Five things you need to know – Asia-Pacific

Australia

IP Australia’s IP Report 2020 has revealed that 75,622 trademark applications were filed in Australia in 2019, a 5% decrease on 2018 (when numbers reached a record peak). Australian residents accounted for 58% of 2019 filings, down 4% on 2018. The fall in non-resident filings was slightly higher, at 6%. In terms of the latter, the United States was the largest foreign source in 2019 as well as in the previous year, in which it filed 29% of all non-resident applications.

China

The State Administration for Market Regulation has issued its 2020 IP rights enforcement action plan, which seeks to strengthen law enforcement (eg, by stepping up investigations of geographical indications infringement and strengthening enforcement related to special signs), as well as improving e-commerce law enforcement and activities in the physical market, and cracking down on malicious trademark applications and the agencies facilitating them. The action plan also identifies a need for media outlets to publicise actions and communicate warnings against counterfeiting.

China

Treasury Wine Estates (TWE) has successfully registered its BEN FU (奔富) trademark – the Chinese transliteration for its Penfolds wine brand – in China. The announcement that TWE is now the owner of the earliest trademark registrations for ‘奔富’ in relation to wine in both China and Australia (dating back to 9 February 2011 and 1 April 2016, respectively) followed a lengthy battle after a third party registered the mark in China in 2009. The registration reflects a decade of numerous enforcement actions and longstanding litigation through the Chinese courts and authorities. Anna Olsen, global director of intellectual property at TWE, characterised the development as “a monumental milestone for the company”.

China

Children’s entertainment company Spin Master has won a major victory in a long-running patent dispute against a toy producer in China, resulting in the largest damages ever to be awarded to a foreign patent owner. In a first-instance judgment, the Suzhou Intermediate People’s Court found that defendant Guangzhou Lingdong Creative Culture Technology Ltd had infringed Spin Master’s patents covering its Bakugan children’s toy line (including its rollable shape) and awarded damages of Rmb15.5 million.

Singapore

In Harvard Club of Singapore v President and Fellows of Harvard College, the Singapore High Court has allowed Harvard University to register HARVARD CLUB OF SINGAPORE and HARVARD UNIVERSITY CLUB OF SINGAPORE, agreeing with the principal assistant registrar that the parties were in an implied licensor-licensee relationship. The decision confirms that the protection conferred by the tort of passing off can extend to the goodwill of non-commercial organisations. However, the court declined to find a default position that the existence of an implied licence necessarily means that the licensor owns the goodwill.