|China: are we progressing from unfair to funfair?|
"IP Enforcement at ChineseTrade fairs is possible, and relatively easy at the larger fairs -- if you have the proper documentation ready. This is because all Chinese trade fairs that last three days or longer are required to have an IP officer on-site to handle infringement complaints.Michael has also provided a copy of the 6 May 2011 Consultation Paper on Measures for Protection of Intellectual Property Rights Involved in Exhibitions, which you can download as a Word document here.
While this is an Administrative action, and not a court action, it pays to have the documents notarized and legalized, at least on the patent side. Trade marks officers may have looser requirements, and one should always check out the actual requirements of the trade show you intend to attend.
The required documents include, as originals (the IP right) or legalized copies (other documents):
Other documents may be required, depending on the requirements of each trade show. While legalized documents are not always needed, if they are legalized the officers have no excuse to refuse a request for enforcement.
- the IP right;
- a certificate of incorporation/good standing of the IP Right owner if it is a company. If the owner is an individual, proof of identity is needed;
- a certificate of legal representation, testifying as to the identity of the legal representative;
- a power of attorney signed by the legal representative, giving a named person the right to enforce the IP;
- Chinese translations of all the above.
The Canton Fair in Guangzhou (allegedly the largest export trade fair in the world), with which I am most familiar, always has groups of trade mark and patent officers in attendance. Following submission of the documents and the filing of a complaint identifying the specific booth(s) showing the allegedly infringing article(s), the officers will go to investigate. If they find the items, they will order the booth to remove them. If the booth contests the charge and/or the IP, they will have 24 hours to present the evidence.
In extreme cases, the officers can close the booth and, for repeat offenders, they can prevent them from displaying at the next show. In my experience, trade marks are the easiest to enforce, then designs, and finally utility models and patents.
If people want to enforce their IP in Chinese Trade Fairs, especially the larger ones, it is definitely possible. But it is worth it for IP owners to check what specific requirements there are at that specific trade fair, and to have the proper documentation ready well in advance.
Alternatively (or concurrently), some IP owners attend in order to collect evidence of infringement. By bringing a Chinese notary to the fair, you can gather notarized evidence that may be used in a future Chinese litigation or administrative enforcement action. IP owners can also find out other useful information, such as infringing manufacturers, sellers and volumes".
Meanwhile, from the ever-excellent Paul Jones (Jones & Co., Toronto) comes news of a sudden development in the process for revision of China's trade mark legislation. He writes
"The third set of amendments to the PRC Trademark Law Have been under way for some time, with several consultations having being conducted by the PRC State Administration for Industry and Commerce .... Eventually the draft was finalized and passed to the State Council ... for review and approval before being sent to the Standing Committee of the National People’s Congress (the legislature) for debate. However last Thursday the State Council Legislative Affairs Office posted a draft online for public comment (in Chinese) here.Paul adds that generally the proposed amendments are considered a significant improvement and that it is good to see them move forward through the legislative process.
Comments are due October 8, 2011.
According to a brief article (in Chinese) on the web site of the State Intellectual Property Office, revisions have been made to allow sound marks and to limit the use of geographical names, both Chinese and foreign".
The IPKat is delighted to see that the position of rights-owners, both foreign and local, appears to be improving. Let's see if the results match the good intentions.