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Enforcement of Intellectual Property Rights at Trade Fairs in China and Hong Kong

Enforcement of Intellectual Property Rights at Trade Fairs in China and Hong Kong

Enforcement of Intellectual Property Rights at Trade Fairs in China and Hong Kong

Wednesday, 02 November 2016 20:07

By Vera Sung, Stephen Chan, and Vincent Fong

 

Trade fairs are a popular venue worldwide for entrepreneurs to display goods to a large number of potential customers.  However, trade fairs are quite often a battleground for Intellectual Property Right (“IPR”) owners and their competitors where early allegations of infringement are regularly made. 

This article outlines efficient ways in which these allegations of infringement can often be resolved.

 

TRADE FAIRS IN CHINA

 

i). Filing a Complaint

 

Trade fairs in China have become accustomed to resolving IPR disputes made during the relevant period of the trade fair or exhibition.  Depending upon the organizer, there will quite often be a set of prescribed rules and guidelines in terms of the procedure for filing a complaint and its resolution.

Generally, complainants will have the initial burden of proof to show infringement.  Such proof will generally include: 

 

  • Photos;
  • Samples of infringing goods;
  • Catalogue or brochure; and
  • Any other information supporting the alleged infringement.

For patent infringement, it is often difficult for a complainant to demonstrate infringement by examining the appearance of any particular product.  Often, marketing materials such as brochures may provide a useful guide in detailing any infringing technical features.

In advance of any trade fairs, IPR owners would be well-advised to prepare a requisite set of documents which can be used in support of any complaint against infringement, such as:

 

  • Certificate of registration of IPR; and
  • Certificate of Incorporation of the IPR owner;

It is important to ensure that all documents submitted comply with the trade fairs’ relevant procedures and guidelines, including any formality requirements such as translation, legalization and notarization.

IPR owners should submit any complaint with a trade fair organizer as soon as possible.  Due to the usual short duration of various trade fairs and exhibitions, it is of no use to an IPR owner if they file a complaint on the last day of the trade fair, only to find that by the time that the complaint is given any consideration, the trade fair has already come to an end. 

If infringement can be established, the organizer may remove the infringing items from display and prohibit the infringer from participating in the trade fair in the future.  Such a successful complaint can be significantly rewarding for the IPR owner as not only are the infringing items removed from display but the infringing party will inevitably suffer from negative publicity.

 

ii).  Invalidation Applications

 

If it is expected that a counter-party might raise allegations of infringement in China based upon a patent registered in China, it may be advisable to file an invalidation application against the registered patent owner prior to the commencement of the trade fair.

Any party may file an invalidation with the China Patent Office at any time, with supplemental evidence and grounds to be submitted within 1 month thereafter. 

Even if an invalidation application is not fully processed by the time the trade fair commences, it is still of significant importance because most trade fair organizers will expressly provide that they will not interfere with a dispute which is the subject of an invalidation application.  In such a way, an applicant of an invalidation applicant can gain temporary immunity from IPR owners who seek to complain on the basis of their registered patent in China.

 

TRADE FAIRS IN HONG KONG

 

Very often, IPR owners overlook registering their patent and designs in Hong Kong where trade fairs are very active all-year around.  Short of registration, IPR owners may still enforce their rights by means of copyright. 

Unlike China where there is a recordal of copyright and a copyright registration certificate is a pre-requisite for enforcement, Hong Kong has no such requirement.  Subject to the rules and procedures of each trade show, organizers may accept a complaint based on copyright if an appropriate affidavit is provided in accordance with the Copyright Ordinance (Cap. 529).   

OLN provides full range of IP services in China and Hong Kong.  Please contact our IP team at ip@oln-law.comfor further information on enforcement of your IPR at trade fairs. 

 

November 2016

 

This article is for information purposes only. Its contents do not constitute legal advice and readers should not regard this article as a substitute for detailed advice in individual instances.