Counterfeiting is a global problem that affects a wide variety of entrepreneurs and innovators – from small businesses to global corporations. Action in China can be an important tool for combating these problems. Head of the firm’s China Intellectual Property team, Paolo Beconcini covers the complex challenges of fighting global counterfeiting for INDICAM (Italian Association for the Protection of Intellectual Property), with focus on the “offline” counterfeiting issues in China. Paolo shares his first-hand experience with raids and enforcement in China over the years and how brands can find the right strategy to enforce their brand in China. Check out the full discussion here.
*It is also worth noting that the deadline for stakeholder comments on future strategies in anticounterfeiting and antipiracy is quickly approaching! The USPTO’s notice can be found here. *
As Paolo notes, in the online context, “in taking down listings, you still have the problem that listings will still pop up (you have not only ecommerce platforms and you have also social media now days that is used for counterfeiting) and all this traffic starts in China.”
Therefore, “…if you want to have an impact on counterfeiters, you must consider enforcing your trademarks in China, against the manufacturers and the organizations that supply counterfeits globally.”
Paolo explains the options. In brief, “China has dual enforcement structure. Civil enforcement, you go to court against an infringer of the trademarks. Or you use administrative enforcement.”
We note that the US Patent and Trademark Office is currently seeking comments on effective strategies to combat counterfeiting and piracy (see here). The deadline has been extended to September 25, 2023, and the Office will be sponsoring a roundtable discussion thereafter.