Tackle IP Infringement on Exhibitions in China
When preparing to come to China for an exhibition, trade fair or convention, it is very much to your advantage to file an on-the-spot complaint for intellectual property infringement during the exhibition. In this way, your goal to deter and stop infringement may be achieved much easier.
Why is it a good choice? An exhibition usually attracts a large number of participants and has great influence to the relevant industry and sometimes even to the public. Government and public authorities often pay close attention to help with the smooth running of such activities, especially in terms of protecting intellectual property rights.
* Where there is a suspected IPR violation at the exhibition, the complaint for IPR infringement is usually taken up and processed by the competent authority in a quick and effective manner.
* The procedures to process a complaint are relevantly simple and convenient compared to what are in place for ordinary infringement.
* The burden of proof on the complainant is less than that which is on a plaintiff in an infringement lawsuit.
* The cost generally is less.
* Furthermore, a successful infringement battle at a large-scale or highly-professional exhibition may be of help to garner publicity and further market one’s brand or product.
However, since the duration of an exhibition is usually not very long, IPR holders will be given a relatively short time to prepare and file a complaint and submit the supporting evidence. Therefore, it is highly recommended to prepare ahead and act fast.
What Can the Exhibition Organizer Help With?
As the planner and coordinator of the exhibition, the organizer generally will be required, by the administration department of exhibition if necessary, to set up an office to deal with IP-related complaints during the exhibition, if the exhibition will last for no less than three days.
The personnel of the office include people from the organizer and officers from the local intellectual property administration authorities, such as the local intellectual property bureau (for patent related complaints), administration bureau for industry & commerce (for trademark related complaints), and copyright bureau.
Duties of the office include receiving and reviewing complaints from IPR holders, suspending the display of the item as suspected of IPR infringement during the exhibition, forwarding the complaint to the competent administration authority, coordinating and facilitating for quick decision of the authority and other duties written in the exhibition contract.
Where the IPR complaint is not concluded by the end of an exhibition, the organizer should confirm the relevant discoveries and evidence related to a complaint and transfer the case, within 15 working days, to the administration authority for further processing.
The organizer also has the right to ban exhibitors that commit infringements twice in a row from attending the next exhibition.
What the Competent Authorities are Capable of Doing
Once suspected infringement is discovered, it is optional for the IPR holder to file a complaint to the exhibition office or directly to the competent IP administration authority. If the complaint is filed to the on-the-spot office, it will automatically be forwarded to the corresponding authority within 24 hours.
The authority will then send officers to the site to conduct investigation, interview the parties, obtain evidence and issue a decision according to the relevant laws and regulations. This decision will be sent to the parties as well as the exhibition organizer.
Where the IP authority believes the complaint is tenable, it will take action, if necessary in collaboration with the administration department of exhibition, to restrain the infringer. Common actions include but are not limited to asking the infringer to immediately stop his infringement, withdraw or hand in all the exhibited items of infringement, destroy the relevant publicity materials, and cover or revise the relevant display board. The IP authority can also end the infringer’s exhibition and confiscate any illegal earnings or impose fine. In addition, the administration department of exhibition may, pursuant to the laws, make announcement of the unlawful activities.
What an Exhibitor Should Pay Attention To
When Preparing for Participation
An exhibitor should think through what he may face and plan ahead. The consideration can have many aspects, which include but are not limited to:
* Confirming the validity of his IPRs: patent (invention, utility model and design), trademark, copyright or others that are enforceable;
* Reading through the exhibition contract to see his obligations and liabilities;
* Arranging personnel for matters regarding IP enforcement and training staff in this regard; and
* Planning which channel he would like to use to tackle the infringement: mediation, administrative actions on the exhibition, or merely collecting evidence at the exhibition of the offending party’s infringement activities and then taking actions at another venue.
Where the IPR holder would like to take direct action during the exhibition, it is significantly important to begin preparing relevant documents well in advance, because making a formal complaint requires the complainant to file many documents with the exhibition office. The amount of the documents is large, and the process might be very complicated and time-consuming, so where a foreign company wants to come to China for exhibition, it is highly recommended that it contacts the local IP attorneys to obtain the relevant documents in advance. If the IP holder waits to prepare such documents until after discovering suspected infringement, it is very likely that he will be unable to complete the requirements within the duration of the exhibition.
When Attending the Exhibition
It’s suggested that an exhibitor take proactive approaches to enforce his IPRs at the exhibition. The corresponding operation can be initiated as early as at the setting up of or the beginning of the exhibition. The exhibitor is recommended to:
Find out whether the exhibition set up an IPR complaint office.
- If yes, where is the office located? Who is the responsible person for complaints regarding different areas (patent, trademark or copyright)? Is there any specific policy or prescribed form the office will use for on-the-spot IPR complaint?
- If no, who are the competent administration authorities to handle IPR violations? Where are they located? What are the procedures required to file a complaint?
Visit other exhibitors’ booths and see their displays. To identify infringement, analyze products of high-level similarity or imitation, and collect sufficient evidence and document the infringement activities, etc. It should be kept in mind that evidence must be collected properly and timely no matter if it is to be used for an on-the-spot complaint or for future actions; a notary public should be invited to the evidence collecting process and notarize the infringing products and related materials displayed on the exhibition. Without adequate evidence, the IPR holder might lose the opportunity to have the complaint accepted by an authority or a court in the future.
Inform the attorneys first when you discover suspect infringements.
To file an on-the-spot IPR complaint, the complainant should submit the following:
1) Power of attorney and identity documents of the IPR holder;
• If the IPR holder is an entity, its business certificate and the ID of the representative is needed; if the IPR holder needs someone else to act on his behalf, a power of attorney should be presented.
• Where the right holder is registered or located outside of China, these documents shall be both notarized and legalized in the home country, and translated into Chinese.
• If the notarized and legalized documents are not available when filing the complaint, the right holder must first submit a photocopy or scanned copy of the signed or original documents, and replenish the notarized and legalized copies soon after the first submission.
• The right holder also should bring identity certificates to the exhibition. Pursuant to the latest operation guidelines, the dispatched officers are now required to take photos of the right holder with his ID during the on-the-spot investigation regarding a patent complaint on exhibitions.
2) A legitimate and effective certification of legal rights;
• For a patent complaint: documents to certify a valid (Chinese) patent, such as a patent certificate, grant announcement, certification on the legal status of the patent, and annuity payment sheet;
• For a trademark complaint, the certificate of (Chinese) trademark registration, or other certification documents of a valid trademark right;
• For a copyright complaint, the certification of copyright registration (preferably in China);
• Where the complainant is the licensee of the IPR, the licensing contract should be filed; for the licensee to a non-exclusive license contract, the explicit authorization in acting in this specific respect from the IPR holder may be needed; and
• Where the infringer has been ruled to stop infringement on the IP he displays on the exhibition, the corresponding court ruling should be presented.
3) The basic information about the accused infringer; and
4) The complaint with reasons why it constitutes an infringement, and evidence of the infringement.
Some of the documents may need to be signed or sealed on by the complainant, such as the complaint form for patent infringement and the certification documents of trademark registration. Please also note that documents written in other languages need to be submitted along with its Chinese translation. Some documents (generally those generated outside of China) need to be notarized and legalized in the home country.
The administration authority will not accept a complaint where:
• The complainant has already instituted a lawsuit against the infringement before a court;
• The patent at issue is under invalidation proceedings or a dispute for ownership before a court or in a mediation at the patent administration authority, or is terminated even though the patentee is requesting for restoration;
• The registration of the trademark at issue has been invalided or cancelled; and
• The complaint for patent infringement is made within the last 24 hours before the end of the exhibition.
Once the administration authority accepts the complaint, it will timely inform the exhibition organizer and the accused party. The accused party will be given a prescribed period of time to make response to the complaint.
Where a complaint for patent infringement is not satisfied with the investigation or the on-the-spot treatment and the exhibition is yet closed, he may ask the authority to conduct the process again.
After the Exhibition
Where the process of the complaint has not completed or no decision has been made before the closing of the exhibition and therefore the case has been transferred to the corresponding administration authority, the complaint should follow up closely and provide requisite assistance, such as to submit further evidence, attend oral hearings or make a response to the accused party’s response to the complaint. The extension of time for decision happens more on complaints for patent infringement because dealing with a patent infringement usually is more complicated from the technology standpoint and may require further analysis.
Where the IPR holder has no sufficient time to prepare necessary documents for filing a complaint during the exhibition or did not plan to take action at the exhibition, or the accused party has not stopped the infringing activities after being instructed at the exhibition, the IPR holder can use the collected evidence to initiate further actions through either administrative actions with the local IP administration departments or an infringement lawsuit with a court.
Recommendations
File your IP in China as early as possible to obtain valid rights before exhibitions.
* File your IP in China as early as possible to obtain valid rights before exhibitions.
* Set up strategy and procedures for dealing with infringement at the exhibition.
* Prepare in advance the necessary notarized and legalized identity documents and power of attorney, and maybe ask your local IP attorneys to prepare certificates of your Chinese IP registrations.
* Arrange personnel for possible actions, and watch for possible infringement during the exhibition.
* Where a suspected infringement is discovered, inform your attorneys first, and arrange for notarization of evidence, then prepare and file a complaint with the office of the exhibition, requesting the office and the authority to make a timely decision and take a quick action to tackle the infringement.
* Prepare to do further investigation on the infringer and take further action if necessary.
This article first appeared in April issue, 2016 of Asia IP Magazine