Paolo Beconcini

Overview of the latest trends and changes to trade secret protection in China in light of the external pressure from the US during the trade wars.

The article deals with the latest amendment to the patent law on partial designs and the strategies to file good quality patents in China.

The writing deals with the new China IPO (CNIPA) regulations to improve patent quality filings and phase out patent filing subsidies.

The article analyzes the proposed changes to the evidence rules in IP infringement litigation in China. The author is preparing a follow up to this article to cover the final adopted text of the SPC interpretation and compare it with the draft to see what has finally changed and why. Stay tuned.

Latest trends in the OEM trademark infringement liability saga in China, especially in light of Covid-19.

The article covers the major amendments of the Chinese patent Law in 2020.

The article analyzes the provisions of the EU-China investment agreement of December 2020 on forced technology transfer.

Overview of the China IP history and the current IP trends.

Recently new provisions of the trademark law have entered into force in China. They aim at reinforcing the prevention of stolen trademark filings (squatting) by empowering the trademark office with new preventive tools and by giving legitimate right holders new and more effective claims to oppose and invalidate hostile filings. Ask the author for more information and a full copy of the article.

The beginning of 2019 brought about two important changes to trademark filing and prosecution proceedings in China. These changes will impact all brand owners.

The Beijing IP Court has exclusive jurisdiction over appeals concerning rejection and invalidation of trademarks in China. To initiate an appeal to this Court, foreign companies must provide a notarized and legalized power of attorney and a legalized certificate of good standing of the foreign company. Until recently, it was an accepted practice to have the Chairperson of the Board sign such documents. But recent cases show that the practice of the Beijing IP Court has changed, and more formal… Show more

The Beijing IP Court has exclusive jurisdiction over appeals concerning rejection and invalidation of trademarks in China. To initiate an appeal to this Court, foreign companies must provide a notarized and legalized power of attorney and a legalized certificate of good standing of the foreign company. Until recently, it was an accepted practice to have the Chairperson of the Board sign such documents. But recent cases show that the practice of the Beijing IP Court has changed, and more formal requirements appear to be necessary to lodge an appeal successfully. Show less

In September 2018, Beijing inaugurated China’s second internet court, or “NetCourt,” just one year after China’s first NetCourt opened in the city of Hangzhou. Two more NetCourts have opened in Beijing and Guangzhou. What are these courts? What matters do they adjudicate? How are they relevant to foreign businesses?

AIPPI Series

Paolo has been cited in this very interesting article.

A recent administrative judgment by the Beijing IP Court has thwarted Apple’s attempts to obtain trademark protection in China for the standby screen of the iWatch. It is possible that Apple will try to appeal this judgment with the Beijing Higher Court. In this article, we will analyse the court decision, and it’s innovative aspects in relation to the definition of distinctiveness. For the full text plz contact the authors.

This is Paolo's second book and the first he authored alone. The title is self explanatory. It is a book for business people and foreign lawyers dealing with China, as well as law students preparing to an international career. Hope you enjoy it!

Paolo Beconcini has been cited in an article of Casey Hall for Footwear News, regarding the current strategic trends of fashion brands to tackle counterfeiting. See the link for the full text.

Paolo Beconcini has been cited in an article of Cassie Lam of WTR featuring the recent decision of the China Supreme People's Court in the trademark grabbing case of Castel Freres Wines.

Paolo Beconcini and Vittorio Franzese share knowledge about the risks for foreign high-tech companies dealing with joint patenting of inventions with Chinese universities and public research institutes. The piece highlights the importance of securing IP rights in China before negotiations and negotiating safe development and co-ownership agreements. If you want to read the article, please ask the authors for a copy!

This article provides a general overview of the current Chinese Trade Secret regulations and their enforcement, as well as a close-up on the critical preventive measures a company should have in place to secure and manage trade secrets, detect early signs of infringement, and deal with evidence collection in civil or criminal litigation. Ask the author for more information and for a copy of the article

Western companies should make bigger efforts to impose their work ethics in this field of business even if this meant lower seizures figures for a period of time. Ask the author for a copy of the article!

Paolo Beconcini co-authored an interesting piece on the legal and strategic relevance of the New Chinese Advertising Law in the brands fight against online counterfeiters. Ask the authors if you want to get the full article!

Paolo Beconcini co-authored with professor Dana Beldiman an article on design patent protection featured in the September edition of the Journal of the Patent and Trademark Office Society. Ask him for more info.

How do you approach IP protection in China? Paolo Beconcini suggests that it’s not unlike a military battle – and that military strategy can play a role in the preparation and refinement of a winning litigation strategy.

Paolo Beconcini has been interviewed by the WSJ about the latest initiative of Taobao to counter fakes. Ask paolo if you want the full text of the article and interview.

On January 27, 2015, China’s State Intellectual Property Office (SIPO) published a draft of its revised rules concerning administrative enforcement of patents, seeking public comments, which were due by March 15, 2015. This column provides an overview of the benefits and drawbacks of administrative enforcement of patents in China, and investigates the extent to which SIPO’s draft rules (Draft Rules) may make administrative enforcement more appealing to foreign patent rights holders.

In this article Dr. Beconcini expounds on design protection from a strategic perspective. It present its topics in a business fashion and aims at providing a concrete help to companies and entrepreneurs dealing with IP matters in China. To have a full copy of the article you can ask the author directly.

Paolo has been cited in an article written by Ms. Torre for La Tribune titled "Alibaba prend ses marques (européennes) en France" regarding protection of IP rights in China. Click the link above to read the article.

Paolo Beconcini has just published a short article on counterfeit of alcohol from China on IP Frontline. Do not hesitate to contact the author or review his blog to read the piece.

Paolo Beconcini has been cited in an article of Mrs. Marina Torre for the renown French economic magazine "La Tribune" on China counterfeiting and trademark protection.

Trademarks are the legal embodiment of brands. They are a company asset and important business vehicle in today’s global market. There is no company today that is not aware of the importance of investing resources to build up brand value and to protect it... (Ask the author if you want a copy of the article)

Paolo Beconcini was interviewed by the Wall Street Journal about the latest dispute between Alibaba and the Chinese government concerning the former's lacking efforts to fight counterfeits sold in its platform.

Paolo Beconcini has been cited in an article of Ms. Rita Fatiguso for the leading Italian economic newspaper Il Sole24Ore on China anti-counterfeiting policies.

In July 2014 The Supreme People’s Court issued a new draft “Interpretation on Several Issues about the Application of the Law to the Trial of Patent Infringement Disputes II” (hereafter referred to also as “2014 Draft Interpretation” or just “Draft”) for public comment.... For more you can ask the author directly!

China is now the world’s largest mobile communication and internet market. Its expanding middle class has an ever-growing appetite for entertainment and content. The television entertainment market in China has also been booming.

Foreign TV production companies are successfully capitalizing on this market opportunity and a number of popular foreign TV formats have been purchased by Chinese satellite broadcasters, such as "China’s Got Talent" (from U.K.) or "Dating in the Dark" (from… Show more

China is now the world’s largest mobile communication and internet market. Its expanding middle class has an ever-growing appetite for entertainment and content. The television entertainment market in China has also been booming.

Foreign TV production companies are successfully capitalizing on this market opportunity and a number of popular foreign TV formats have been purchased by Chinese satellite broadcasters, such as "China’s Got Talent" (from U.K.) or "Dating in the Dark" (from Holland). The BBC has licensed at least five formats in China in the last... (Subscribe or ask me to get the full text). Show less

As e-commerce grows and conquers the world as an efficient, fast and convenient way of trading goods and purchasing products, the risks of trademark infringing activities and, especially, of counterfeiting also increase. Although online platforms, such as eBay or Amazon, certainly have positively changed the lives of many consumers, allowing them to buy their desired items by simply clicking the relevant link on a chosen Web page while comfortably relaxing at home, this development is not… Show more

As e-commerce grows and conquers the world as an efficient, fast and convenient way of trading goods and purchasing products, the risks of trademark infringing activities and, especially, of counterfeiting also increase. Although online platforms, such as eBay or Amazon, certainly have positively changed the lives of many consumers, allowing them to buy their desired items by simply clicking the relevant link on a chosen Web page while comfortably relaxing at home, this development is not lacking drawbacks. E-commerce has indeed led to the exacerbation of worrisome issues, among which the circulation of fake goods appears to stand out. Online counterfeiting could be described as “conduct taking place online where goods are sold under
the mark of another, without the authorization of the brand owner or in violation of the law, and in a way which illegally harms the right holder.” Being producers and sellers of counterfeit products now able to access the markets worldwide through e-commerce platforms, controlling this phenomenon is becoming more and more difficult.
(Please subscribe to IP Litigator for the full article or request it directly to the author) Show less

The growth of e-commerce in China is not unfollowed: in fact, along with it comes a renewed and sophisticated way for counterfeiters to enlarge their businesses.

After conquering Western countries as a quicker, more effective and convenient way of shopping, e-commerce has landed in China where it is undergoing an overwhelming development. Indeed, thanks to the continuing improvements in online credibility, payment services, express delivery, and to the efforts promoted by the 12th… Show more

The growth of e-commerce in China is not unfollowed: in fact, along with it comes a renewed and sophisticated way for counterfeiters to enlarge their businesses.

After conquering Western countries as a quicker, more effective and convenient way of shopping, e-commerce has landed in China where it is undergoing an overwhelming development. Indeed, thanks to the continuing improvements in online credibility, payment services, express delivery, and to the efforts promoted by the 12th Five-Year Plan and aimed at increasing the contribution of e-commerce to the national economy, e-commerce is definitely becoming a key-player in enabling more and more transactions and purchases of goods to happen in the Chinese market. However, the growth of e-commerce is not unfollowed: in fact, along with it comes a renewed and sophisticated way for counterfeiters to enlarge their businesses....(See more by clicking the link above)
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Paolo Beconcini authored an article on proposed changes to Chinese copyright law which published today on Law360.

The Article features a review of recent jurisprudence in China concerning cancellation of bad faith trademark registrations in China.

Paolo Beconcini and CBM have been featured in an article of the China Business Law Journal titled "IP and Antitrust". The full article can be read in the firm website www.cbmlaw.com.

Paolo Beconcini has been cited in an article of the WSJ written by Sarah E. Needleman And Kathy Chu. Here follows some of the the text of the article:

"The proliferation of counterfeit goods on Alibaba Group Holding Ltd.'s e-commerce sites isn't just a problem for consumers. Small businesses and entrepreneurs also have to worry.

Take Wayne Fromm of Kenmore, N.Y., for example. Surfing the Internet two years ago, he found five Chinese manufacturers selling an extendable camera… Show more

Paolo Beconcini has been cited in an article of the WSJ written by Sarah E. Needleman And Kathy Chu. Here follows some of the the text of the article:

"The proliferation of counterfeit goods on Alibaba Group Holding Ltd.'s e-commerce sites isn't just a problem for consumers. Small businesses and entrepreneurs also have to worry.

Take Wayne Fromm of Kenmore, N.Y., for example. Surfing the Internet two years ago, he found five Chinese manufacturers selling an extendable camera stick he invented, complete with photos of his family and friends using it (...).

The problem was, he hadn't licensed any of the sellers to make or sell his patented and trademarked Quik Pod. And he lacked the resources to do much about it, aside from contacting the site where the sellers are hosted, Alibaba.com, a place where global businesses search for suppliers in China, run by Chinese e-commerce giant Alibaba Group. (...).

While a lot of attention has focused on the problem that big brands such as Columbia Sportswear have with counterfeits on Chinese shopping sites like Alibaba.com and its sister site, Taobao.com, it may actually be small businesses and entrepreneurs like Mr. Fromm who are hardest hit, says Joel Shulman, a professor of entrepreneurship at Babson College in Wellesley, Mass.

They lack the financial and technological resources that large companies have to deter or fight offenders, especially those based overseas where U.S. patent laws don't apply. (...)

Alibaba.com sellers who post counterfeit goods or patent-infringing material could have their listings removed and accounts suspended, according to the site. (...)

Paolo Beconcini, a Beijing-based managing partner for Carroll, Burdick & McDonough law firm, said brand owners typically bear responsibility for reporting fakes under Chinese law. But e-commerce platforms also could be held liable if they don't deal with the fakes within a reasonable time period once they are reported, according to Mr. Beconcini. (....) Show less

Brand protection and product liability are two fields of legal practice that most in house counsel and private practitioners would not automatically link together. Brand protection is perceived either as an IP or a corporate security issue, while product liability is often linked to after-sales/warranty or litigation services. The result is that normally in house brand protection teams work in a totally unrelated fashion from the lawyers or after sales managers in charge of product liability… Show more

Brand protection and product liability are two fields of legal practice that most in house counsel and private practitioners would not automatically link together. Brand protection is perceived either as an IP or a corporate security issue, while product liability is often linked to after-sales/warranty or litigation services. The result is that normally in house brand protection teams work in a totally unrelated fashion from the lawyers or after sales managers in charge of product liability within the company.
Although there may be exceptions, the reality is that IP litigation and tort litigation are culturally perceived as different fields of law and have developed specific professional profiles. Such a professional separation of careers is generally acceptable for patent matters and even trademark prosecution work. However, it may not be justifiable anymore when it comes to trademark enforcement and in particular to trademark anti-counterfeiting enforcement. Trademark counterfeits are not only an often aesthetically uglier copy of the genuine branded product diluting brand value, but also a pass off of the original without meeting the quality standards of the latter. The step of going from a substandard counterfeit to a defective and dangerous one is short and the possible human and legal consequences most serious. Preventing dangerous and defective counterfeits to enter the market should be a primary objective of any brand protection strategy.
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Paolo Beconcini has been interviewed by John Church in his article "A Tight Rain" on issues concerning trademark opposition strategies in China and trademark grabbing.

Counterfeiting generally can be defined as the manufacturing of the faithful reproduction of a product and its original markings and packaging, to be then sold in the market as an original one but at a far lower price. Brand protection is both a branch of the law and a corporate structure concerned with the enforcement of trademark rights against counterfeiters. It is a known fact that China is the largest manufacturer and exporter of counterfeits of all sorts in the world. The enforcement of… Show more

Counterfeiting generally can be defined as the manufacturing of the faithful reproduction of a product and its original markings and packaging, to be then sold in the market as an original one but at a far lower price. Brand protection is both a branch of the law and a corporate structure concerned with the enforcement of trademark rights against counterfeiters. It is a known fact that China is the largest manufacturer and exporter of counterfeits of all sorts in the world. The enforcement of trademark rights against counterfeiters is thus an essential feature of any effective and durable brand protection strategy in China.The Chinese Trademark Law and related implementing provisions and administrative regulations enable a trademark holder to obtain the immediate confiscation and destruction of counterfeits through “raids” and seizures by functionally and territorially competent administrative bodies of the State Administration for Industry and Commerce (AIC). While it is indeed very difficult to obtain injunctive orders from civil courts, it is an
accepted practice of the administrative enforcement authorities to conduct raids without advance notice to the infringer upon request of the right holder. This is in fact the most suitable and economic way to bring an infringing act to a stop. However, it is questionable whether this
is the most effective way to deter and reduce permanently the number of counterfeiters of a brand in the long term. On one side, administrative enforcement is a good tool to stop a running act of infringement by raiding the factory, the trader, or a warehouse dealing with the counterfeits, on the other side, it lacks deterring power......... More you will find it in the IP Litigator journal! Show less

The news of Burberry, the world famous UK fashion brand, risking to lose its trademark rights over its signature "Haymarket Check" pattern (hereafter also referred to as the "tartan trademark") in China have reached the western hemisphere at the end of 2013. However, reports of this serious legal matter in Europe and the US have been scant and downplayed by Burberry. The provisional trademark revocation by the Chinese Trademark Office has been blamed to the bad faith of the Chinese "free‐rider"… Show more

The news of Burberry, the world famous UK fashion brand, risking to lose its trademark rights over its signature "Haymarket Check" pattern (hereafter also referred to as the "tartan trademark") in China have reached the western hemisphere at the end of 2013. However, reports of this serious legal matter in Europe and the US have been scant and downplayed by Burberry. The provisional trademark revocation by the Chinese Trademark Office has been blamed to the bad faith of the Chinese "free‐rider" and to the Chinese legal system. Is Burberry just another innocent victim of an unjust legal system or does the English brand bear some responsibilities for not having properly managed its IP portfolio in China? Are other brands immune from the risk of experiencing a similar situation? Show less

Owners have to protect their brands. Nowhere is that more evident than online and in international
marketplaces available on the Web. As an example, Taobao is a Chinese language Web site
for online shopping founded by Alibaba Group in 2003, which has become, by far, the largest e- commerce platform in the world, and thus a very appetizing market for counterfeiters. Similar to E-Bay,
it has more than 60 million visitors daily, sells 48,000 goods each minute, and had a C2C turnover
of… Show more

Owners have to protect their brands. Nowhere is that more evident than online and in international
marketplaces available on the Web. As an example, Taobao is a Chinese language Web site
for online shopping founded by Alibaba Group in 2003, which has become, by far, the largest e- commerce platform in the world, and thus a very appetizing market for counterfeiters. Similar to E-Bay,
it has more than 60 million visitors daily, sells 48,000 goods each minute, and had a C2C turnover
of over US$163 billion in 2012. As a consequence, it has become the object of attack for foreign
brand owners who are fighting an ongoing battle with counterfeiters and who have invested heavily in attempts to curb the illegal transactions of counterfeits on Web sites such as Taobao. Show less

A recurring problem facing insurers is understanding how best to recover losses suffered in the domestic market as a result of policyholders importing into the EU or the US, frequently through a dealer, a defective product manufactured in China which has caused injury or damage in the former countries

In this issue o Megatrend, a leading automotive journal, Paolo Beconcini asks and discuss whether Chinese OEMs are still copying western car design and the role of design patent protection in China.

Paolo Beconcini was cited in a special report prepared by The Economist titled "Patent Protection and Enforcement in the PRC". This report was distributed to the delegates of the EU-China Business Summit of November 21, 2013 including the Chinese prime minister LI Keqiang, The EU Commissioners Mr. Barroso and Van Rompuy.

At the end of August, the Standing Committee of the National People’s Congress adopted the third amendment to the Trademark Law of the People’s Republic of China, which will enter into force on May 1, 2014.What are the implications of the new law and does it address the concerns of trademark holders as to the rampant instances of trademark grabbing by unauthorized Chinese parties?

Waste disposal is a term normally associated with the collection and disposal of residential or industrial waste. Images of city garbage collectors with broken electro domestics dangerously piled up on three-wheeled carts or villagers surrounded by heaps of cheap boards and recycled computer parts are most associated with waste disposal and recycling of industrial products in China.

However, aside from environmental issues, disposal of waste in China can not only be related to acts of… Show more

Waste disposal is a term normally associated with the collection and disposal of residential or industrial waste. Images of city garbage collectors with broken electro domestics dangerously piled up on three-wheeled carts or villagers surrounded by heaps of cheap boards and recycled computer parts are most associated with waste disposal and recycling of industrial products in China.

However, aside from environmental issues, disposal of waste in China can not only be related to acts of trademark counterfeiting, but may also be the source of liability for... Show less

Paolo Beconcini has been interviewed by Oliver Joy of CNN in the latter's article published on CNN.com regarding the Frankfurt Auto Show. The interview concerned the exploration of the reasons to explain why Chinese car makers still copy the design of western cars.

Paolo Beconcini was interviewed and cited by IBA reporter Rebecca Lowe in her article "War on Fakes" published in the August/September 2013 issue of the IBA Global Insight

Taobao is a Chinese language web site for online shopping founded by Alibaba Group in 2003 which has become, by far, the largest e-commerce platform in the world, and thus a very appetizing market for counterfeits.

Similar to eBay, it has than 60 million visitors daily, sells 48,000 goods each minute and has a C2C turnover of over 163 billion USD in 2012. As a consequence, it has become the object of attack for foreign brand owners who are fighting an ongoing battle with counterfeiters… Show more

Taobao is a Chinese language web site for online shopping founded by Alibaba Group in 2003 which has become, by far, the largest e-commerce platform in the world, and thus a very appetizing market for counterfeits.

Similar to eBay, it has than 60 million visitors daily, sells 48,000 goods each minute and has a C2C turnover of over 163 billion USD in 2012. As a consequence, it has become the object of attack for foreign brand owners who are fighting an ongoing battle with counterfeiters and who have invested heavily in attempts to curb the illegal transactions of counterfeits on Taobao.
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Nonostante l’incremento costante delle azioni di tutela amministrativa e penale di marchi e disegni industriali in Cina, il fenomeno della contraffazione continua a crescere e prosperare. Nonostante questo incremento delle attività di enforcement, specialmente mediante raid e sequestri amministrativi di prodotti contraffatti in fabbirche e magazzini in Cina o presso le dogane cinesi, si è quotidianamente testimoni di una crescente frustrazione da parte delle imprese straniere vittime della… Show more

Nonostante l’incremento costante delle azioni di tutela amministrativa e penale di marchi e disegni industriali in Cina, il fenomeno della contraffazione continua a crescere e prosperare. Nonostante questo incremento delle attività di enforcement, specialmente mediante raid e sequestri amministrativi di prodotti contraffatti in fabbirche e magazzini in Cina o presso le dogane cinesi, si è quotidianamente testimoni di una crescente frustrazione da parte delle imprese straniere vittime della contraffazione. Questa frustrazione si manifesta spesso in reazioni diametralmente opposte ma entrambe negative per i titolari di marchi stranieri in Cina. Da un lato vi sono imprese che reagiscono incrementando parossisticamente le attività di enforcement fino ad inseguire ogni forma di violazione, anche minima (“blind enforcement”). Questo ovviamente, a scapito di una sensata amministrazione delle risorse e con il rischio di una ulteriore spiralizzazione verso il basso del sentimento di impotenza e frustrazione. Dall’altro lato vi sono brands che hanno invece deciso di ignorare il problema ed hanno abbandonato ogni forma ragionevole di enforcement. Spesso questo secondo tipo di reazione è la conseguenza finale del senso di impotenza dovuto all’esaurimento derivato dal “blind enforcement”. In entrambi i casi le conseguenze negative per il brand ed i prodotti sono molteplici. Esse sono sia di tipo commerciale (perdita di market-share con ricadute su altri mercati e sulla forza lavoro, diluzione del marchio, indebolimento della catena di distribuzione ecc.) che economico-finanziario (danni economici da pagamenti di garanzie ingiustificate, cause civili per prodoto difettoso, richiami amministrativi ecc). Show less

The Chinese State Counsel is considering amending the Patent, Trademark and Copyright laws in order to introduce punitive damages against deliberate and repeated acts of infringements. Chinese copyright laws to be strengthened. It is hoped this move will deter ever increasing violations of intellectual property rights in China. The amendment is still under revision and enactment is expected in the course of this year.

Every year, 15 March marks Consumer Rights Day in China. Although the name evokes images of a day on which consumer rights are festively celebrated, with government officials making new propositions for the year to come, for foreign manufacturers of consumer products sold in China – including automotive OEMs – Consumer Rights Day may as well be a national witch hunt.

Enforcement alone will not solve counterfeiting issues for most corporates, says Paolo Beconcini who will be discussing this issue at the Luxury Law Summit.

With Chinese counterfeiters responsible for two in three of the products seized by US and UK customs, Paolo Beconcini, who is speaking at the Luxury Law Summit, advises businesses on the best way to protect their goods.

On Feb. 6, 2013, the State Intellectual Property Office of the PR China (SIPO) issued a draft amendment of the 2010 Patent Examination Guidelines seeking public comments and consultation in view of its final adoption. The draft amendment to the guidelines contains a very important change to the system of examination of utility model and design patent applications currently founded on the principle of mere formal examination.

In particular, the amendment to the guidelines, if approved and… Show more

On Feb. 6, 2013, the State Intellectual Property Office of the PR China (SIPO) issued a draft amendment of the 2010 Patent Examination Guidelines seeking public comments and consultation in view of its final adoption. The draft amendment to the guidelines contains a very important change to the system of examination of utility model and design patent applications currently founded on the principle of mere formal examination.

In particular, the amendment to the guidelines, if approved and adopted, will allow examination of obvious novelty of utility... Show less

Dr. Paolo Beconcini was quoted in the article by Bloomberg concerning Volkswagen gear box recall in China. The article examines the recent VW recall and analysis the implications of the new auto recall law in China.

Dr. Paolo Beconcini was quoted in the article Toyota Recalls Lexus in China as Tougher Laws Broaden Liability which was published on January 30, 2013 on Bloomberg.com. The article examines the recent Toyota recall in China, the largest recall since a new manufacturer liability law came into effect this year.

L’Industria automobilistica nel suo complesse deve fronteggiare con piu determinazione la contraffazione di parti di ricambio provenienti dalla Cina

Nell'ottobre 2012, il dipartimento americano sulla sicurezza dei trasporti su gomma (NHTSA), ha pubblicato un’informativa sulla sicurezza dei consumatori, al fine di avvisare i propietari di veicoli e le officine meccaniche sui pericoli derivanti dall’installazione di airbag contraffatti. Il dipartimento NHTSA è venuto a conoscenza di… Show more

L’Industria automobilistica nel suo complesse deve fronteggiare con piu determinazione la contraffazione di parti di ricambio provenienti dalla Cina

Nell'ottobre 2012, il dipartimento americano sulla sicurezza dei trasporti su gomma (NHTSA), ha pubblicato un’informativa sulla sicurezza dei consumatori, al fine di avvisare i propietari di veicoli e le officine meccaniche sui pericoli derivanti dall’installazione di airbag contraffatti. Il dipartimento NHTSA è venuto a conoscenza di problemi dovuti all'espulsione di schegge metalliche durante l'attivazione di questi airbag contraffatti, che apparivano esternamente identici a quelli originali delle migliori marche conosciute.

La Polizia ha condotto delle indagini, che hanno portato al sequestro di circa 1600 airbag contraffatti presso un meccanico del Nord Carolina nell'agosto del 2012: il meccanico comprava falsi airbag da una fabbrica cinese dove questi erano venduti ad un prezzo molto inferiore rispetto ai normali prezzi di mercato.

Nei primi nove mesi del 2012 , l'ufficio americano dell'immigrazione e delle dogane, ha affermato di aver sequestrato intorno ai 2500 airbag contraffatti.


E' la mancanza di volontà della politica nelle province cinesi che sta ostacolando lo sforzo della nazione per garantire una difesa duratura contro i contraffattori

La tutela del Marchio in Cina può essere un'impresa molto frustrante per i sui titolari, vittime dei falsari cinesi e per quei professionisti come gli avvocati d’azienda che cercano di aiutarli fornendo soluzioni efficaci, nonche’per i funzionari dei Governi Europei e Statunitense che da anni incoraggiano e aiutano la Cina a superare e rimuovere gli ostacoli sia politici, economici e giuridici, che di fatto ostacolano quotidianamente l'effettiva applicazione dei diritti di marchio e design.
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In October 2012, the US Department of Transportation’s National Highway Traffic Safety Administration (NHTSA) issued a consumer safety advisory to alert vehicle owners and repair professionals to the dangers of counterfeit airbags.

NHTSA had become aware of problems ranging from non-deployment to expulsion of metal shrapnel during deployment. The airbags look nearly identical to certified original parts, with leading manufacturers’ branding marks.

The move follows police seizing… Show more

In October 2012, the US Department of Transportation’s National Highway Traffic Safety Administration (NHTSA) issued a consumer safety advisory to alert vehicle owners and repair professionals to the dangers of counterfeit airbags.

NHTSA had become aware of problems ranging from non-deployment to expulsion of metal shrapnel during deployment. The airbags look nearly identical to certified original parts, with leading manufacturers’ branding marks.

The move follows police seizing nearly 1,600 counterfeit airbags from a North Carolina mechanic in August 2012: a counterfeit automotive parts ring was buying fake airbags from a plant in China, where the bags were sold for a fraction of the usual cost. In the first nine months of 2012, US Immigration and Customs Enforcement was reported to have seized around 2,500 counterfeit airbags.
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A new law covering automotive recalls in China comes into force on 1 January 2013, as part of the Chinese government’s moves to increase consumer protection. Whilst the regulations increase the obligations for manufacturers in terms of quality control and documentation, the new rules are also likely to create unanticipated disputes within the Chinese market.

In addition to re-defining ‘manufacturers’ and ‘defects’, the new automotive recall law broadens the definition of ‘complainants’… Show more

A new law covering automotive recalls in China comes into force on 1 January 2013, as part of the Chinese government’s moves to increase consumer protection. Whilst the regulations increase the obligations for manufacturers in terms of quality control and documentation, the new rules are also likely to create unanticipated disputes within the Chinese market.

In addition to re-defining ‘manufacturers’ and ‘defects’, the new automotive recall law broadens the definition of ‘complainants’ to include any organisation or individual, not just the owner or driver of an automobile. Under the new law, any organisation or individual will be able to complain about possible defects in automotive products to AQSIQ (State Administration of Quality Supervision, Inspection and Quarantine). There is no requirement for the complainant to prove that he or she is the vehicle owner, as under the current provisions.Risks of abuse are evident, especially in China where the government at all levels tends to interfere in private business. Manufacturers could expect to see a range of complaints from bodies without a genuine liability problem, who are motivated to disrupt competition in the market and protect local brands.
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Under Chinese trademark law, only a registered
trademark enjoys protection and the first person or entity to register it becomes its lawful owner, even if that
trademark has already been used by others in China. The only exception to this rule is that of an unregistered
trademark which, through its intense and prolonged use in China, has acquired a good reputation among the
relevant public or has become famous nationwide at the time of registration of a hostile trademark.
Known… Show more

Under Chinese trademark law, only a registered
trademark enjoys protection and the first person or entity to register it becomes its lawful owner, even if that
trademark has already been used by others in China. The only exception to this rule is that of an unregistered
trademark which, through its intense and prolonged use in China, has acquired a good reputation among the
relevant public or has become famous nationwide at the time of registration of a hostile trademark.
Known as “trademark trolls,” certain Chinese companies or individuals are known to actively follow a strategy
of registering intellectual property rights in China that arguably belong to their foreign competitors. Aware of
the very strict “first to file” principle, they identify, apply and register trademarks belonging competitors who
have forgotten or not yet taken steps to register them.
These “stolen” trademark rights create great uncertainty for the foreign investor doing business in China. More
worryingly, in some cases the IP rights can be enforced against the foreign investor for opportunistic and unfair
motives as was the case this year when a European wine manufacturer, Castel Freres SAS, was ambushed by a
Chinese competitor over a “stolen” trademark with catastrophic consequences. In April 2012, Castel was
ordered to pay more than $5 million in compensation, one of the largest ever sums of damages in an IP
infringement case in China. Show less

In early August 2012, the State Intellectual Property Office
(SIPO) published the “Draft Revisions to the Patent Law of
the People’s Republic of China” to solicit public opinion on
the planned amendments. The draft improves the provisions
of the Patent Law of 2009 by stepping up law enforcement
against patent infringers.
Paolo Beconcini and Mani Chu of CBM International Lawyers
review the major changes which have been proposed and
consider their possible impact on patent… Show more

In early August 2012, the State Intellectual Property Office
(SIPO) published the “Draft Revisions to the Patent Law of
the People’s Republic of China” to solicit public opinion on
the planned amendments. The draft improves the provisions
of the Patent Law of 2009 by stepping up law enforcement
against patent infringers.
Paolo Beconcini and Mani Chu of CBM International Lawyers
review the major changes which have been proposed and
consider their possible impact on patent litigation, especially
on the enforceability of patent rights in China by foreign
rights holders. Show less

For more than a decade, car manufacturers and dealers
in China have been haunted by the draft regulation on the responsibilities for the repair, replacement and return
of domestic use vehicle products, known as the “Three R's Regulation.”

It was first proposed in 2001 and since then, both domestic and foreign automotive manufacturers as well as
dealers have opposed the draft in a rather unanimous front. The regulation is in fact very consumer-friendly and
imposes heavy… Show more

For more than a decade, car manufacturers and dealers
in China have been haunted by the draft regulation on the responsibilities for the repair, replacement and return
of domestic use vehicle products, known as the “Three R's Regulation.”

It was first proposed in 2001 and since then, both domestic and foreign automotive manufacturers as well as
dealers have opposed the draft in a rather unanimous front. The regulation is in fact very consumer-friendly and
imposes heavy obligations of replacement or refund, while such obligations do not exist under the current
regulations.

In January 2012, the latest draft of the regulation was issued for comment and attracted public attention again.
The enactment of the law was supposed to be this spring but so far it has not been issued. Show less

The jurisprudence of the Supreme People’s Court regarding
the determination of design similarity in cases of design
infringement appears to have consolidated a principle of law
enunciated in the SPC’s Annual Report of Intellectual Property
Cases for the Year 2011.

This consolidation is likely to have a positive influence on future civil judgments in design rights, increasing consistency and improving the judicial enforcement. This, in turn, should favor foreign… Show more

The jurisprudence of the Supreme People’s Court regarding
the determination of design similarity in cases of design
infringement appears to have consolidated a principle of law
enunciated in the SPC’s Annual Report of Intellectual Property
Cases for the Year 2011.

This consolidation is likely to have a positive influence on future civil judgments in design rights, increasing consistency and improving the judicial enforcement. This, in turn, should favor foreign manufacturers with solid design patent rights, who will be able to count on a more efficient judicial enforcement in the future.

Show less

La recente giurisprudenza della Corte Suprema Cinese in relazione alla questione della determinazione
della simiglianza tra disegni industriali ha trovato recentemente consolidamento nell’enunciazione di una
serie di principi giuridici da parte della stessa corte nel suo Rapporto Annuale sui casi civili in materia di
prorpietà intellettuale decisi dalla medesima del 2011.
Questo consolidamento dovrebbe avere una ricaduta positiva sulla gestione delle cause civili ed
incrementare… Show more

La recente giurisprudenza della Corte Suprema Cinese in relazione alla questione della determinazione
della simiglianza tra disegni industriali ha trovato recentemente consolidamento nell’enunciazione di una
serie di principi giuridici da parte della stessa corte nel suo Rapporto Annuale sui casi civili in materia di
prorpietà intellettuale decisi dalla medesima del 2011.
Questo consolidamento dovrebbe avere una ricaduta positiva sulla gestione delle cause civili ed
incrementare la consistenza ed uniformità delle decisioni giudiziarie a livello nazionale. Di ritorno, questi
effetti positivi dovrebbero favorire in particolare la tutela dei diritti dei titolari dei brevetti per disegno
industriale in Cina, in particolar modo di quelli stranieri. Show less

Interview with the major Italian Financial and Economic News paper about my work and the services of our law firm in China. Only in Italian language.

Nell’Aprile del 2011 la nuova legge sulla scelta del diritto sostanziale in cause civili dove una o più parti
non è di nazionalità cinese è entrata in vigore. La legge contiene norme sulla scelta di diritto sostanziale in
cause civili per responsabilità da prodotto difettoso che potrebbero presto portare ad un incremento sia del
numero di cause civili per risarcimento danni che del rischio economico ad esse collegato, soprattutto per i
produttori stranieri.

The Chinese are known for their love of fireworks and sadly
many accidents occur when handling them. Whether the
fault lies with the manufacturers in product liability has been
the subject of three cases since the new Chinese Tort Law
was introduced in July 2010. However, these cases have
shed little light on how the new Tort Law will affect foreign
manufacturers in product liability cases.

Since the introduction of the "Statute on the Choice of Substantive Law in Foreign-related Civil Relationships” in China in April 2011, foreign manufacturers are expecting to see a surge of product liability litigation.

A new law gives plaintiffs in product liability cases the opportunity to forum shop, much to the consternation of foreign manufacturers. Paolo Beconcini discusses the implications of this legislation for foreign companies.

FW hosts an online discussion focusing on China’s new product liability laws between Paolo Beconcini at CBM International Lawyers LLP, Eugene Chen at Hogan Lovells International LLP, and Honghuan Liu at Jun He Law.

Der Beitrag soll eine Übersicht über die
Rechtsmittel des Patentinhabers bei Patentverletzungen
in China unter Berücksichtigung der neuesten Rechtslage
und der einschlägigen Rechtspraxis geben. Das chinesische
Patentgesetz in der novellierten Fassung vom 27.12.2008
(nachfolgend PatG) regelt Erfindungspatente, Gebrauchsmuster
und Geschmacksmuster, wobei der Begriff des Patents,
soweit nicht ausdrücklich anderweitig vermerkt, als
Oberbegriff für alle drei Schutzrechte… Show more

Der Beitrag soll eine Übersicht über die
Rechtsmittel des Patentinhabers bei Patentverletzungen
in China unter Berücksichtigung der neuesten Rechtslage
und der einschlägigen Rechtspraxis geben. Das chinesische
Patentgesetz in der novellierten Fassung vom 27.12.2008
(nachfolgend PatG) regelt Erfindungspatente, Gebrauchsmuster
und Geschmacksmuster, wobei der Begriff des Patents,
soweit nicht ausdrücklich anderweitig vermerkt, als
Oberbegriff für alle drei Schutzrechte verwendet wird. Im
Folgenden wird dieser Terminologie gefolgt Show less

Se è vero che una marca spesso risulta l’unico valore a cui un consumatore aspira per comprare accessori e oggetti di moda, tuttavia, la stessa affermazione potrebbe non rivelarsi corretta per quanto riguarda l’acquisto di prodotti farmaceutici, cosmetici, elettrodomestici high-tech per la casa o parti di ricambio per una automobile. Per i prodotti farmaceutici come per i prodotti di lusso di tipo industriale, vi sono ulteriori fattori da tenere in considerazione oltre alla diluizione del… Show more

Se è vero che una marca spesso risulta l’unico valore a cui un consumatore aspira per comprare accessori e oggetti di moda, tuttavia, la stessa affermazione potrebbe non rivelarsi corretta per quanto riguarda l’acquisto di prodotti farmaceutici, cosmetici, elettrodomestici high-tech per la casa o parti di ricambio per una automobile. Per i prodotti farmaceutici come per i prodotti di lusso di tipo industriale, vi sono ulteriori fattori da tenere in considerazione oltre alla diluizione del marchio e l’erosione del design esterno dei prodotti

Questo è certamente il caso delle contraffazioni in grado di minacciare la sicurezza delle persone e della proprietà. Parti di ricambio di veicoli o di elettrodomestici, costruiti con materiali di bassa qualità rischiano di entrare nei canali di distribuzione autorizzati portando gravi minacce alla sicurezza dei consumatori. Per affrontare queste ed altre minacce, i titolari dei marchi devono riconoscerne la loro natura ed elaborare una strategia appropriata di anti-contraffazione e di protezione del marchio, nonchè della reputazione dei prodotti ad esso collegati.

Questo articolo approfondisce uno strumento giuridico di enforcement esecutivo poco conosciuto che può però risultare particolarmente efficace nei casi in cui la qualità del prodotto e la sicurezza del consumatore siano messi in pericolo dai prodotti contraffatti, a prescindere dal fatto che costituiscano una violazione del marchio o di altri diritti di proprietà intellettuale. In particolare, segnalo elementi utili per i proprietari di marchi che producono prodotti in cui la sicurezza del consumatore ha una primaria importanza ed è anche parte integrante del valore commerciale dello stesso prodotto. Show less

AQSIQ, a new anti-counterfeiting star in China?

Going down the product liability route may be a better route for business owners faced with counterfeiting issues. Paolo Beconcini discusses the role of AQSIQ.

While a brand may be the only value a consumer is after when buying fashion or accessories, this may not be the same when purchasing pharmaceuticals, cosmetic products, a high-tech home appliance or spare parts for a car. For pharmaceuticals as well as for luxury industrial… Show more

AQSIQ, a new anti-counterfeiting star in China?

Going down the product liability route may be a better route for business owners faced with counterfeiting issues. Paolo Beconcini discusses the role of AQSIQ.

While a brand may be the only value a consumer is after when buying fashion or accessories, this may not be the same when purchasing pharmaceuticals, cosmetic products, a high-tech home appliance or spare parts for a car. For pharmaceuticals as well as for luxury industrial products safety related factors aside from the brand dilution and the erosion of the product outer design may come into consideration. This is certainly the case of counterfeits which may endanger the safety of people and property. Spare parts of vehicles, appliances etc made from low quality materials risk making their way into authorized distribution channels and posing serious safety threats. To prevent and defend from these threats, it is important for the brand owner to recognize their nature and to devise the appropriate anti-counterfeiting/brand protection strategy. Show less

Paolo was interviewed and featured in this reportage from Rita Fatiguso of Il Sole 24 Ore regarding counterfeiting of spare parts in China. Enjoy!