In many IP infringement cases, the right owners often find that the apparent infringer may not be the actual controller behind the infringement but merely a tool used for evading legal sanctions. When pursuing the actual infringer, right owners often find it difficult to obtain effective evidence, and even with some evidence, it remains difficult to identify the actual infringer in certain cases.
However, if the right owner resorts to administrative complaints or litigation to crack down on the apparent infringer, based only on the evidence at hand, the actual infringer is likely to remain unpunished. Moreover, the actual infringer can easily continue its infringement by setting up or authorising another infringement subject as a tool, which often leaves right owners discouraged or disillusioned with the IP protection system. How can we effectively hold the actual infringer liable and deter its subsequent infringement?
In fact, in most IP infringement cases, the right owner, as the victim, often knows or can easily deduce the identity of the actual infringer, and in many cases, they have some clues to begin with. However, the “painfully obvious” information or clues to the right owners too often cannot be deemed valid from a legal point of view. In other words, it is difficult to further obtain evidence based on these clues.
Therefore, in order to hold the actual infringer jointly and severally liable and punish the real wrongdoers, it is necessary to sort out and organise the “information” and “clues”, and obtain clearer infringement “portraits” through further investigation. Of course, information and clues are not equal to evidence. After analysis of such information and clues, the right owners should start the process of evidence collection as soon as feasible.
In the process of handling such cases, we find that no matter how well the infringer plans or disguises, there will always be flaws in the process of infringement. Through preliminary investigation as well as information collection, collation and analysis, we can generally find a point of breakthrough in evidence collection. Although each case is different, the common analysis angle for correlative evidence collection against joint infringers can still be helpful.
Shared business premises. The infringer often registers different companies as the infringement subjects, and arranges different functions for them to facilitate the division of work. For example, Company A acts as a trademark applicant to register identical/similar trademarks that are related to the category of products/services registered by the right owner, so as to defend against the alleged infringement; Company B is responsible for producing infringing products and Company C is responsible for selling them.
However, the very purpose of trademark infringement is to ride on the reputation of the trademark of the right owner, so the infringer can obtain more illegal benefits with fewer costs, which makes it unlikely that infringers will spend lavishly to carry out the production and sales of infringing products. Therefore, we often find that several companies related to joint infringement share the same address, or that the infringing products are produced in the same factory or stacked in the same warehouse.
Through analysis on the registration and business activity information of the relevant infringement subjects, we can often obtain correlative evidence of the business premises of relevant infringers. If supplemented by on-the-spot investigation, we can obtain relatively reliable evidence of shared business premises.
Shared personnel in business activities. In order to save infringement costs, in addition to sharing business premises, it is often impracticable for the infringer to achieve the independence of personnel of different companies in terms of human resources. In affiliated companies set up by joint infringers, shareholders, legal representatives and managers are often the same.
Besides, in the process of implementing the infringement, it is difficult for the personnel of different infringement subjects to act according to the original role or plan in the actual division of work, resulting in situations where the personnel of Company A would work for Company B. Once the above-mentioned information is secured in an appropriate manner, it can be used as evidence for the shared personnel of subjects with joint and several infringement liability in joint infringement.
Shared company name (or brand name) and information. The infringement subjects under the control of the same infringer often borrow company names (or brand names) from each other, so as to facilitate the relevant production and operating activities. For example, Company A applies for the brand name of Company B as a trademark; or Company A uses the name of Company B when applying for relevant qualifications, certification and licences, or even records the two companies as the same subject in the document.
In some joint infringement cases, the phone numbers of different infringement subjects are also the same. In addition, in external publicity and commercial promotion, in order to highlight its own strength, the infringer will also aggregate different infringement subjects for publicity. Although the shared brand name itself is difficult to be directly used as evidence for infringement, it can often play an important supporting role and become a powerful link to the evidence chain when proceeding with the case.
In addition to the above-mentioned correlative evidence that can be used for identification of joint infringement, the right owners can also collect evidence at an appropriate time, and if all goes well, the evidence of the infringer’s confession may also be obtained.
For example, when the infringer promotes their products to the public, some will explicitly acknowledge that several infringing subjects are actually “one and the same”. If such evidence can be secured, it will play a significant supporting role in identifying the joint and several infringement liability of different infringement subjects.
It should be noted that evidence collection in infringement cases is inherently an uncertain process. Only after sufficient planning and attempts can a plan be formed on the basis of evidence collected, which should maximise the effect of all existing evidence in the pursuit of holding the actual infringer liable.
Frank Liu is a partner at Shanghai Pacific Legal
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