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Manage your Intellectual Property in Mainland China, HongKong, Macao and Taiwan

F&B – Counterfeits

SME background

Nationality: Italian

Industry: F&B

Status in China: no presence

Case

An Italian tourist stumbled upon a large flagship store of his favourite Italian brand X when visiting Beijing. He took many pictures and once back in Italy, he congratulated a friend of his who was an employee of the company X. That’s how X learned about the making of a flagship store in the center of Beijing.

The company contacted the Helpdesk which offered strategic advice.

No trade mark registered by X and China is a first-to-file system, so trade mark enforcement was discarded.

Counterfeits of the packaging and logo were identical. The Helpdesk advised for the company to register the copyrights for both the packaging and logo, although copyright registration is not mandatory, the copyright certificate will be extremely helpful by authorities to proceed with enforcement. We also advised for  a notary public to notarise the stores in order to get the evidence of infringement, which is necessary to lodge a litigation case based on copyright infringement.

The Helpdesk also advised to have a wider approach and consider anti-unfair competition and food safety issues for this matter –reaching out legal counsel specialized in these areas and also referring to the EU SME Centre.

Lessons learned

Proceeding with trade mark registration in China should be considered by all companies, even when they do not operate in there, given the proactivity of counterfeiters and the first-to-file system.

If a company finds an infringement of their copyrights, registration is needed in order to proceed with enforcement.

To lodge a litigation, Courts in China need for the evidence of infringement to be notarised.

It is interesting to approach an infringement from other angles besides IP (food & safety regulations, anti-unfair competition, etc.)