Trademark Enforcement through Administrative Agencies April 30, 2013, New York IP in China
IP enforcement IP enforcement Administrative proceedings Court civil proceedings Criminal prosecution Mediation Customs — stopping import and export of infringing products TM cancellation — recovering a mark registered by another party
IP enforcement Administrative Proceedings Quicker and cheaper than using the courts Administrative authorities accept a lower level of evidence. Administrative actions are often most suitable in straightforward counterfeit cases, or cases in which the infringer is likely to settle the case quickly. Possible to transfer the case into criminal prosecution to effectively strike the infringement. Fast results.
IP enforcement Civil Court Proceedings Civil Proceedings typically are done in patent related case The damages awards in Chinese Courts are very low compared to the American judgments The proceeding is long Growing amount of cases brought to Chinese courts an encouraging factor that shows growing enforcement of IP rights
IP enforcement Criminal Prosecution Criminal proceedings is relatively rare Individual is subject to prosecution where the number of counterfeit items exceed 20,000, or where the brand more than one brand, 10,000 items. Criminal prosecution is appropriate where the illegal revenues exceed RMB 50,000. If more than one brand is involved the threshold is 30,000 RMB
Administrative agencies competent in IPR administrative enforcement • State IPRs Protection Working Group of 17 members including State Administration for Industry and Commerce (SAIC), Ministry of Public Security, General Administration of Customs, SIPO, SFDA, etc.; • SIPO: coordinating IPR enforcement nationwide • Ten agencies competent in IPR administrative enforcement.
Trademark enforcement through administrative agencies • Enforcement through AICs • Enforcement through customs • Enforcement through public security organs • Joint enforcement through several administrative agencies
Trademark cases investigated by AICs nationwide 2002-2011** **From SAIC; SPC: 12991 trademark cases were accepted by the court of the first instance (civil proceedings) in 2011
Trademark cases investigated by AICs nationwide 2002-2011 • 521,410 various types of trademark violation cases were investigated; • Seizure and removal of 447 million sets of illegal trademark labels; • Handover of 1,750 suspects to judicial authorities for criminal investigation and indictment.
Administrative proceedings before AICs against trademark infringements • Upon the report/complaint made by anybody or right holders or any interested party; • Complaint in written form (usually); • Relevant information and evidence. • Ex officio • Local AICs at and above county level
The Flow Chart of Administrative Action The possibility of infringing act Administrative Procedure in 1st & 2nd instances Investigation: Evidence collection Stay of Administrative action Continuation of Administrative Procedure Administrative procedures Invalidation Proceedings Administrative Lawsuit In 1st & 2nd instances On-site inspection
Administrative settlement and decision by AICs in trademark infringements • Administrative measures may be taken by AICs • Inspection • Investigation • Seizure • If infringement was committed, AICs • Order to stop the infringement act • Confiscate or destroy the infringement goods and tools utilized for counterfeiting; • Impose fines on offenders; • Mediate among the concerned parties in settling the amount of damages suffered from infringement
Evidence collection is crucial Evidences should be collected: • Basic information about the infringer • Information about the infringement act (selling) Case: • Radar speedometer • A company in Shenzhen exported the counterfeiting product to Russia; • Trademark label and product were manufactured in different places and only the product without trademark label was sold on the market in Shenzhen.
Administrative proceedings before customs against trademark infringements Detention of suspected infringing goods • Upon request by the holder of an IPR • Application in written form; • Relevant evidentiary document; • Evidence proving the obvious existence of the fact of infringement; • Security. • Discovering goods suspected of infringing a recorded IPR, the customs notify the holder of the right • Security by the holder of the IPR; • Local customs at the port of entry or exit for detaining suspected infringing goods
Administrative settlement and decision by customs in IPR infringement • Administrative compulsory measures • Detention • Investigation • Determining whether an infringement exists • Confiscation (infringement is determined) • Transferring the case to the public security organ for handling if discovering any suspected criminal offence
IPR protection by Customs in 2012* • Detention taken place: 18,300 times • exporting: 95.6% • Items suspected of infringing IPR detained: 93,120,000 • infringing exclusive trademark right: 88,210,000, 94%; • exporting: 92,000,000, 99.77%. *From data released by General Administration of Customs on April 23, 2013
Counterfeiting “LEVITRA” case by Shenzhen Custom • On Feb. 05, 2012, Shenzhen custom suspected a EMS package with reporting name of “herbal enhancement” from US. • X-ray detector found a large amount of tablets inside. • After opening the package, the customs found that 20,016 tablets labeled with “LEVITRA”, suspected of infringing the exclusive trademark right recorded by Bayer with General Administration of Customs. • It confirmed that the suspected items infringed the exclusivity right of “LEVITRA” trademark owned by Bayer with value of 100,000 RMB. • The case has transferred to the public security organ.
Thank you! Stephen Zou, Ph.D., LL.M. Lung Tin International Intellectual Property Agent Ltd. Tel: 86 10 84891188 Fax: 86 10 84891189 Email: LTBJ@lungtin.com