On December 23, 2016, IP Fridays.com published their podcast interview with French IP attorney Isabelle Bissey Pierre about enforcing IP rights in China. The interview runs about 25 minutes and provides genuine insights into the step-by-step process her law firm practices in an effort to hold trademark counterfeit manufacturers accountable.
The process is essentially broken down into three (3) phases:
Phase I: Locate and Identify Their Clients Counterfeited Products
Phase II: Acquire Counterfeit Samples and Documentation
Phase III: Pursue Legal Action
Here is a synopsis of the steps in each phase
Phase I:
- Attend Guangzhou Fair (Canton Province) twice each year in April
- The fair provides a huge forum for manufacturers to sell small domestic appliances
- Buyers from around the globe shop at this fair for export to their respective countries
- Investigators search the vast fair for counterfeits of their clients’ products in “Plain View”
- Investigators obtain samples of the counterfeit products
- Obtain manufacturer information/documentation (i.e., the location of manufacturer, price, etc.)
Phase II:
- Bring proof of the infringement to the attention of China’s Administration for Industry and Commerce (AIC)
- Coordinate the seizure of the containers with Chinese Customs
Phase III:
- Take counterfeit manufacturers to court
Pierre explains that Chinese judges encourage settlements between the counterfeit manufacturers and the brand. In fact, often a settlement is preferred between the parties. It gives the brand the opportunity to insist on the destruction of the remaining stock, as well as the molds of the duplicated product. According to Pierre, Chinese settlements don’t always ensure the molds are destroyed.
Finally, Pierre said, “Finding the source of the counterfeits is key for us.” She explained that filing lawsuits in multiple countries in pursuit of counterfeits are time-consuming and expensive. Their experience confirms that pursuing the manufacturers and the importers is a much more effective strategy.
Objective: Keep the counterfeits from leaving China.
Isabelle Bissey Pierre is an Attorney and Legal Manager Digital and Intellectual Property at Groupe SEB, Limonest, Phone-Alpes, France, and can be easily contacted through Linkedin.
Link to the interview:
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