From the start of the special campaign to combat IPR infringement and selling counterfeit and shoddy goods deployed by the State Council in October of last year to the end of the first half year of 2011, law enforcement officials from the national IP system have been sent for 166, 000 man-times. They checked 2286, 000 commodities, handled 2, 116 patent cases and cross-departments and areas enforcement collaborated for 1, 757 times, which effectively protected innovative achievements.
Administrative law enforcement campaign is the law enforcement acts carried out according to law by patent administration authorities on handling, mediating patent disputes and cracking down the counterfeiting patent. It is not only an effective IP protection strategy with Chinese characters, but also an important protection strategy besides the judicial IP protection. In order to make the useful strategies of the campaign long-lasting, SIPO issued Decision on Enhancing the Patent Administrative Law Enforcement Work. The reporter chooses some typical cases and invited experts from the State Defense Science & Technology IP Administration Research Center to make comments.
Case I
Crack down on collective production and sales of counterfeited patent products to stop further counterfeiting.
Tai Wan Piao Yi Industrial Co., Ltd. is a professional manufacturer of tea set products. It applied more than 30 patents for “Piao Yi” serial products. The products are illegally counterfeited by many merchants. The counterfeited products have a lot of quality problems like fragile glasses, easily rusty metals, dirty color, irregular water holes, etc. which seriously infringed the legal rights of the patentee and the consumers. After receiving reporting, Guangzhou IP Bureau investigated the case for a few days and took control of the counterfeiting, wholesales, retailing factories located in Sha Xi District, Pan Yi District, Guangzhou City. The law enforcement officials took the campaign and seized more than 300 “Piao Yi cup (pot) products, more than 20, 000 semi-finished products and accessories. The patent officials criticized the involved companies and ordered them to rectify. All the involved companies signed the Letter of Commitment and promised not to sell counterfeited patent products. The officials confiscated and destroyed the counterfeited products and signs, ordered one counterfeiting den to cease counterfeiting patent act, destroy counterfeited products and signs as well as fined them for 50, 000 Yuan.
Expert’s comment
This case belongs to a collective producing and selling counterfeited products. The enforcement officials of the IP bureau took the strategy of publishing the key and educated all. They warned a few sales acts of minor offense and recorded the retail and sales acts of serious offense as well as heavily punished the resources of counterfeited goods. By doing so, it not only saved the costs of right safeguarding costs but also realized a good law enforcement effect which protected the legal rights of the patentees. At the same time, the campaign against the resources of the counterfeited goods expunged the possibility of further counterfeiting. The warning and punishment against producing, selling of the counterfeited goods fundamentally protected the general consumers’ rights.
Case II
Promote the invalid patent, suspected counterfeiting patented products
At the early of this year, Changsha IP Bureau received the report that the largely sold products on the market “Jiu Sheng Ganoderma Lucidum Grass Shampoo” is suspected to counterfeiting patent and retailers also published advertisements on the mainstream media and cheated consumers via crooked promotion. The law enforcement officials confirmed that the exclusive distributor placed advertisements on Changsha Evening News and claimed that the products had received Chinese patent and it had been sold in more than 30 drugstores across the city. However, it is found that the patent became invalid since June 2, 2010. The Changsha IP Bureau immediately issued an investigation notice to the exclusive distributor in Changsha to explain the counterfeiting patent acts and detained the involved products. However, the distributors continued to publish ads and promoted that the patent of the product has been protected by SIPO. This act obviously constituted illegal acts of selling and counterfeiting patented products. Changsha IP Bureau immediately made the administrative decision and ordered the involved party to cease sales of the products indicating the patent mark; immediately cease to publish advertisements which claimed that the products has been patented; and pay the penalty of 10, 000 Yuan.
Expert comments
The involved party was aware that the patent had become invalid and continued to advertise and sold the products upon receipt of the IP Bureau’s notice. This obviously constitutes a patent counterfeiting act and should receive administrative punishment.
Case III
Collaboration of administrative enforcement and judicial coordination to promote multidirectional protection of IP rights
Sichuan Mianyang Feng Gu Liquor Co., Ltd. (hereafter referred to as Feng Gu Liquor) successively received the titles of “Chinese famous trademark”, “Sichuan well-known products”. However, it is always troubled by the municipal liquor companies’ counterfeiting and imitation.
On January 25, 2011, Feng Gu Liquor requested the Mianyang IP Bureau and Mianyang Intermediate People’s Court to handle several patent infringement disputes.
After receiving the litigation filed by Feng Gu Liquor, Mianyang Intermediate People’s Court immediately discussed the issue with Mianyang IP Bureau and confirmed that Mianyang IP Bureau will conduct reconciliations for 19 patent infringement case filed by Feng Gu Liquor to Mianyang Intermediate People’s Court. Mianyang IP Bureau recorded 22 cases involving 2.28 million Yuan.
After 3 months examination, Mianyang IP Bureau investigated the facts of this case with a special attention to legally educate the involved parties and urge them to make reconciliation agreement. By the time of April 25, 2011, the 22 patent infringement cases were all closed. Among them, 20 cases were settled with reconciliation agreement and 2 of them were withdrawn due to the insufficient evidence.
Expert’s opinion
The collaboration of administrative enforcement and judicial protection on one hand can crack down on the infringement promptly either through mediation or examination. On the other hand, the patentee may also obtain some compensation which would help to protect the patentee’s legal rights. Actively pushing up the collaboration of administrative law enforcement and judicial protection can better satisfy the public’s requirements and raise the efficiency of proceedings, completely promote the society’s trusts on the administrative organs’ abilities on handling patent infringement and protect the patentee’s legal rights as well as boost the multiple protection of IP rights.