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ARCO'S News　2005.June

■Enforcement of a Patent-related Provisional Injunction in PR China

Foreign countries now cry in unison for stricter protection of intellectual property (patents, designs, trademarks, copyrights, etc.) in China. At the end of last year, ARCO Patent Office attended, at a client's request, to a Chinese patent infringement case involving massage chairs. The outcome of the case throws much light on the present state of IP protection in that country (reported by NIKKEI Daily in its December 29, 2004 issue).

Within six months we obtained a Chinese court's decision for provisional injunction of patent infringement, and the injunction stopped nearly all manufacture and sale of the infringing products.

In China, in trademark infringement cases It is relatively easy to determine (i) whether the infringing mark is identical to the one being infringed; and (ii) whether the infringed trademark right is duly registered. Directly opposite to trademark rights, a patent infringement case involves much more difficulty for enforcement in China.

Three definite obstacles in enforcing patent rights exist in China.
(1) The subject of a patent right, unlike trademark rights, is technology;
this makes difficult to determine whether the right is infringed on or not. (2) There are, in addition, administrative problems. Trademarks are controlled by State Administration for Industry & Commerce (SAIC) responsible for the control of business corporations; however, patents and other industrial property rights are controlled by State Intellectual Property Office (SIPO), which can exercise much weaker authority.
(3) Furthermore, actual determination of whether a given technology is infringing a registered patent right is left to the local administrative body of a given region. This makes it mandatory for the aggrieved patent holder to go through local formalities required. Hampered by "localism" peculiar to Chinese bureaucracy, uncovering patent infringement would not go smoothly, if at all.

The foregoing facts in mind, ARCO decided to litigate the case in court. To counter the anticipated slow progress of litigation, we went for the enforcement of a provisional injunction.
In this case, the whole procedures did not move with ease, in that (i) the related patent had to be registered with extra expediency and then (ii) discovery and other required procedures had to be swiftly observed. But for our extra-close co-ordination with an enthusiastic patent attorney firm and law firm, the whole procedures would have certainly gone into much more difficulty. (Please refer to a chronology at the end.)

When the injunction was enforced, the manufacture of the infringing products at the factory in question could not be ascertained. However, the local attorney sent to each wholesaler and dealer in entire China who had been selling the infringing products a written warning together with a copy of the court injunction decision, the infringing products immediately disappeared from most show windows. Also the infringing manufacture has closed its home page. All in all, our client in Japan has obtained a realistic result.

This case is still being litigated in court. We ARCO are determined to positively take care of this kind of dispute cases and, hand in hand with local attorneys in China, strive for more orderly Chinese commerce.

Chronology