The TM case shows how to choose the best advocacy measures

How to choose the best measure to defend a trademark right when it is infringed? The author uses Sanyou’s involvement in the Ryukakusan case, which involved trademark infringement and unfair competition, as an example of analysis.

Ryukakusan, Sanyou’s customer, holds the exclusive rights to the trademark “Ryukakusan” for its Class 30 products. In 2018, the customer found products that infringed its exclusive trademark rights in various physical and online stores, and commissioned Sanyou’s lawyer to handle a series of administrative complaints and subsequent civil litigation for her.

In the case of trademark infringement, the right holder should proceed with evidence preservation and thorough investigation as soon as possible before issuing a warning, and then choose an action to defend the rights.

PRELIMINARY PREPARATION

Amy Min
Trademark attorney
Sanyou Intellectual Property Agency

Before filing a lawsuit, it is strongly suggested that the rights holders notarize the purchase and repair the evidence in a timely manner to avoid losing the opportunity to preserve the evidence. Otherwise, the counterfeiter will likely move the counterfeit product, or the right holder’s evidence will be challenged due to defects in form or content resulting from their unprofessional methods of obtaining evidence. Through notarization during the purchase and the attachment of evidence, it is also possible to obtain information about the manufacturers of counterfeit products involved.

Rights owners are advised to conduct a thorough on-the-ground investigation of the infringement in order to identify the specific parties that produce and sell the allegedly infringing products, determine whether such products infringe the trademark, and obtain product information such as price and inventory.

When the rights holder is clear that the products sold by the target are indeed counterfeit, but the inventory is low, the desired result may not be achieved by asking the market regulator to directly inspect the target, even with the counterfeit products seized. However, once the specific manufacturer and factory address are identified, the rights holder can file administrative complaints and civil suits against the seller and the manufacturer.

In the above-mentioned case, after notarizing the purchase and establishing the evidence of the counterfeit products in each store, respectively, Sanyou’s attorney revealed that the sources of the counterfeit products were the seller, Hangzhou Hohsi Industrial, and the authorized manufacturer. , Fujian Jinjiang. Zhenkouwei food.

COMPLAINTS AND DISPUTES

The rights holder can file a complaint with the regulators of the market where the target is located by providing proof of rights, notarized certificates, valuation reports and other relevant evidence. After accepting the complaint, the regulator will decide the violation based on the investigation. Once confirmed, it will confiscate and destroy counterfeit goods and the tools used to make them, or create representations of the trademark. If the counterfeiter refuses to provide the origin of the products, a fine will be imposed.

After preserving the evidence, the market regulator, having failed to find the infringing goods through on-site investigation, may finally determine that the goods sold by the target constitute trademark infringement based on the notarized evidence submitted by the complainant, thus ordering him to put an end to the infringement. and impose a fine.

In this case, Sanyou’s attorney filed an administrative complaint and submitted evidence to the market regulator. The alleged product ultimately constituted trademark infringement and an immediate stop sale order was issued. Meanwhile, the lawyer also filed a civil lawsuit against Hohsi Industrial, Zhenkouwei Food and the retailer for infringement of trademark rights and unfair competition. The court ultimately ordered the three parties to pay a total of more than 200,000 RMB (27,700 USD) in damages resulting from the trademark infringement.

The advantages of the administrative investigation are the low economic cost of the opening, the speed of the investigation and the treatment, and its obligatory and constraining nature, which can put an end quickly and effectively to the infringement and prevent recidivism. Through administrative complaints, law enforcement authorities conduct investigations, which can be very useful for the collection of evidence and can also give a boost to possible subsequent civil lawsuits. However, through an administrative complaint, the rights holder cannot obtain damages for the infringement and must additionally file a lawsuit, which results in more financial and time costs compared to the administrative complaint.

OTHER MEASURES

Sending a warning letter. If the extent of the infringement is small and the damage is minor, the right holder can ask the infringer to stop the trademark infringement by sending a warning letter, which is inexpensive and quick but not mandatory. , so obtaining the desired effect depends on the co-functioning of the target. If the rights holder decides to file an administrative complaint, it is not advisable to send a warning letter to prevent the counterfeiter from moving the counterfeit products.

Complaint to the rights protection center of the e-commerce platform. For infringing sellers on shopping websites such as Taobao, Tmall and Jingdong, right holders can complain to the website’s Intellectual Property Rights Complaint Center by submitting proof of rights, description comparison of genuine and counterfeit products and other relevant evidence, and requesting the removal of specific links of infringing products. The claim center will notify the defendant for a response after accepting the claim and determine whether the infringement occurs based on the evidence of both parties, and once the infringement is determined, the link to the counterfeit product subject of the complaint will be deleted.

Customs registration of IPRs. As a precautionary measure at the end of import and export, it is recommended that right holders register their trademarks in the China Customs IPR system as soon as possible after registering the trademarks of the goods in the category goods. In this way, customs will immediately notify the rights holder as soon as an alleged infringement of the registered IPR is discovered in the imported or exported goods. Customs registration is a crucial and fundamental step in the IPR protection regulatory regime, which helps Customs detect infringing goods and protect IPR owners.

Amy Min is a tradeark lawyer to Sanyou Intellectual Property Agency

Mi Tai Wan Rui Law Firm intellectual propertySanyou Intellectual Property Agency
16/F, block A, corporate square
No.35 Jinrong Street, Beijing 100033, China
Tel: +86 10 8809 1921 / 8809 1922
Fax: +86 10 8809 1920
Email: sanyou@sanyouip.com

www.sanyouip.com