Evidence collection in IP infringement cases

By Frank Liu, Shanghai Pacific Legal
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As intellectual property infringement occurs, the IP rights holder is often eager to take action to stop the infringement and prevent further losses. Such eagerness and purpose of the IP right holder are completely understandable. For some simple infringement cases, actions can indeed be taken immediately. However, for some relatively complicated or well-planned infringement cases, hasty action with insufficient evidence can make it difficult to effectively fight the perpetrators. Therefore, it is necessary to take investigative measures to find out as far as possible the full picture of infringement and ensure necessary evidence preservation formalities. Although it may take more time, such efforts can effectively avoid the embarrassment of failing to fight against infringers effectively due to insufficient evidence.

Frank Liu
Partner
Shanghai Pacific Legal

In practice, it is common that courts accept batches of IP infringement lawsuits, and it is also common that some brands have made efforts to crack down on counterfeit goods in the market for a long time. From the perspective of protecting IP rights, it is necessary to take these actions. For cases in which infringement is obvious and has an imminent impact on the brand owner’s business interests, direct administrative complaints, investigation and handling can achieve notable results. However, such measures have led to inertial thinking or misconception, i.e., evidence collection in IP infringement cases is not very important or it is time-consuming and worthless to make excessive efforts to carry out investigations and collect evidence. In fact, it can also be seen that in many cases, investigation and evidence collection began one or two years or more before filing the litigation and good results were achieved even in complex infringement situations because sufficient evidence was prepared.

Determining a strategy

The right holders’ foundation of rights, infringement situations and the purpose of right protection vary greatly in different types of cases. A right holder cannot apply the pattern of other cases to its own case mechanically but should choose the most suitable plan according to its specific situation.

The author believes that even in the most urgent cases, it is necessary to get a clear picture of the infringer and make a plan in advance, and it is not advisable to take action hastily, without knowing the status quo of infringement. Generally, infringements in the market do not happen overnight. When a right holder finds an infringement, the infringer may have already made longer-term preparation and planning. At this point, if the right holder takes action directly and precipitously, without knowing about the opponent, then it will be in a position of disadvantage – preparation is everything.

In a simple individual infringement case, direct action may achieve some results, but more out of good luck. In the case of well-planned infringement, such action is very likely to fail. Even if such action produces results, infringers can easily evade their responsibilities and quickly re-organise with a new round of infringement.

Some right holders will feel desperate and lose confidence in their ability to defend their rights when they repeatedly find that they have to face new infringements after the perpetrators have gotten away, even though this was probably due to their own hasty actions.

Therefore, when right holders find that someone is infringing their IP, the best way is to immediately conduct an investigation to identify the infringement situation, then choose corresponding strategies and make appropriate action plans. Sharpening an axe will not slow down the work of cutting firewood. Even if it is found through investigation that the infringement is simple and individual, it will not be too late to take action. By doing so, the adverse consequences due to unprepared and hasty actions against complicated infringements can be avoided.

Hierarchy of evidence

As IP infringement cases include simple and complicated cases, evidence collection can be conducted to certain levels, i.e. preliminary or in-depth investigation, based on the infringement situation. For example, in individual direct infringement in a physical market, administrative complaints and investigation can solve the problem. In the case where a business name is registered based on another’s trademark, but production or sale of infringing products has not started, the purpose of taking action is to revoke such a business name. The Administration for Market Regulation has a public record of names of infringers, so it is unnecessary to collect evidence in such cases.

However, infringements organised carefully in advance often involve multiple affiliated infringement subjects. The real infringers are often concealed. For such cases, it may be necessary to organise multiple rounds of online and offline investigations. A well-designed plan must be made for evidence collection to ensure that the real infringers are brought to justice. In such complicated cases, sufficient evidence must be well prepared in the early stage in order to withstand the fierce confrontation with infringers in the later action stage.

Coping methods

In some of the cases taken by the author, many right holders, due to anxiety when facing infringement, acted hastily without collecting enough evidence. When dealing with experienced infringers and complicated infringement situations, right holders often felt frustrated. At this point, the infringers were already highly alert and took precautionary measures against possible actions to be taken by right holders at a later stage, thus making evidence collection much more difficult.

Under such circumstances, right holders should, on the one hand, build up confidence and not feel frustrated due to early setbacks; on the other hand, they should patiently wait for a better opportunity and actively start collecting infringement information. In fact, as long as infringers attempt to profit from acts of infringement, they will always expose their purpose at a certain time, or in a certain transaction. If right holders pay close attention to infringers, seize corresponding chances and fix evidence in time, they can reverse the unfavourable situation caused by any early and hasty actions.

In summary, to fight against IP infringements, right holders must consider possible adverse circumstances and attach importance to the process of collecting the evidence required. After investigation and evidence collection are completed, right holders should work out strategies and make action plans according to specific circumstances of the case. In this way, they can protect their IP rights in China more effectively.

Frank Liu is a partner at Shanghai Pacific Legal

Room 2709, 27/F, Plaza 66 II
1266 Nanjing Road West, Shanghai 200040, China
Tel: +86 21 6086 0199
Fax: +86 21 6086 0111
Email: frank.liu@shanghaipacificlegal.com
www.shanghaipacificlegal.com