With the arrival of the Christmas and Holiday Season, Chang Tsi & Partners extends its most sincere greetings and warmest wishes. We have greatly appreciated the opportunity to work with you over the years and would like to extend our heartfelt thanks. Chang Tsi & Partners is happy to share our most recent newsletter with you. We hope that you enjoy good health and fortune in the New Year.

On 2 September 2011, following assessment and review by the Accreditation Committee of the China Trademark Association, Chang Tsi & Partners was one of thirty institutions selected as a “2011 Outstanding National Trademark Representative”. Selection was based on services provided, amount of business, income, number of professionals, and a survey of clients and the public on attitudes towards the candidates. This honor was bestowed after evaluation of all the trademark agencies/law firms across China.

In September 2011, at the“2011 Annual Chinese Trademark Conference” in Chengdu, United States Patent and Trademark Office (USPTO) official Conrad W. Wong gave a lecture on the difficulties and eventual success Air China encountered in registering its trademarks in the United States. Air China’s application for registration of the trademark AIR CHINA was initially rejected twice due to what USPTO considered confusing similarity with China Airlines. After Chang Tsi & Partners together with our foreign counsel Susan Douglass from Fross Zelnick Lehrman & Zissu presented additional evidentiary support the Susan foreign counsel presented additional evidentiary support the adverse ruling was withdrawn and trademark protection granted. This case was selected at the Annual Chinese Trademark Meeting as one of ten “2009-2010 Highest Impact Chinese Trademark matters”.

The State Intellectual Property Office (SIPO) of China signed a memorandum of understanding with the Korean Intellectual Property Office (KIPO) to launch a Patent Prosecution Highway (PPH) pilot program beginning on March 1, 2010. The pilot program will last for one year ending on February 28, 2013, and allow for accelerated review of patent applications from the respective countries if approval in that county has already been received and other requirements met.
Requirements to participate in the PHH include a determination by SIPO or KIPO that the claims are permissible, that the claim(s) of the application are sufficiently correspondent to the allowable claim(s) of the relevant application, and the submission of all documents from prior filing.
The Sino-Korean PPH will begin after a similar Sino-Japanese PPH and this accelerated patent review process represents a strategy to support innovation and allow for the patenting of works under an accelerated time table.

To guide development of intellectual property during the Twelfth Five-Year Plan, to encourage effective implementation of the strategy to promote intellectual property rights, and to further implement the principles and policies of China’s intellectual property rights, ten state ministries jointly developed and released the “State Intellectual Property Industry Development during the Twelfth Five-Year Plan.”
Ten major government project to be undertaken under the Plan, include: capacity-building for law enforcement for the protection of intellectual property rights; strengthening government operations to promote intellectual property rights; the cultivations of intellectual property rights enterprises, strengthening the capability to intelligently review and advance registration, the dissemination of intellectual property information as a public service; intellectual property service training; knowledge benefits of agricultural property; intellectual property personnel development; intellectual culture; traditional knowledge, genetic resources and folklore’s protection and promotion of the value of development.

On November 9, 2011, a State Council executive meeting, chaired by Wen Jiabao, approved in principle the “National Intellectual Property Strategy Outline”
The strategy outline states that intellectual property is an increasingly important issue in business competition and noted technological advances in the modern world, especially the development of a knowledge-based economy. The development of this National Intellectual Property Strategy will help encourage the creative works of members of society and stimulate the innovative spirit of the nation. China seeks to turn its rich human resources into intellectual resources and accelerate the pace of innovation-oriented nation-building to improve the nation’s core competitiveness.

On October 28, 2011 China Supreme Court issued its judgment overturning the judgments made by the first and second instance court and granted the registration of a trademark owned by our client, a Fortune 500 Appliance Retail Company. The Supreme Court found that our client’s name had acquired distinctiveness and issued a judgment overturning the judgments made by the first and second instance courts. The first and second instance courts had ruled that our applied trademark was consisted of common words and therefore, was not entitled to trademark protection.
This judgment is of great significance. In 2010, the Chinese Supreme Court issued an opinion concerning the trial of trademark in administrative cases that expanded the potential scope of trademarks. This case was the first decision after that guidance had been issued that addressed article 5, which concerns the "overall review principles" and at issue in the case was to what extent common words could have distinctive characteristics. The court in deciding that the trademark was enforceable established an interpretation that will significantly reference in future cases allowing for trademark protection, that, as in this case, had previously been denied.
Chang Tsi & Partners through 7 years of unremitting efforts was eventually supported by the Supreme Court, and ultimately was successfully in registering this trademark. The trademark application had first been rejected by the China Trademark Office. That decision was then unsuccessfully appealed administratively to the Trademark Appeal Review Board (TRAB). Then the client transferred this case from its former Hong Kong law firm to us. We took over the case and filed an appeal to the first-instance court and then the second-instance course, which is final. In both instances the Courts denied trademark protection.  Chang Tsi & Partners remained committed to our client and was finally successful in the retrial procedure at Supreme Court. The actions of our Firm safeguarded the legitimate rights and interests of this major company and illustrate our devotion to client satisfaction.