in Paris everyday until Friday.

Don’t hesitate to seek them out if you’d like to discuss strategies to protect and enhance the value of your intellectual property.

« For they have sown the wind, and they shall reap the whirlwind. »

Old Testament, Hosea 8, 7.

foreign lost profits
Photo by Claire Anderson on Unsplash

On 22 June 2018 an interesting decision was issued by the US Supreme Court (USSC) relating to an award of damages in WESTERNGECO LLC v. ION GEOPHYSICAL CORP.  Reversing the decision of the Federal District Court, the USSC decided to award damages for loss of profits which occurred outside the US. This was a reversal of the previous position held by US Courts where lost foreign sales were generally considered not recoverable through enforcement of a US patent.  In order not to over, or under, interpret this decision and its consequences, the facts of the case are important.  Here is the Supreme Court’s own summary:

Petitioner WesternGeco LLC owns four patents relating to a system that it developed for surveying the ocean floor. The system uses lateral-steering technology to produce higher quality data than previous survey systems. WesternGeco does not sell its technology or license it to competitors. Instead, it uses the technology itself, performing surveys for oil and gas companies. For several years, WesternGeco was the only surveyor that used such lateral-steering technology.

In late 2007 respondent ION Geophysical Corporation began selling a competing system. It manufactured the components for its competing system in the United States and then shipped them to companies abroad. Those com­panies combined the components to create a surveying system indistinguishable from WesternGeco’s and used the system to compete with WesternGeco.

WesternGeco sued for patent infringement under §§271(f)(1) and (f)(2). At trial, WesternGeco proved that it had lost 10 specific survey contracts due to ION’s in­fringement. The jury found ION liable and awarded WesternGeco damages of $12.5 million in royalties and $93.4 million in lost profits.” (Emphasis added).

§ 271(f)(1) of the U.S. Title 35 (Patents) addresses the act of exporting a substantial portion of an invention’s components from the US to a foreign destination. §271(f)(2) addresses the act of exporting components that are specially adapted for an invention, once again, from the US to a foreign destination.

ION filed an appeal and the Federal circuit reversed the decision regarding the lost profits award on the basis that lost foreign profits are not recoverable, in principle. Based on the 22 June 2018 decision of the USSC, this principle does not hold anymore: foreign lost profits ARE now recoverable, at least under specific conditions.

In a nutshell, the USSC decided that once domestic infringement is established, the overriding principle of award is to provide a remedy which is commensurate with the harm caused by the infringement. The fact that the lost profits arose from the loss of foreign contracts was not relevant to assess damages.

At first, anyone can see the fairness principle underlying this decision. The action of the infringer enabled the purchaser to dispense with the surveying services of the patentee.  The loss caused could have threatened the very existence of the company.

However, among the five Supreme Court judges, two dissented with this approach. One of the dissenting judges, Judge Gorsuch J, raised the issue that the infringer becomes suddenly liable for acts beyond its control and that it has no power to stop. Hence, once the supply of the components necessary to manufacture the surveying devices is carried out, the infringer cannot retract it.  It becomes thus potentially liable for all future “lost contracts” that can be established as being the direct consequence of the supply forbidden by §271(f)(1) and §271 (f)(2) (cf. supra).  Although such a proof is usually difficult to establish, this was one of the cases where it was successfully argued, because there were no other competing players in this specialised market than the litigants themselves.

If the acts of using the invention had been carried out in the US, the purchaser in this case would have become an infringer and could have been stopped. This is not the case if the purchaser is in fact using the invention outside of the US.  The liability of the US supplier/infringer mushrooms suddenly without clear limits.

However the USSC balanced this potential unknown liability with the principle that the patentee has to be commensurately compensated, and decided in favour of the latter.

This decision now stands as a strengthening of patent rights.  This will be pleasing to the owners of US patents and increase the value of their US portfolio.  However to be applicable the patentee had not only to establish a domestic infringing act of exporting abroad but also a clear and direct consequential link between the act and the loss of profits. In this case this was possible due to the combination of :

  • a particular business model where the patentee kept its patented technology for itself and offered only its services; and
  • a market where only one competitor existed, said competitor being the infringer.

This particular combination of facts is not likely to be very frequent. Nonetheless, there is no doubt that U.S. exporters as well as U.S. patentees will be keeping this decision very much in mind as a biblical warning against unforeseen consequences of unlawful conduct.

 

Article written by Sophie McDade from LLRLLR logo

Intellectual Property Working Group – in China : overview, analysis and forecasts

Intellectual property protection in China

 

 

Need some insight on major trends and recent evolution in IP protection in China?

In Beijing on 8 May 2018?

Join the Intellectual Property Working Group’s next event coordinated by Shujie Feng which will discuss the upcoming White Paper on IP Protection from SIPO.

 

Date: Tuesday, May 8th 2018 

Time: 6:30 pm – 9:00 pm

Language: English

Fee: Free for CCI France-Chine members or 150 RMB for non-members

Venue: CCI France Chine Beijing Office

            2F, Building 81, No.4 Gong Ti Bei Road, Chaoyang District

            北京市朝阳区工体北路4号81号楼2层

To learn more about this event co-organised by CCI France Chine and the Benelux Chamber of Commerce in China, and register: visit the event page at CCI France Chine.