As China becomes an increasingly important centre on the global economic landscape, more and more large international exhibitions and trade fairs are being held in cities such as Shanghai, Guangzhou and Beijing. There is a problem, however, as to how rights owners timely and effectively deal with IP infringements found at exhibitions and trade fairs.
To collect the infringement evidence, the rights owners can buy the products in the exhibitions or trade fairs, or take pictures or videos of the products with the witness of the notary as evidence, or alternatively, the rights owners might apply to the court for the preservation of evidence. This author will explore some issues around evidence preservation application that call for attention during the exhibitions and trade fairs, based on the experience accumulated from attending a number of such international exhibitions.
The infringement confirmation and the timing for evidence preservation application. Exhibitions and trade fairs are brief, lasting three to five days on average. To effectively choose the correct application timing is the key to obtaining an evidence preservation order from the court. In general, rights owners should make efforts to submit the application to the court on day one or two of the events (excluding public holidays and weekends), granting sufficient time to the court for consideration and deliberation. Rights owners should confirm whether an act is an infringement on at least day one so that they are able to submit preliminary infringement evidence to the court.
Rights owners can even send professionals into the exhibition halls for observation, and take pictures or videos of the products suspected of infringement during the exhibition preparation period (if possible). If this is not an available option, completing the collection of preliminary evidence in the morning of day one is recommended.
Rights owners must be exceptionally cautious when confirming whether an act is an infringement against the patent right, because some exhibitors display the products merely for demonstration, without installing some parts, components or installations. When deliberating on a product, rights owners should contrast the displayed product with the requirements of the rights in question, and only make official application to the court after they are fully convinced that the product suspected of infringement falls into the rights protection sphere. Otherwise, a subsequent infringement suit may be jeopardized.
Preservation options and bond preparation. The rights owner should include an explicit choice of evidence preservation options in the submission, apart from the main body of the document and basic information about the respondent. Taking pictures and videos, or sealing up or detaining the products, are some of the options. If the detention of products is chosen, the applicant should also clarify whether to detain the machine as a whole, or just some parts and components.
The “minimum necessity principle” should be followed when defining the preservation option. The rights owner is recommended to select the most cost-efficient preservation means, on the condition that it is sufficient to secure infringement affirmation. For example, if the infringement act can be affirmed by taking pictures and videos, this should be the option.
In the case where complicated technology is involved, and the court might need to have field inspections later, then sealing up and detention is an ideal option. Otherwise, there would be no physical objects for comparison when inspections are needed.
The evidence preservation option determines the amount of bond, to some extent. The rights owner should prepare the market prices of the products accused of infringement in advance, and provide such information with the submission to the court for reference. If such information is not publicly available, the rights owner might consider providing the prices of the patented products as a preliminary ground for the court to determine the amount of the bond. And the rights owner should prepare a certain amount of bond for the timely payment of the bond to initiate the preservation process.
Participation in preservation on site. In judicial practice, after approving the preservation application, the court normally goes to the exhibitions for the preservation one or two days before the conclusion of the events, with the aim of minimizing the impact on the event order. The rights owner should purchase new memory cards, contact warehousing or logistics services, and make other proper preparation in advance, and stand by on site.
The rights owners will be in advantageous positions if they can participate in the evidence preservation in the booths of the respondents, since they are the ones who are familiar with the IP rights. However, whether the right owners are admitted into the booths hinges upon the communication between the court and the respondents, and the latter tend to be strongly against the admission of the applicants.
In this situation, it is essential to inform the judges on the IP rights information, the ideal positions and angles for taking pictures and videos, and where the detained parts and components are installed. In particular, when the applicants suspect the respondents of removing or modifying the alleged infringing products, the applicants should report to the judges immediately and request that the court stop such acts in case the evidence is captured without being preserved.
To sum up, evidence preservation is an effective process tool for rights owners. As China attaches more and more importance to IP rights protection at a national level, it is expected that this tool will be widely leveraged. The author expects to see more law firms flexibly utilizing this tool to make due contribution to the IP rights protection in China.
Geng Yunfeng is a patent agent at Sanyou Intellectual Property Agency, and an associate at Wanrui Law Firm
No.35 Jinrong Street, Beijing 100033, China
Tel: +86 10 8809 1921 / 8809 1922
Fax: +86 10 8809 1920