On May 14, the Quality Brands Protection Committee of the China Association of Enterprises with Foreign Investment (QBPC) held a workshop on punitive damages and practical skills in IP litigations, as well as the applications of the Anti-Unfair Competition Law. Partners Steve Zhao and Kevin Han, and senior lawyer Lyu Pei, from Beijing GEN Law Firm, were invited to share model cases and their observations with members. The seminar was chaired by Amanda Dong, Vice Chair of the QBPC Legal Committee, and Jerry Xia, GEN partner, made an opening speech.
The seminar began with an analysis of the development, key and difficult points, model cases, and practical issues of punitive damages in the field of IP protection. As early as 2013, the trademark law established punitive damages for infringements. But for a long time, there had been no case of actually applying punitive damages due to the difficulties to distinguish "intentional" and "malicious", determine "serious circumstances", and determine the base and multiplier of damages. On March 3, the Supreme People's Court issued the Explanations on the Application of Punitive Damages in the Trial of Civil Cases Involving IP Infringement, which formally unified the two concepts of “malicious” and “intentional”, defined serious circumstance and set up the rule on multiplier of damages. In practice, right holders need to overcome the obstacles in obtaining evidence the most to obtain punitive damages. After the promulgation of the above-mentioned judicial interpretation, the right holder could do so by relying on rules dealing with transferring the burden of proof and obstructing the production of evidence, etc., making full use of economic analysis reports and other methods to determine the base of damages, and finally assert a higher multiplier by proving the defendant’s subjective fault and the seriousness of the circumstances. Participants also discussed other circumstances that might be considered as "intentional" and "serious circumstances" other than those prescribed in the interpretation.
The seminar also covered the application of Anti-Unfair Competition Law in protecting IPR. Issues such as observing the principle of good faith and protecting the company's name, trade name, package, trade dress and so on, are on top of members’ minds. In the "Xisi Baozi Diner" case, the Beijing Intellectual Property Court finally determined that, although not used for years, "Xisi Baozi Diner" as a time-honored trade name, its historical goodwill, popularity and potential commercial value still existed. The defendant reopened "Xisi Baozi Diner" in the Xisi area with obvious improper intention, which constituted the counterfeiting of another company's name as stipulated in Article 6 (2) of the Anti-Unfair Competition Law, impairing the right holder's legal rights and interests and disrupting the market order. Participants also discussed the role that Anti-Unfair Competition Law could play in the cyberspace, especially in combating the online criminal and grey industries.
Nearly 80 members participated in the workshop on site or online. The workshop was part of a series of model cases sharing and key legal issues discussions.
Amanda DONG
Jerry XIA
Steven ZHAO
Lyu Pei
Kevin HAN