Senju Pharm. Co. v. Apotex Inc., No. 2013-1027 (Fed. Cir. Mar. 31, 2014).
Endo Pharm., Inc. v. Actavis Inc., Nos. 2013-1658, -1662 (Fed. Cir. Mar. 31, 2014).
Monday, March 31, 2014
Friday, March 28, 2014
New Federal Circuit Opinions - March 28, 2014
Shire Dev. LLC v. Watson Pharm., Inc., No. 2013-1409 (Fed. Cir. Mar. 28, 2014).
Wednesday, March 26, 2014
New Federal Circuit Opinions - March 26, 2014
StoneEagle Services, Inc. v. Gillman, No. 2013-1248 (Fed. Cir. Mar. 26, 2014).
Monday, March 24, 2014
New Federal Circuit Opinions - March 24, 2014
Brain Life, LLC v. Elekta Inc., No. 2013-1239 (Fed. Cir. Mar. 24, 2014).
Thursday, March 20, 2014
New Federal Circuit Opinions - March 20, 2014
Energy Recovery, Inc. v. Hauge, No. 2013-1515 (Fed. Cir. Mar. 20, 2014).
Tuesday, March 18, 2014
New Federal Circuit Opinions - March 18, 2014
Alcon Research Ltd. v. Barr Labs. Inc., Nos. 2012-1340, -1341 (Fed. Cir. Mar. 18, 2014).
Friday, March 14, 2014
New Federal Circuit Opinions - March 14, 2014
Vederi, LLC v. Google, Inc., No. 2013-1057 (Fed. Cir. Mar. 14, 2014).
Wednesday, March 12, 2014
New Federal Circuit Opinions - March 12, 2014
Therasense, Inc. v. Becton, Dickinson & Co., No. 2012-1504 (Fed. Cir. Mar. 12, 2014).
Tuesday, March 11, 2014
New Ways to Combat Counterfeiting and Piracy in China
Note: This article is published by IP Law360 on March 11, 2014. The content is reproduced below.
New Ways to Combat Counterfeiting and Piracy in China
Lei Mei, Managing
Partner, Mei & Mark LLP
Linfeng Qiu,
General Counsel, Hangzhou IP Protection & Management Center
E-commerce sales
in China have skyrocketed in recent years. For example, on a single day,
November 11, 2013, the leading Chinese E-commerce website, Taobao.com, sold a
record-breaking 35 billion RMB ($5.77 billion) worth of merchandise online. Unfortunately,
many Chinese websites have online merchandise that include counterfeit and
pirated products, as noted in the 2013 list of Notorious Markets by the United
States Trade Representative Office (“USTR”). Therefore, IP owners, including
U.S. consumer products companies, must develop a new effective strategy in
combating trademark counterfeiting and copyright piracy in China in this
digital age.
As an initial
matter, it is worth noting that China does have comprehensive trademark and
copyright laws and regulations that may be used to combat trademark
counterfeiting and copyright piracy, and China’s central government has made it
a high priority to protect intellectual property rights. For example, if there
is a dispute regarding trademark or copyright rights, the owner of the
registered trademark or copyright may bring a lawsuit in a People’s Court or
request a local administrative department for industry and commerce (i.e., the local
commerce department) to handle the matter.
Unlike the United
States, local commerce departments in China have the authority to order an
infringer to cease infringing upon that right immediately, to confiscate and
destroy the goods involved and the tools used to manufacture the said goods and
counterfeit the representations of the registered trademark or copyright, and
to also impose a fine, without a court’s order. A party dissatisfied with the
commerce department’s decision may bring a lawsuit in a People’s Court in
accordance with the Administrative Procedure Law of the People’s Republic of
China.
Despite these
laws and regulations, it is still questionable as to the effectiveness of
enforcement by local courts and commerce departments in specific cases. As the
United States International Trade Commission noted in a 2010 report, “[s]ignificant
structural and institutional impediments undermine effective enforcement,
including the protection of IPR infringing industries by local Chinese
officials, a lack of coordination among government agencies, insufficient
enforcement resources and training, and non-deterrent civil and criminal
penalties.” Today, local protectionism is still a legitimate concern in many
parts of China, although enforcement efforts are more effective in big cities.
U.S. companies
have traditionally used local Chinese law firms and/or investigative agents to
crack down on physical counterfeiting activities. The problem, however, has
always been that when a small factory is shutdown, another one springs up
elsewhere. There have also been instances where some rogue investigative agents
manufactured fake infringing activities to crack down on in order to collect
more fees from IP owners. As a result, it could be very difficult for IP owners
to achieve desired enforcement results in China.
In addition,
traditionally, the burden of obtaining admissible evidence is upon IP owners,
as China’s law does not require a civil defendant to voluntarily produce
relevant documents or provide relevant information (although a new amendment to
China’s trademark law, taking effect on May 1, 2014, does allow burden of
discovery to be shifted in certain circumstances).
Interestingly,
the solution to the traditional challenges of cracking down on physical
counterfeiting activities lies with the digital evolution. With the emergence
of websites like Taobao.com, online marketplace has become the main sales
channel for counterfeit and pirated products in China. Therefore, IP owners could
develop new enforcement mechanism to combat trademark counterfeiting and copyright
piracy in China in this digital age.
Surprisingly, it
is actually easier and more effective to combat trademark counterfeiting and
copyright piracy online for several reasons. First, e-commerce websites
typically show off product photos to the public, which can be easily and safely
downloaded as evidence of infringement. This removes the obstacle of gathering
evidence in a traditional physical marketplace in China, which not only is
difficult but also could be dangerous at times.
Second, IP
owners can easily obtain pricing and sales data of counterfeit and pirated
products from e-commerce websites and use those for damages calculation. In
general, damages are based on the amount of the profits that the infringer has
earned as a result of the infringement or the amount of the losses that the
infringed party has suffered as a result of the infringement. In a traditional
physical marketplace, it is very difficult to prove damages because of the
difficulty in obtaining relevant evidence from infringers.
Third, many
leading e-commerce websites are operated by established Chinese companies in China’s
more developed regions where IP enforcement has been more effective. For
example, Taobao.com is operated by Alibaba Group, a leading Chinese e-commerce
company in Hangzhou, the capital of Zhejiang province in Eastern China. For
obvious reasons, it is easier to demand these established companies to remove counterfeit
and pirated products from their online e-commerce websites.
Indeed, USTR has
removed Taobao.com from its Notorious Markets List since 2012, noting that
although “Taobao.com was included in previous Notorious Markets Lists for the
widespread availability of counterfeit and pirated goods in its electronic
marketplace,” it was removed from the List in 2012 “in recognition of [Taobao.com’s]
efforts to address these problems.” According to USTR, “Taobao.com has assured
the United States that it will continue to work with rights holders and law
enforcement officials in China to address remaining issues raised by software,
publishing and apparel and footwear companies.”
Finally, several
Chinese provinces have established semi-governmental IP protection and
management centers for cracking down on trademark counterfeiting and copyright
piracy. These centers provide an efficient platform for IP owners to serve
notices to e- commerce website operators and demand removal of the counterfeit
and pirated products. Typically, these centers function similar to private
firms, but due to their semi-governmental status, their involvements could make
enforcement efforts more efficient and cost-effective.
As China’s
e-commerce websites continues to gain popularity with estimated sales of 1.85
trillion RMB ($305 billion) in 2013, there are new and effective ways for U.S.
IP owners to combat trademark counterfeiting and copyright piracy in China.
With proper counseling and favorable local support, U.S. IP owners can achieve
success in enforcing and protecting their IP rights.
New Federal Circuit Opinions - March 11, 2014
Danisco US Inc. v. Novozymes A/S, No. 2013-1214 (Fed. Cir. Mar. 11, 2014).
Monday, March 3, 2014
New Federal Circuit Opinions - March 3, 2014
Ancora Techs., Inc. v. Apple Inc., Nos. 2013-1378, -1414 (Fed. Cir. Mar. 3, 2014).
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