Скачать презентацию event 23 rd May 2004 Seoul South Korea Скачать презентацию event 23 rd May 2004 Seoul South Korea

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<event> 23 rd May 2004 Seoul, South Korea INTRODUCTION TO IP (touching on Korea, 23 rd May 2004 Seoul, South Korea INTRODUCTION TO IP (touching on Korea, Hong Kong & China) Presentation by Ms. Ella Cheong (Hong Kong) Ella Cheong Spruson & Ferguson 1

What is IP? Real Property u u tangible asset e. g. a house, a What is IP? Real Property u u tangible asset e. g. a house, a machine, a car, a watch Intellectual Property u u May 2004 Seoul, South Korea © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson 23 rd intangible asset e. g. – in the area of science & technology, an idea / invention is IP – in the area of business, a customer / price list is IP – in the area of production, a secret production method is IP – in the area of art, a particular way of representation is IP 2

What is IPR? Intellectual Property Right u not to be confused with IP it What is IPR? Intellectual Property Right u not to be confused with IP it is a right vested in the asset, not the asset itself u u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson e. g. – an idea / invention is IP, a patent registration is an IPR – a customer / price list is IP, a right of confidentiality is an IPR – a secret production method is IP, a right to a trade secret is an IPR – a particular way of representation is IP, copyright or a design registration is an IPR 3 – a brand / trade name is IP, a trade mark registration is

Korea, SMEs & IPRs Importance of SMEs to Korea u u SMEs form more Korea, SMEs & IPRs Importance of SMEs to Korea u u SMEs form more than 99% of total no. of companies in Korea SMEs employ about 84% of total no. of employees in Korea ð SMEs form main engine of Korea’s economy ð SMEs play leading role in job creation & technology advancement in Korea In fact, SMEs are so important in Korea that specific legislation enacted: u Article 123 of the Korean Constitution provides for the protection and promotion of SMEs and the promotion of self-help organizations by the government © Ella Cheong (Hong Kong) u Ella Cheong Spruson Ferguson The Act on Assisting Women Enterprise provides a legal basis for a variety of active support programs to promote women’s start-ups, 4 business management and general operations

Korea, SMEs & IPRs SMEs’ Ownership of IPRs u u SMEs only own about Korea, SMEs & IPRs SMEs’ Ownership of IPRs u u SMEs only own about 15% of all registered IPRs in Korea Only about 2% of Korean SMEs own more than 1 registered IPR Korean Intellectual Property Office u u u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson u assists in IP creation assists in IP acquisition assists in securing IPRs <50% to 70% discount of official fees> 5 assists in marketing IPRs

Why should SMEs secure IPRs? Protection u u u cheaper than subsequent litigation easier Why should SMEs secure IPRs? Protection u u u cheaper than subsequent litigation easier enforcement against infringers avoid disruption to business operations e. g. under injunction Increases Value of Company u u u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson can be included in annual report as assets clearer to potential investors / business partners / clients provides an edge over larger companies / competitors 6 (knowledge / service based industries more suitable

International Treaties IPRs are territorial rights, but there a number of important international treaties International Treaties IPRs are territorial rights, but there a number of important international treaties u u Paris Convention u Patent Co-operation Treaty u Berne Convention u Universal Copyright Convention u Phonogram Convention u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson World Trade Organisation Madrid Agreement / Protocol * * Hong Kong is not a party to this although China is 7

Hong Kong & China Post ’ 97 Sino-British Joint Declaration and Basic Law provide Hong Kong & China Post ’ 97 Sino-British Joint Declaration and Basic Law provide basis for Hong Kong Special Administrative Region for 50 years from 1997 which guarantees: autonomy in trade & economic affairs u separate customs territory u separate laws u international agreements continue to apply separately u common law rules continue to apply in Hong Kong u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson 8

IP Laws in Hong Kong Legislation u Trade Marks Ordinance 1954 / 2000 u IP Laws in Hong Kong Legislation u Trade Marks Ordinance 1954 / 2000 u Trade Descriptions Ordinance 1980 u Copyright Ordinance 1997 u Prevention of Copyright Piracy Ordinance 1998 u Patents Ordinance 1997 © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson u Registered Designs Ordinance 1997 9

IP Laws in Hong Kong Common Law u Passing Off u Confidential Information u IP Laws in Hong Kong Common Law u Passing Off u Confidential Information u Trade Secrets © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson 10

Trade Marks Ordinance 2000 Definition of Trade Mark widened to include any mark capable Trade Marks Ordinance 2000 Definition of Trade Mark widened to include any mark capable of being represented graphically, sounds and smells Application u u electronic filing u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson online searches multiple classes 11

Trade Marks Ordinance 2000 Duration u u valid for 10 years renewable every 10 Trade Marks Ordinance 2000 Duration u u valid for 10 years renewable every 10 years Registrability u “absolute grounds” of refusal u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson “relative grounds” of refusal 12

Trade Marks Ordinance 2000 “Absolute Grounds” 1. devoid of distinctive character Craven A not Trade Marks Ordinance 2000 “Absolute Grounds” 1. devoid of distinctive character Craven A not allowed N/B - mark created for purpose of discussion only © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson 13

Trade Marks Ordinance 2000 “Absolute Grounds” 2. signs designating: u u quality u quantity Trade Marks Ordinance 2000 “Absolute Grounds” 2. signs designating: u u quality u quantity u intended purpose u value u geographical origin/ source of goods u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson kind time of production of goods / rendering of service 14

Trade Marks Ordinance 2000 “Absolute Grounds” sign indicative of origin or source of goods? Trade Marks Ordinance 2000 “Absolute Grounds” sign indicative of origin or source of goods? © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson allowe d 15

Trade Marks Ordinance 2000 “Absolute Grounds” 3. customary signs in current language / honest Trade Marks Ordinance 2000 “Absolute Grounds” 3. customary signs in current language / honest & established practice of trade © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson for “wines, spirits, liqueurs and cocktails” allowed with disclaimers 16

Trade Marks Ordinance 2000 “Absolute Grounds” Previous 3 “absolute grounds” of refusal may be Trade Marks Ordinance 2000 “Absolute Grounds” Previous 3 “absolute grounds” of refusal may be overcome by evidence of use namely. . . u devoid of distinctive character u u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson signs which designate … customary signs 17

Trade Marks Ordinance 2000 “Absolute Grounds” 4. shape that results from nature of goods Trade Marks Ordinance 2000 “Absolute Grounds” 4. shape that results from nature of goods e. g. a box or a plain ring often cited together with other ground “devoid of distinctive character” © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson 18

Trade Marks Ordinance 2000 “Absolute Grounds” 5. shape of goods necessary for technical result Trade Marks Ordinance 2000 “Absolute Grounds” 5. shape of goods necessary for technical result 6. shape that gives substantial value to goods Philips 3 -headed shaver not allowed © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson 19

Trade Marks Ordinance 2000 “Absolute Grounds” 7. contrary to accepted principles of morality 8. Trade Marks Ordinance 2000 “Absolute Grounds” 7. contrary to accepted principles of morality 8. likely to deceive public 9. use prohibited in Hong Kong / application made in bad faith © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson 10. consists of / contain flag or emblem of China or Hong Kong 20

Trade Marks Ordinance 2000 “Relative Grounds” due to prior rights of other trade mark Trade Marks Ordinance 2000 “Relative Grounds” due to prior rights of other trade mark proprietors © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson 21

Trade Marks Ordinance 2000 Disclaimers voluntary disclaimers, limitations or other conditions on registration e. Trade Marks Ordinance 2000 Disclaimers voluntary disclaimers, limitations or other conditions on registration e. g. “This mark is limited to the colours red, white and gold Craven A as shown in the specimen affixed to the form of application for registration”. © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson 22

Patents Ordinance 1997 Types & Duration of Patents u u © Ella Cheong (Hong Patents Ordinance 1997 Types & Duration of Patents u u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson standard patents (20 -year term) short term patents (8 -year term) with 1 independent claim but no restriction on number of subsidiary claims 23

Patents Ordinance 1997 Application & Examination Standard Patents 2 -part process: (i) Filing of Patents Ordinance 1997 Application & Examination Standard Patents 2 -part process: (i) Filing of request to record within 6 months after date of publication by designated patent office: (a) State IP Office (b) EPO for patents granted under EPC designating UK (c) UK Patent Office (ii) © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson Filing of request for registration and grant of patent within 6 months of grant of patent by designated patent office 24

Patents Ordinance 1997 Application & Examination Short Term Patents u u © Ella Cheong Patents Ordinance 1997 Application & Examination Short Term Patents u u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson no search or examination filing of search report from established authority 25

Patents Ordinance 1997 Renewal u Standard Patents annually after expiration of first 3 year Patents Ordinance 1997 Renewal u Standard Patents annually after expiration of first 3 year term u Short Term Patents after expiration of first 4 -year term for further 4 years © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson 26

Registered Designs Ordinance 1997 Registrable designs u u not contrary to public order or Registered Designs Ordinance 1997 Registrable designs u u not contrary to public order or morality u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson must be new appearance of article must be material 27

Registered Designs Ordinance 1997 Term & Renewal 5 years renewable for 4 further periods Registered Designs Ordinance 1997 Term & Renewal 5 years renewable for 4 further periods of 5 years each Priority within 6 months based on earlier filing in Paris Convention countries or in countries or territories which are members of WTO © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson 28

Copyright Ordinance 1997 Protected Works (i) (iii) (iv) (vi) (viii) (ix) (xi) © Ella Copyright Ordinance 1997 Protected Works (i) (iii) (iv) (vi) (viii) (ix) (xi) © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson literary works drama music artistic works photographs computer software sound recordings films broadcasts cable programmes typographical arrangement of published editions of works 29

Copyright Ordinance 1997 Qualification u u Open qualification system for any original work created Copyright Ordinance 1997 Qualification u u Open qualification system for any original work created by any person anywhere in world voluntary registration system for collective copyright administration societies Owner u u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson Author Employer By agreement for commissioned work By assignment for consideration 30

Copyright Ordinance 1997 Duration u literary, © Ella Cheong (Hong Kong) Ella Cheong Spruson Copyright Ordinance 1997 Duration u literary, © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson dramatic, musical and artistic works - life of author + 50 years after his death u computer-generated works - 50 years from end of year in which work was made u typographical arrangement of published edition - 25 years u artistic work industrially exploited with articles made therefrom marketed and work subject of registered design - 25 years from year when article first marketed u for articles incorporating unregistered corresponding design (including a corresponding unregistrable design) 15 years u sound recording - 50 years from the time it is made or if during that period it is released, 50 years from its release u performer’s performance 50 years from time performance takes place, if during that 50 -year period, a recording of the performance is released, 50 years from 31 its release

Copyright Ordinance 1997 Rights u u renting, offering for hire u issuing to the Copyright Ordinance 1997 Rights u u renting, offering for hire u issuing to the public u performing in public u making available on the internet u broadcasting by wireless or cable u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson selling, offering for sale adapting 32

Hong Kong Courses of Action Civil Relief u interlocutory Alternate / Follow-up Steps injunction Hong Kong Courses of Action Civil Relief u interlocutory Alternate / Follow-up Steps injunction u u cease & desist letter permanent u notice letter u warning notice in injunction u u delivery-up u seizure u destruction u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson disclosure undertaking u costs u damages newspapers u criminal action 33

Hong Kong Courses of Action Criminal Relief Alternate / Follow-up Steps u u delivery-up Hong Kong Courses of Action Criminal Relief Alternate / Follow-up Steps u u delivery-up u cease & desist letter u seizure u notice letter u destruction u warning notice in u fine u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson disclosure imprisonment newspapers u civil action 34

Hong Kong Litigation Court: Court of First Instance Costs: judgment, losing about US$2, 500 Hong Kong Litigation Court: Court of First Instance Costs: judgment, losing about US$2, 500 for default or summary higher for full trial, about 2/3 claimable from party Time: about 2 years for full hearing, 1 to 3 months for default or summary judgment Authority: Customs & Excise Department, Copyright Division and Trade Descriptions Division Fine: up to HK$500, 000 (HK$100, 000 for summary conviction) Imprisonment: 5 to 8 years Appeal: © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson High Court 35

China Litigation Court: Local Court or People’s Immediate Court Costs: about US$2, 500 for China Litigation Court: Local Court or People’s Immediate Court Costs: about US$2, 500 for default or summary judgment, higher for full trial, about 2/3 claimable from losing party Time: about 6 months Authority: AIC (Administration of Industry & Commerce) TSB (Technical Supervision Bureau) PAB (Patent Administration Bureau) CAB (Copyright Administration Bureau) Fine: up to 3 times value of illegal sale or RMB$100, 000 Imprisonment: © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson Appeal: days after Court 3 to 7 years application for review to relevant AIC within 15 receipt of decision or within 3 months to People’s 36

Domain Name Infringement “. com” g. TLD (Generic Top Level Domain) Procedure: filing with Domain Name Infringement “. com” g. TLD (Generic Top Level Domain) Procedure: filing with Mediation complaint Arbitration Centre & of World Intellectual Property Organization Costs: arbitration single US$3, 000 US$1, 500 at forpanelist, 3 for member panel Time: 45 to 60 days after receipt of complaint “. hk” / “. cn” cc. TLD (Country-code Top Level Domain) Procedure: courtaction complaint in civil filingorcommencing with Hong Kong International Arbitration Centre or Domain Name Dispute Resolution Centre of the China International Economic and Trade Arbitration Commission under guidelines issued by China Internet Network Information Centre (effective since 30 th September 2002) Hong © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson Costs: US$1, 025 for a single panelist and US$2, 050 for 3 member panel China - court actions at usual rate, arbitration at US$375 37 for single panelist, US$750 for 3 -member panel

Domain Name Infringement © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson 38 Domain Name Infringement © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson 38

What Should SMEs Protect? (a) Company Name Registration (b) Domain Name Registration (c) Trade What Should SMEs Protect? (a) Company Name Registration (b) Domain Name Registration (c) Trade Mark Registration (d) Design Registration (e) Patent Registration (f) Copyright Precautions (g) Employment Contracts © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson <(a) to (d) relatively inexpensive, (e) not really needed by most SMEs; (f) and (g) are free> 39

How to Protect Copyright Keep proper records of: u original drafts and works u How to Protect Copyright Keep proper records of: u original drafts and works u details of authors (name, nationality, passport no. ) u u agreement / assignment u © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson date of creation details of 1 st publication 40

How to Protect Domain Names In Hong Kong: Procedure: Domain Kong payment of misura. How to Protect Domain Names In Hong Kong: Procedure: Domain Kong payment of misura. com. hk online filing at web-site of Hong Kong Name Registration Company Limited, Hong Business Registration Certificate and registration fee (website address is www. hkdnr. net. hk/instructions/new_dom ain. html) Costs: d documents of verification after days Time: 3 payment Renewal: as above © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson 1 -year registration: HK$200 (US$26) 2 -year registration: HK$400 (US$52) 3 -year registration: HK$500 (US$64) 5 -year registration: HK$800 (US$103) onlinerenewalatsamewebsite, renewalfee 41

How to Protect Domain Names In China: misura. com. cn Procedure: online filing at How to Protect Domain Names In China: misura. com. cn Procedure: online filing at web-site of China Internet Network Information Centre or filing via designated domain name registration services providers and payment of registration fee (website address is www. hkdnr. net. hk/instructions/new_domain. html) via providers post 1 st December 2002, filing may only be done designated domain name registration service Costs: Time: fee renewal website, same © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson at 1 -year registration: RMB$300 (US$38) 5 days after filing and payment renewal Renewal: online as above 42

How to Protect Other IP Clauses in employment contract: · · Confidentiality · Trade How to Protect Other IP Clauses in employment contract: · · Confidentiality · Trade Secrets · © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson Intellectual Property Rights Restraint of Trade 43

How to Protect Other IP Specimen Indemnity Clause © Ella Cheong (Hong Kong) Ella How to Protect Other IP Specimen Indemnity Clause © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson “Buyer warrants the originality and ownership of the copyright, patents, designs, trade marks, in particular that they do not infringe any 3 rd party rights. Buyer shall be liable for all liability arising from the development, manufacture, distribution and sales of toys bearing or embodying the said copyright, patents, designs, trade marks, their packaging and any advertising and promotional materials in connection therewith. Buyer shall defend, indemnify and hold Manufacturer, its shareholders, directors, officers, employees, agents, subsidiaries, affiliates, licensees and sub -contractors harmless from any claims, damages, loss, costs, expenses (including reasonable attorney’s fees), or liability of any kind arising from a breach of the foregoing representations 44

How to Protect Other IP Specimen Confidentiality Clauses “Employee shall not, during the course How to Protect Other IP Specimen Confidentiality Clauses “Employee shall not, during the course of his employment with Employer or at any time thereafter, reveal to any 3 rd party any of Employer’s Confidential Information, any information orally identified or marked by Employer as “confidential” or “proprietary” or known or reasonably known to Employee to be confidential or proprietary in nature and which may come to Employee’s knowledge during his employment. ” © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson “Employee shall keep the same in complete secrecy and shall use such information exclusively for Employer’s benefit. Employee shall not use or attempt to use such information in any manner which may injure or be likely to injure, either directly or indirectly, Employer or any of its Associated 45 Companies (as defined in the Companies

How to Protect Other IP Specimen Confidentiality Clauses “These restrictions shall cease to apply How to Protect Other IP Specimen Confidentiality Clauses “These restrictions shall cease to apply to information which has become available to the public otherwise than by Employee’s default or which is required to be disclosed by law or pursuant to an order of court of competent jurisdiction. ” © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson (“Confidential Information” may be substituted with or defined as “ideas, concepts, innovations, inventions, technical knowledge, know-how, trade secrets, methods, techniques, processes, procedures, research and development information, experimental results or data, management policies, business strategies and plans, business operations information, production information, budget, cost, profit, loss and other financial information, investor, manufacturer, supplier, customer and employee information, market intelligence and other marketing and promotional information, Employer’s dealings or affairs or those of Employer’s Associated 46

How to Protect Other IP Specimen Confidentiality Clauses “Employee shall not make, other than How to Protect Other IP Specimen Confidentiality Clauses “Employee shall not make, other than exclusively for Employer’s benefit, any notes, sketches, drawings, photographs or otherwise record, copy or reproduce any such information. ” © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson “All notes, sketches, drawings, photographs and other written, printed and electronic records made, name cards, work manuals and other documents received by the Employee during the course of employment and any copy or translation thereof, whether or not made by Employee or Employer, shall be Employer’s exclusive property and shall be surrendered to Employer on the expiration or termination of his employment or at Employer’s request at any time during the course of employment. ” 47

How to Protect Other IP Specimen Restraint of Trade Clause “Employee undertakes to Employer How to Protect Other IP Specimen Restraint of Trade Clause “Employee undertakes to Employer that he will not without Employer’s prior written consent (such consent not to be unreasonably withheld): (I) for the period of one (1) year after the cessation of his employment with Employer, either on his own account or in conjunction with or on behalf of any other person, firm or company, solicit or entice away or attempt to solicit or entice away from Employer the custom of any person, firm, company who has at any time prior to the date of cessation of employment been Employer’s customer, client, agent or correspondent (ii) for the period of one (1) year after the cessation of his employment with Employer, either on his own account or in conjunction with or on behalf of any other person, firm or company, solicit or entice away or attempt to solicit or entice away from Employer any person who is Employer’s officer, manager or employee, whether or not such person would commit a breach of his contract of employment by reason of leaving Employer’s employment; and © Ella Cheong (Hong Kong) Ella Cheong Spruson Ferguson (iii) at any time hereafter in relation to any trade, business or company, use a name identical or similar to Employer’s name or the names of its Associated Companies (as defined in the Companies Ordinance) in 48 such manner as to cause or be likely or capable of causing confusion, and shall use all reasonable efforts to procure that no such name will be