On September 24, Luxury Goods Industry Working Group (IWG) and Sports Fashion & Lifestyle IWG of Quality Brands Protection Committee of China Association of Enterprises with Foreign Investment (QBPC) successfully organized a joint Best Practice Workshop in Shanghai.
Several experts were invited to share their experiences and model cases on IP issues focused by two IWGs. Miller Wang, Luxury Goods IWG Coordinator and Julie Yu, Sports, Fashion & Lifestyle IWG Coordinator, moderated the two sessions of the meeting respectively. 32 representatives from 24 member companies onsite and 41 representatives from 29 member companies online attended the meeting.
At the beginning of the first half, Peter Chong and Ruby Liao from Louis Vuitton Malletier first introduced their long history of combating counterfeiting. Then they analyzed several cases involving trademark dilution to explain in depth the issues of counterfeits or imitations (similarity in appearance) and the use of well-known trademarks in goods or services of different categories. They also talked about what brand owners could learn from the cases in terms of evidence proof, pre-litigation property preservation and well-known trademark protection.
Next, Jianming Zhou from Louis Vuitton Malletier focused on investigations from online to offline and introduced anti-counterfeiting issues in cross-border cases. He stated that the key to success in this type of case lay in the intercommunication and joint investigation between the overseas and domestic teams of the right holder, the smooth exchange with the law enforcement authorities and multiple discussions on important cross-border targets.
Then Amily Chen from Burberry briefed on the injunction case of BURBERRY V. BANEBERRY, which was selected as one of QBPC 2020-2021 top ten non-criminal cases. The injunction was the first one to protect a well-known trademark on identical goods, avoiding irreparable damage to the right holder. The case was also highlighted by the full collection of evidence that could prove the infringing party's malicious copying or imitation of a well-known trademark and unfair competitions like commercial confusion and false advertising, which was typical and exemplary for this industry.
Niklas Fu of Richemont reviewed the current development of e-commerce in China. As e-commerce in live streaming was the current direction of transformation in the online market, the trend of the counterfeit selling had also shifted. The sellers of counterfeit goods leveraged content produced by web celebrities to attract potential buyers. In the cases of counterfeit watch, from monitoring to tracing, and investigation to fighting, he gave an account of successful strategies and practical experience for other brand rights holders.
Su Xiaojia, Xia Wei and Simon Cui from Anta brought the last topic of the first half with a fascinating sharing on private domain traffic in criminal cases. From the discovery of the target to the criminal investigation, private domain traffic cases had the characteristics of hidden sales channels and unclear sales data compared to traditional online cases. And corresponding online detection and evidence locking strategies had been explored through practice.
At the beginning of the second session, Jason Yao, Asia Pacific representative of the US Golf Manufacturers Anti-Counterfeiting Group, discussed the topic of Comprehensive Approach for Fighting Trademark Squatting by Integrating Administrative and Civil Procedures. He analyzed the characteristics and situation of the copycat phenomenon, the basic strategies to effectively deal with copycat, the difficulties in civil litigation against copycat, and how to leverage both administrative and civil procedures.
At Nike’s invitation, Xu Jian shared the latest developments in intellectual property protection in the US fashion industry, in respect of design patent, copyright and trade dress. With specific cases, Xu elaborated on corresponding protection strategies. The design patent protection was short-term but effective to protect part or the whole appearance of a product. The copyright could protect separable partial design elements. Classical design elements and common elements of a product line could be protected as trade dress. Multiple protection methods could be applied in combination.
Li Xiaohong, the lawyer representing Nike, briefly analyzed how to protect and defend unique trade dress under trademark in the context of the CHUCK case. With analysis of judicial practice in relevant cases, Li suggested that companies should register their distinctive trade dress in the form of a graphic trademark. To prevent others from using the same or similar trade dress in trademark infringement cases, the brand owners could use the graphic trademark consistent with the trade dress. Through long-term publicity and use, they could make the public identify the source of production through the trade dress, which would help protect particular trade dress.
Finally, James Luo, the representative of CAPRI HOLDINGS, shared his insights on a series of cutting-edge IP issues and hot topics, mainly on the legal responsibilities of market management units, online trademark infringement litigation cases, recognition of well-known trademarks on identical or similar goods, regulatory responsibilities for click farming, civil liabilities for click farming, the latest intellectual property protection policy of the Supreme Court, criminal protection of trademark rights, the latest judicial protection policy of the Supreme Court, the latest amendments to the criminal protection of trademark rights, criminal private prosecution and evidence requirements, criminal reconciliation and probation-related mechanisms and practices, etc.
As the event ended successfully, the IWG members expressed their appreciation for the excellent speeches and the speakers' dedication in sharing their views. The IWG activities provide a platform for IWG members to analyze common challenges in the industry, identify key points of problems, share best practices, seek solutions, provide feedback from the industry's voice and form a joint force to protect the rights and interests of rights holders.