If you discover that a company is infringing upon your trademark, design, patent, copyright, or any other Intellectual Property Right (IPR) at a trade fair in China, you can take action.
Herein a practical guidance that might help to prepare the action.
While typically a dispute at Court lasts years, in the case of trade fair, the action begins and ends in few days (if not hours). Good preparation is the key!
The most common way to take action is filing a complaint with the trade fair organizer, who usually has put in place an IP Desk to receive and manage such complaints against violations of IPRs.
The IP Desk has the power to take down and remove the infringing products from the trade fair booth. Such power is given by the contract signed between the exhibitor and the trade fair organizer in which the former has authorized the latter to take certain actions if there are ascertained IPR violations.
In the light of the possibility to take action, during the fair the first task for IPR owners is to monitor the trade fair to spot any actual and potential threat in the shortest time possible. To this extent, the trade fair surveillance can be done by the company internal team or using the local distributor’s staff or via external consultants.
During the monitoring and research, it is important to act silently/under cover in order not to be discovered. Indeed, if the infringer is made aware of the possible action, it will put in place some defensive strategy which will reduce the efficacy of the complaint with the trade fair organizer.
If the surveillance produces a positive result and an infringement is spot, the IPR owner can chose to contact an IP consultant (law firm or IP agency) to obtain assistance to attack the infringer and have the IP threat removed from the fair. However, IP desk accepts complaint filed directly by the IP owner without the support of an attorney or IP agent.
The procedure from the discovery of the infringement to the take down action is not complex, but it needs some knowledge and experience. Despite the IP Desk is set up for receiving and processing complaints, very often the attitude of the professionals in charge of the IP Desk is “cautious” with a tendency to reject the complaints which are not well substantiated with facts, supporting document and evidence.
Done the monitoring, identified the infringement phenomenon, it is necessary to make an assessment to proceed with further steps.
Herein the most typical questions to tackle in this phase:
· What kind of IPR is infringed? Trademark, patent, design (patent), copyright, other IPRs? Certificates shall be available possibly in original. Tax shall be paid for patents and trademark shall be renewed.
· Is the infringement clear or arguable?The IP Desk tends to act only in case the infringement is very clear and to refrain from actions where the infringement is not certain.
· Is the IPR valid and stable? Whenever a company activate an IPR shall always consider possible negative consequences on the validity of the activated IPR. For example: is the activated trademark exposed to non-use cancellation? Is the patent exposed to a possibly grounded invalidation procedure?
· Is the evidence of infringement clear and formalized? IPR enforcement in China often suffers the difficulty of obtaining proper evidence of infringement. The trade fair is a good occasion to collect evidence of infringement that can be used even after the trade fair to initiate further legal actions.
· Are the supporting documents available in the right format? To initiate legal actions in China the Power of Attorney as well as Company Registration Certificate must be notarized and legalized in the country where the IPR owner has its residence.
Before approaching the IP Desk it is important to evaluate if it is worth to contact a notary officer to obtain a formalization of the infringement. Indeed, before declaring the attack, it might be wise to upgrade the evidence collection and formalize the existence of the infringement in a way that it would be possible to take further action after the trade fair.
A very important step in the preparation of the trade fair IPRs enforcement is the preparation of the supporting documents. The IPR owner needs at least two batches of documents: the documents proving the right(s) and the legitimacy of the “complainant”, the documents proving the existence of the infringement.
As mentioned above it is important to have a clear picture on the IP portfolio of the complainant and – even better – to have IPRs certificates in original at hand when filing the compliant with the IP Desk. Also, the individual in charge of the actual filing of the complaint shall prove the authorization (powers) to represent the IPR owner.
To this extent IP Desk usually requires the Power of Attorney to be notarized and legalized and company registration certificate to be legalized as well.
It happens that the IP Desk rejects the request of protection filed by the IPR owner either for formal reasons relating to certificates, POA, company registration document, tax payment receipts, etc. or for substantial reasons, the IPR does not look infringed or the IPR might not be valid.
For such cases the IPR owner can still try some action during the fair or after it.
Lawyer letter served at the trade fair. In case the IP Desk refuses to take action, it is possible to appoint an attorney to serve a cease-and-desist letter to the staff of the infringer operating in the booth. The staff of the IP Desk might be present in this moment to make sure no accident happen during the delivery and the subsequent oral dispute.
The provisional injunction by a Court. In theory it is possible to apply the People’s Court to obtain a provisional judicial injunction, however the short time and the set of documents needed make extremely difficult in the practice to request and obtain the provisional injunction during the trade fair.
The seizure from MSA. Another available tool in case of trademark infringement is the complaint to the Market Supervision Administration. If this authority recognizes the existence of the infringement, it can execute – even during a trade fair - a seizure of the infringing product(s). Also, in this case the time is the key, usually 2-3 days are not enough for preparing, filing, discussing, and executing the seizure.
Last but not least, attention shall be given to the notarization of the infringement. The trade fair could be a good occasion to acquire notarized evidence of infringement, especially when it is not easy to access the premises of the infringer (think only to the B2B products).
The notarization of the infringement is essential for the civil procedure and therefore for the launching of a civil litigation.
What kind of action can be initiated after the trade fair?
In addition, or in alternative, to the enforcement at the trade fair, it is possible consider all the standard tools available in China.
· Civil litigation. All IPRs can be enforced in front of civil courts in China.
· Administrative enforcement. This tool is also available for all IPRs, but might be sophisticated when it comes to copyright, complicated patents, or even unregistered rights.
· Extra-judicial letter.
Cover Photo by The Nix Company on Unsplash