Thousands of counterfeit ‘Converse’ branded shoes, as well as piles of shoe bodies, soles and boxes, were seized when an AIC investigation team entered the premises of a large shoe manufacturer in Pu Tian City, Fujian province. Following an assessment by the Pu Tian Market Value Assessment Center (which took account of both existing stock and future supply contracts and valued the business at 105,274 RMB (approx. US$16,350)), the Court granted an injunction against the Defendant and ordered it to pay damages of 200,000 RMB (approx. US$31,000). The case was named one of the top 10 Fujian AIC cases in 2010.

 

For further information, email bluo@iprights.com

China: Put stop to counterfeit 'Converse' shoes

A stop was recently put to the manufacture of canvas shoes bearing the CO★NS trade mark and the manufacturer fined twice the value of the goods. The action took place in Wenzhou City, widely known as Shoes City, the hottest spot for counterfeiting shoe products in China. The determined action of the Zhejiang Wenzhou AIC, and its willingness to find infringement of NIKE’s CONS and ★CONVERSE marks and impose a hefty fine, sets a very valuable precedent. The case was named one of the Top 10 IP cases by China’s Quality Brands Protection Committee* (QBPC) 2010.

*The QBPC is an organisation of multinational companies that aims to work cooperatively with the Chinese government and relevant bodies in relation to IP protection China.

 

China: Seizure of Counterfeit 'VIAGRA'

In October 2009, our informant reported a lead of an underground factory manufacturing counterfeit “VIAGRA”, infringing the IPR of Pfizer. We investigated by both a front approach and surveillance of the manufacturing site. In February 2010, we finally confirmed the current production of counterfeit “VIAGRA”. Stocks of target products were spotted at the manufacturing site. We immediately submitted a complaint to the local police i.e. Public Security Bureau (PSB).

The raid action was taken in the early morning of 26 March 2010 led by a team of 30 plus PSB officers, joined by FDA officers (Food and Drug Administration). They first caught a driver at the doorway, then forced their way into the premises while the doors were locked by other alerted personnel. After an hour, the PSB finally entered the target manufacturing site, broke all the locked doors and searched through the storage areas of packages, the raw materials and semi-finished product and even the workers’ dormitory. The raid resulted in the seizure of:

10 workers including the driver were detained at the site and taken to the local police station. The seized products were delivered to the FDA’s warehouse. The PSB issued a warrant for the arrest of the owner as the principal criminal. We were requested to provide further support in monitoring the raided site and associated entities.

Publication of the case in Chinese was on local online news on 12 May 2010, Guangzhou Daily News:

http://news.163.com/10/0512/17/66GIAF3C00014AEE.html.

For more information, email mailto:contactaman@iprights.com

 

United Kingdom: UK Court of Appeal takes a practical approach in patent litigation

We acted for one of the Defendants in complex patent litigation that raised the question: will a damages award, made by a UK Court in an action for patent infringement, remain enforceable if the patent in question is later held by the EPO to be invalid? (Unilin Beheer BV v Berry Floor NV & Anor)

The Court took a practical approach, placing great emphasis on the "... very, very strong public interest in the finality of litigation", and held that, in these circumstances, the damages award made by the UK Court will remain enforceable.

 

For further information, email dsternfeld@iprights.com

United Arab Emirates: To seize or not to seize... documents

Acting for one of our major clients, we convinced the Dubai Court of Urgent Matters to issue a conservatory measures order in broad language that allowed the Court Bailiff, enforcing the order, to seize documents related to or evidencing infringing activity.

This was a significant departure from previous orders that were specifically restricted to the confiscation of infringing goods only. We argued that the UAE has certain obligations relating to enforcement of IP rights under the TRIPs Agreement and that the TML provisions on conservatory orders should be interpreted in line with such obligations.

For further information, email sholder@iprights.com

United Kingdom: International arbitration
A client in the United States (US) sought advice on alleged breaches of a licence agreement with an arbitration clause providing for arbitration in the United Kingdom.

 

The dispute concerned the design of a military vehicle. We advised on termination of the licence, invoked the arbitration clause and commenced arbitration proceedings under the International Court of Arbitration of the International Chamber of Commerce.

 

The subject matter in dispute required obtaining US government approval for non US citizens to access and review technical defence information, compliance with international secrecy regulations and instructing a military vehicle expert to inspect and report on the design of a military vehicle. We attended several procedural hearings in London and developed an arbitration strategy which dealt with issues of adjournment, confidentiality and disclosure and led to successful settlement of the arbitration on confidential terms.

For more information, email kfong@iprights.com

Philippines: Battling the generic trap
As English is widely used in the Philippines, many well-known marks often appear in advertising and often the mark may be incorrectly used as a descriptor or adjective, thereby diluting the distinctiveness of the valuable trade mark.

 

We developed a strategy for our client, a leading United States health care company, to address conditions that were putting its famous trade mark at risk of becoming generic. The strategy consists of three phases involving, as a first step, the creation of public awareness, to be followed by a market survey and ending with an enforcement program against continued mis-use.

 

During the one year program Rouse will be coordinating closely with the client's local distributor, customers and various agencies.

 

For further information, email lyong@iprights.com

United Arab Emirates: Arabic language considerations in opposition cases in UAE
We handled a successful opposition in the UAE which related to two quite different-looking English language brands. However, the opposition before the UAE Registrar succeeded on the basis of an argument that a likelihood of confusion existed between the two marks, particularly when they were transliterated into Arabic (as is common for English brands used in the Middle East). The marks were nearly identical when used in Arabic and Rouse emphasized the confusion that would occur if the marks in question were transliterated into Arabic and read or used by the average non-English speaking consumer.

This case also highlights the local language considerations that should be taken into account in most Rouse jurisdictions.

For further information, email zsunna@iprights.com

Philippines: We don't stop at conflicting marks
During a standard watch of marks published for opposition in the Philippines, we spotted a client's registered trade mark in the description of services covered by an application. Somehow the specification was allowed to pass even though it incorporated a registered trade mark.

 

We contacted the applicant and arranged for the immediate amendment of the specification of services based on the trade mark rights of our client. Our quick and effective response to the problem saved the client potential legal costs.

 

For further information, email lyong@iprights.com

China: Leading the fight against illegal music

The IFPI discovered that Yahoo! China was providing users with links to unauthorized material of IFPI members’. The users could arrange the downloading and online playing of the whole track directly through the links from the Yahoo! China website.

 

In 2007, 11 IFPI members brought the case to Beijing No.2 Intermediate People’s Court and a favorable judgment was handed down in April 2007. Yahoo! China appealed against this verdict but this was dismissed by the Beijing Higher Peoples Court on 20 December 2007.

 

Rouse and its associated local law firm, Lusheng Law Firm, successfully represented 11 sound recordings companies in a case against Yahoo! China. The case was awarded the top spot in the Beijing Higher People's Court annual top ten Civil Litigation Cases for 2007 and MIP's Global Award for the Asia-Pacific Copyright Case of the Year 2007.

 

The court held Yahoo! China liable for copyright infringement on the grounds that it “ought to know” of the infringement, but had failed to remove the infringing links. It had participated and assisted the third party websites to conduct their infringement. It was ordered to remove the links to all infringing material and pay compensation of RMB 212,600 (approx. US$30,800).

The judgment is a milestone in applying the law to protect the legitimate rights of copyright owners’ against widespread infringement in todays internet environment. This development in China is part of a growing worldwide trend of holding intermediaries liable in cases of this sort. That China has made such a bold and controversial move shows how far it has come in the field of IP protection in the last few years.

For more information, email azhang@iprights.com

United Arab Emirates: Establishing well known mark status in an opposition case in the UAE

We successfully opposed a third party application in the UAE on the basis that a South African retail brand, although not in use or registered in the UAE, was a well known trade mark.

In particular, the opposition division gave weight to the sizeable South African ex-pat community in the UAE, as well as overspill reputation in the UAE through marketing and sports sponsorship under the brand and an extensive portfolio of trade marks in South Africa and elsewhere around the world.

The rejection of the opposed application was appealed by the applicant. In dismissing the appeal, the Dubai Court of First Instance and subsequently the Court of Appeal, ruled that the unregistered South African trade mark was a well-known mark regardless of its lack of use in the UAE. The Courts maintained the order for the refusal of the third party trade mark application in the UAE.
Rouse has subsequently obtained a UAE registration of the trade mark in question for its client.

For further information, email belturk@iprights.com

Philippines: Rationalising criminal actions

Our Manila office was asked to help a US apparel maker on whose behalf a number of criminal actions had been taken over a period of some years. The actions had stalled and the client was left paying hefty storage charges for seized goods.

 

We helped the client put a strategy in place and within eight months all outstanding cases had been resolved and the client released from its storage charge burden.

For more information, email nredfearn@iprights.com

China: Criminal action against counterfeit drug manufacture & distribution ring

We orchestrated an important State Drug Administration action on behalf of a pharmaceutical client. The case involved four provinces of China and the seizure of counterfeit drugs valued at over RMB 500,000 (approx. US$62,500).

 

Three of the offenders were given a 10 year jail sentence, while others received a five - 9 year sentence. The case received the QBPC Best Case Award in 2005.

For more information, email azhang@iprights.com

Hong Kong: Largest ever pharmaceutical raids
In 2003, we carried out a series of raids on behalf of a major pharmaceutical company. The raids, involving more than 30 separate targets across the entire Hong Kong SAR, were the largest ever undertaken in Hong Kong. We subsequently assisted in a criminal prosecution which resulted in a 16 month sentence for the distributor concerned, one of the longest sentences in Hong Kong IP enforcement history.

For more information, email nredfearn@iprights.com

Global: The relationship was over a year old, but they had never met face to face ...

Following investigations carried out by our China and Hong Kong investigations teams, one of our UK investigators made contact with a China-based target selling pirated Microsoft software. The relationship continued for 12 months before our investigator travelled to China for a face to face meeting.

 

A truly trans-national investigation that achieved remarkable results.

For more information, email sadams@iprights.com

Philippines: An eagle-eyed paralegal results in a trade mark being restored to its rightful owner

One of our eagle-eyed paralegals discovered a pending trade mark application that conflicted with one of our client's well-known marks. We promptly reported the discovery to our client and recommended an investigation which led, ultimately, to a satisfactory resolution without the need for litigation.

For more information, email lyong@iprights.com

South East Asia: Enforcement programmes for major US copyright industry association

We assisted one of the major US copyright industry organisations with its enforcement activities in the South East Asia region, undertaking IP investigations and civil and criminal enforcement activity on its behalf, and advising it on IP strategy and the management of IP enforcement budgets. We also provided support for its government lobbying activities throughout the region.

For more information, email nredfearn@iprights.com

China: Reducing the risks involved in buying Chinese companies
We acted for a US pharmaceutical company in relation to its acquisition of a Chinese veterinary company, reviewing its existing IP and the measures in place for its protection and identifying potential risks of IP leakage and infringement. We also made recommendations for increased future protection.

For more information, email jinling@iprights.com

Asia Pacific: Managing an anti-counterfeiting programme for major US entertainment company
We advised on, set up, and now manage a merchandise/anti-counterfeiting programme in the Asia Pacific region for a major US entertainment company. This involves IP investigation and enforcement in multiple jurisdictions, using both Rouse offices and outside Counsel. The programme targets key enforcement problems and provides for a constant level of activity in the client's major markets. As well as its other benefits, it helps maintains official licensee confidence.

For more information, email nredfearn@iprights.com