A situation, too often found in China is the common use of registered trademarks on storefront signage and store decor by merchants who have not gained prior authorization by the trademark owner.
In cases such as these, we would usually take the measure of sending a Warning Letter to the infringer or file a direct complaint with Administration of Industry and Commerce (AIC) to initiate and administrative enforcement requesting the infringer to remove the infringing signage. However, in some cases the infringer chooses to resume using the trademarks for a period of time, even after the warning.
Below we have outlined some key points on how to prevent and stop this continuing phenomenon.
1. Evidence Preservation
In view of the characters of this kind of case, it is often easy for the infringer to hide or destroy evidence, as cost of signage removal is low. It is therefore much more likely for the infringer to deny their wrong doing if the relevant evidence could not have been saved effectively during the follow-up action of right holders protection. So evidence preservation is very important to allow the complainant the opportunity to enforce their rights.
Action: If the possibility of the infringer repeating the offense is obvious before rectification or the repeated infringement was made by the infringer after rectification, you can then consider taking notarization to the site of their store. First reason for doing this, is that it can preserve the evidence and keep an accurate record for any future administrative complaints and secondly, it can also send a message and add pressure to the infringer expressing the degree of seriousness, consideration and determination you have on the issue.
2. Repeated Infringement continues in a Market Environment with Unified Management
If the infringer is a shop which is located in a market with unified management (such as Cyber Computer Market, Pacific Digital Plaza) the market administrator is often liable for supervising the behavior of the infringing shop. If after receiving notification of infringement, infringing continues and the unified management due to a lack in appropriate supervision, the market administrator can bear the joint liability.
Action: In this situation you can exert pressure to the market administrator, emphasizing their responsibility and request them to take the necessary steps to ensure the shop stops all infringement, otherwise, you can retain the right to pursue the joint tort liability to the market management.
3. Preventing Repeated Infringement by AIC’s Administrative Enforcement
Administrative organizations have the right to propose punitive measures to the object of administrative enforcement according to the rectification situation for their infringement act and subjective malice, and to increase their infringing cost to prevent them from making the infringement act once again.
Action: To do this you would make communication and coordination with AIC and request a punishment decision to the infringer who continues to pursue obvious subjective malice or practice severe illegal acts.
The risk of this method is that AIC is often more conservative making decisions for issuing administrative punishment for this kind of case. However, once the punishment decision is made by the AIC to the target store, it will often bring a deterrent effect to the nearby stores whose actions are the same or similar to the infringing store. So this action can be a worthy choice.
4. Penalty Clauses in Letter of Undertaking
In such kind of cases, we usually ask the infringer to sign an Undertaking to ensure the discontinuation of the conducted infringement, but no penalty clause is stipulated in it and no legal consequence of breaching of warranty clause is appointed. Such Undertaking will only play a role in warning, and the legal effect of it is just reflected in being the evidence in the complaint with AIC.
Action: This action can play a role in restriction and warning if the penalty clause and the penalty provision are specified in the Undertaking. It should be noted that this action still needs a certain effort of concrete execution for this kind of Undertaking.
All of the above are several measures, simply stated, that can be taken to prevent repeat infringement and the take-down of infringing store signage. Each method has its own advantages and disadvantages, and can provoke different difficulties in real execution. Therefore, it is important to note that the consideration of action is made on an individual case matter and legal support is advised to ensure the right action taken considering the type of infringement.