On June 23, 2021, QBPC held a workshop in Beijing on practical issues that have garnered wide attentions, including enterprise name infringement, administrative litigation involving trademark and patent licensing, and trade secret protection. The Workshop invited Yan Juan, partner of Zhong Lun Law Firm, her team member IP expert Zhang Tianhao, and Jiang Qiang, consultant of Zhong Lun Law Firm Shanghai Branch to discuss cutting-edge issues and share latest cases with members. Amanda Dong, Vice Chair of QBPC Legal Committee, presided over the Workshop and Jimmy Huang, senior partner of Zhong Lun Law Firm, delivered the opening remarks. More than 80 members attended the meeting.
The first topic of the Workshop was remedies against enterprise name infringement. Article 21 of the Administrative Provisions on the Registration of Enterprise Names, which came into effect on March 1, 2021, specifies that an enterprise may request the enterprise registration authority that handles the registration of the enterprise suspected of infringement to adjudicate the dispute. The registration authority may mediate between the parties; if the mediation fails, the registration authority shall make an administrative ruling within three months. The infringing enterprise must register with the authority for name alteration within 30 days from the date of the notice, otherwise it will be listed in the abnormal operation list.
The second session discussed several pointers in administrative litigations involving trademark and patent licensing. In 2014, the Supreme People's Court released a judicial interpretation on the jurisdiction of intellectual property courts in Beijing, Shanghai and Guangzhou. According to the interpretation, the first-instance administrative cases regarding IP rights licensing and confirmation filed due to dissatisfaction with rulings or decisions of administrative departments under the State Council shall fall under the jurisdiction of Beijing Intellectual Property Court. In 2020, about 80% of the cases accepted by Beijing Intellectual Property Court were such administrative disputes. One distinct feature of such disputes is the very short time limit for filing a suit. The time limit for filing an administrative lawsuit over patent right licensing and confirmation is three months, while that for trademark disputes is only thirty days. Meanwhile, as such disputes mostly involve foreign parties, documents such as identification and power of attorney must be notarized by local agencies and then certified by the consular office, which further strains the time limit. In this regard, right holders should strictly follow the pre-registration process of Beijing Intellectual Property Court, and apply for pre-registration within the statutory time limit; if the application is approved, then the right holders will have three additional months to complete the relevant notarization and certification formalities.
The last session of the seminar focused on trade secret protection in terms of a company’s internal control. Trade secret concerns the survival of a company, and once the dispute over trade secret is lost, it will have a huge negative impact on the enterprises. In practice, enterprises often fail to produce evidence or even satisfy the statutory elements of what constitutes trade secret due to lax confidentiality measures or inadequate enforcement. Two points are particularly noteworthy for right holders. First, confidentiality obligations attached to the contract or simple rules and regulations on trade secret protection do not constitute "appropriate measures to maintain the secrecy" as mentioned in the judicial interpretation of trade secrets. Such measures must be proactive acts and reflect the subjective desire of right holders to protect trade secrets. In a dispute between an enterprise and its employee, all claims were dismissed because the enterprise failed to prove that the employee had read or received the internal confidentiality rules. Meanwhile the confidentiality measures shall be consistent with the value of the secrets, and the scope and requirements of maintaining confidentiality shall be clearly defined. In some cases, due to the vague scope of confidentiality, the courts were unable to determine whether the confidentiality measures were reasonable. As a result, the relevant claims were not supported.
