Introduction
The "PRC Protection Measures for Intellectual Property Rights during Exhibitions" (came into force on March 1, 2006) ("展会知识产权保护办法" 已经商务部, 国家工商总局, 国家版权局, 国家知识产权局审议通过, 现予公布,自2006年3月1日起施行), were jointly released by the Ministry of Commerce, the State Administration for Industry and Commerce, the State Bureau of Copyright and the State Intellectual Property Office.
The Measures enriched the intellectual property rights (IPR) protection system in China, by regulating the specif case of infringement during commercial exhibitions, trade fairs and conventions operating within the sectors of trade and technology.
In other words, the measures apply to the protection of trademarks, copyrights and patents, providing a framework for handling IPR violations during exhibitions (Article 1: "...for the purpose of intensifying the IPRs protection during exhibitions, safeguarding the order of the exhibition industry and promoting the sound development thereof.").
Although more incisive measures could have been adopted and extended to any type of exhibition (the Measures distinguish the exhibitions that last 3 days or longer from the shorter than 3 days), currently, regulations and measures issued by Chinese authorities ensure approximately a good legal basis enabling PRC rights holders to react to IPR infringement at exhibitions in a quicker and more effective manner.
Applicable Laws and Principles during Exhibitions
The Measures apply to the protection of trademarks, copyrights and patents. Briefly, it is important to keep in mind that:
as general rule, Chinese laws protect "only" IP rights registered in China (according to the first-to-file rule), hence, unregistered rights or a foreign registration have no legal effect in China;
displaying products at trade fairs can, in some circumstances, constitute publication which may affect their novelty value;
the PRC Patent Law of China grants a grace period of six months within an invention patent application can be filed if the "invention" was exhibited for the first time at a trade fair recognized by the Chinese Government;
according to the PRC Trade Mark Law, if a trade mark is used for the first time at an international exhibition sponsored or recognized by the Chinese government, the trade mark may be registered in China using the date of the trade fair as a "right of priority" (within six months). If a third party tries to register a mark after seeing it at the fair, the holder of the mark can prove to the China Trade Mark Office that he used the trade mark first and the trade mark will be granted to him;
regarding to Copyrights, China is member of the Berne Convention. Any copyright from Berne Convention countries will be automatically protected in China;
the intellectual property laws delegate their enforcement to specified administrative authorities, such as the Administration for Industry and Commerce (AIC) for trademarks and unfair competition, Patent Administration Bureau (PAB) for inventions patent, utility model patents and design patents, and National Copyright Administration (NCA) for copyright. The Technology Supervision Bureau (TSB) is empowered under certain product quality laws to take action in some cases.
IP Complaints Office at Exhibitions
According to the Article 6 of the Measures, if an exhibition lasts for 3 days or more and if the administrative department of exhibition believes it is required, the exhibition sponsor shall establish an office in charge of IPRs complaints during the exhibition. The administrative departments at the locality of the exhibition dispatch their personnel to the complaint centers.
The Complaints Office is comprised of the personnel from the sponsor of the fair, the administrative department of the fair, and the administrative IPRs department in charge of patents, trademarks, and copyrights. This Office is located in the fair site.
The Complaints Office will deal directly with infringements and its staff is allowed to obtain samples of suspected infringing goods as evidence on location.
Complaints received by the Office must be passed to the relevant local IP authorities within 24 hours of reporting. The authorities are then required to issue a decision according to the relevant laws and regulations, and promptly bring it to the attention of the parties as well as the exhibition organizers. If the infringer fails to provide evidences to overcome the complaint, the relevant infringing products should have to be moved out of the exhibition. In some trade fairs, the infringer will be requested to provide a Letter of Undertaking to commit that he will not operate or exhibit the accused items.
Cases not finalized during the exhibition can be transferred to the relevant authorities for continued investigation.
If the event lasts less than three days, foreign companies should check whether local enforcement authorities such as the Administration for Industry and Commerce (AIC), the Public Security Bureau (PSB) or the Technical Supervision Bureau (TSB) will be present. If these administrative authorities are not present, the organizer should be able to provide a contact that can be addressed in case of infringement.
Documents to Prepare and Action at Exhibitions
In order to take action against IPR infringements found at exhibitions, the holder of a IP right should prepare the necessary documentation in advance. Exhibitions are usually short in length, which makes it difficult to supplement any missing documents on the spot. When not personally present at the exhibition, foreign rights holders can entrust a local agent with the submission of complaints. In case of infringement, thus, the following documents are required in order to submit complaints to the Complaints Office at exhibitions:
A legitimate and effective certificates of IPR ownership as follows: - Trademark: copy of any PRC trademark registration certificate or any PRC trademark confirmation certificate confirmed by means of the signature or seal affixed by the complainant and identity certification of the trademark owner (such as a Business Registration Certificate); - Copyright: effective Copyright recordal notice (ideally PRC), identity certification of the copyright owner; - Patent: PRC patent certificate, text of patent announcement, identity certification of the patent owner, certification on the legal status of the patent;
The basic information about the parties as suspected to have committed any infringement;
The reasons and evidences for any suspected infringement;
The original products or photographs of the products may be submitted where needed;
ID documents. If the complainant is a company, its ID is the registration certificate or business licenses. In case of natural person, ID card or passport. Most of the exhibitions require that the ID documents should be notarized by the notary organization of the country where the complainant is located and are legalized by the Chinese embassy or consulate in this country;
If an agent is entrusted to act on behalf of the rights holder, a notarized and legalized Power of Attorney must be provided.
In addition, foreign rights holders may also be asked to provide official Chinese language versions of the relevant documents.
The entitled subjects to file the complaint against the infringements in exhibitions are the right owner, the licensee to the monopolized license contract. The licensee to the exclusive license contract may file the complaint in case the right owner refuses to do that in writing. And the licensee to the ordinary license contract may file the complaint upon the explicit authorization of the right owner.
The holder of a IP right can file a formal letter of complaint at the IP complaints center providing relevant evidence of his rights and the infringement. Officers of the relevant administrative authority will consider the complaint and if they decide that an inspection is justified, would accompany the complainant to the infringer' s stall to mediate the removal of the offending products. Depending on the authority, it may also be empowered to seize the offending products and impose a penalty. Where any case hasn’t been concluded at the end of an exhibition, the relevant facts and evidence of the case may be confirmed by the exhibition sponsor.
The IPR administrative department at the locality of the exhibition shall, within 15 workdays, transfer it to the IPR administrative department with jurisdiction for treatment according to law.
Under the following circumstances, the complaint will not be accepted:
- where the complainant has filed a lawsuit regarding the same infringement to the court;
- where the subject patent is in the procedures for declaring invalidation;
- where any dispute over the ownership of the patent right is in the trial procedures of the court or in the mediation procedures of the patent administrative department;
- where any patent right has been terminated and its owner is attempting to resume the patent right;
- where the trademark right has been invalidated or cancelled.
Penalties
Possible punishment decisions against infringement based on IP complaints can include an order to stop infringing activities, confiscating or destroying the infringing goods and promotional materials, or imposing of fines. Exhibitors that commit infringements twice will be banned from participating in the next exhibition.
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