Trademark Enforcement through Administrative Agencies

April 30, 2013, New YorkIP 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

Investigation: Evidence collection

Administrativeprocedures

Invalidation Proceedings

Continuation of Administrative

Procedure

Stay of Administrative action

On-site inspection

Administrative Procedure in 1st &

2nd instances

Administrative Lawsuit In 1st & 2nd instances

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 84891188Fax: 86 10 84891189Email: LTBJ@lungtin.com