Trademark Enforcement through Administrative Agencies

May 02, 2013, ChicagoIP 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.

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 police department

• Joint enforcement through several administrative agencies

Trademark cases investigated by AICs nationwide 2002-2011**

**From SAIC; Handover of 1,750 suspects to judicial authorities for criminal investigation; SPC: 12991 trademark cases were accepted by the court of the first instance (civil proceedings) in 2011

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

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

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 police department 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

• In Feb., 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 police department.

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