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Anti-Counterfeiting in China and Russia Dr. Hans Joachim Fuchs, General Manager © 2018 CHINABRAND CONSULTING

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Anti-Counterfeiting

in China and RussiaDr. Hans Joachim Fuchs, General Manager

© 2018 CHINABRAND CONSULTING

Rule 1: Close Down the Factory

© 2018 CHINABRAND CONSULTING 2

© 2018 CHINABRAND CONSULTING

Von: Yuli [mailto:[email protected]]

Gesendet: Freitag, 2. Februar 2018 13:07

An: [email protected]

Betreff: GOOD MORNING GANGNUS ALEXANDER, DO YOU NEED XENON LIGHTS NOW? (philips &

osram)

DEAR GANGNUS ALEXANDER, This is YuLi from China. our business is philips and osram D series product.

if you interesting in this product ,please reply me ,and i will send you more pictures and price list.

thanks

by YuLi

Fake Parts Find Their Way …

3

Litigation, lawsuits

Warnings

TM Opposition /

Patent Nullification

Report of

fake certificates

Customs actions

Public Relations,

Lobbying

Investigations

Raids, Inspections

Laboratory tests

Deletion of

Websites

Destruction

of fakes

Rule 2: Holistic Approach – Create and Maintain Pressure

© 2018 CHINABRAND CONSULTING 4

Rule 3: Use Indirect Measures

▪ individual

▪ narrow focus

▪ direct

▪ linear

▪ occupy terrain

▪ comprehensive focus

▪ indirect

▪ surrounding

© 2018 CHINABRAND CONSULTING 5

1. IPR strategy

2. Prior Art Defense, nullification

3. Security technology

4. Reactive legal, e.g. litigation

5. Proactive legal, e.g. nullification

6. Mediation

7. Buy, licensing

8. Cooperation, e.g. OEM

9. One Step Ahead (Innovation)

10. Fight Fire with Fire

11. Cut supply chain

12. Cut sales channels

13. Customs recordation

14. Informing customers

15. Global enforcement

16. Certificate strategy

17. Bad-quality-strategy, laboratory tests

18. Lobbying

19. PR-Strategy, blogging

20. Strengthen brand, Well-known TM

Proven ACF Strategies

© 2018 CHINABRAND CONSULTING 6

▪ Patent Law (2008) and the Implementing Regulations of the Patent Law (2010) (invention

patent, utility model and design patent)

▪ Copyright Law (2010) and the Implementing Regulations of the Copyright Law (2013)

▪ Trademark Law (2013) and the Implementing Regulations of the Trademark Law (2014)

▪ Regulation on the Customs Protection of Intellectual Property Rights (2010)

▪ Law against Unfair Competition (2017), Art. 6, 9, 17, 21

▪ Criminal Law (2017), Art. 219, 220

▪ Advertising Law (2015)

▪ Product Quality Law (2009)

▪ Law for the Protection of Consumer Rights (2013)

▪ General Provisions of the Civil Law (2017), Art. 7, 8, 123

▪ Tort Liability Law (2009)

▪ Law of the People's Republic of China on Import and Export Commodity Inspection (2013)

▪ Road Traffic Safety Law of the People’s Republic of China (2011)

▪ People's Republic of China Road Transport Regulations

7

Use All Suitable Legal Remedies

© 2018 CHINABRAND CONSULTING

▪ Notice of the State Administration for Industry and Commerce, the Ministry of Transport and

the State Administration of Quality Supervision, Inspection and Quarantine on Further

Strengthening the Behavior of Automobile Sales and the Supervision of the Quality of Auto

Parts

▪ Notice of the Ministry of Finance, the Ministry of Science and Technology, the Ministry of

Industry and Information Technology and the National Development and Reform

Commission on Continuing on the Promotion and Application of New Energy Automobiles

▪ Notice of the State Council on Issuing the Planning for the Development of the Energy-

Saving and New Energy Automobile Industry (2012-2020)

8

Automotive-Related Policies

© 2018 CHINABRAND CONSULTING

▪ Registration of IPR

▪ Contracts with employees,

suppliers, dealers

and logistics partners

▪ Control of incoming goods

▪ Structural measures

▪ Technical protection

measures

▪ Information and communication

technology measures

▪ Separation of processes and

know how

▪ Pre-employment screening

▪ Employee evaluation

▪ Job rotation

▪ ACF reward systems

▪ Security technologies

Short-term

<1 year

Middle-term

1-3 years

Long-term

>3 years

▪ Training of employees,

dealers and customers

▪ Supplier and dealer audit,

due diligence

▪ Fluctuation management

(e.g. bonus programs)

▪ Fake-hotline, webpage

▪ Control of production

▪ Control of distribution

▪ Supply chain management

▪ Public relations

▪ Lobbying

▪ Cooperation with

other companies

▪ Corporate Identity

▪ Working together

with associations

▪ Lobbying with Government

▪ Lobbying in Western countries

▪ ACF-networks and databases

▪ Ombudsman

© 2018 CHINABRAND CONSULTING

Combine ACF Measures by Time

Basic action:

investigation,

raid, lawsuit

against one

target

Warning to other

infringers

Selective information to

dealers and customers

Widespread public

relations campaign

© 2018 CHINABRAND CONSULTING 10

Enforcement Strategy: Massive Attack

Shanghai

Guangzhou

Shenzhen

Ningbo

© 2018 CHINABRAND CONSULTING

Enforcement Strategy: From East to West

11

© 2018 CHINABRAND CONSULTING

Enforcement Strategy: Report Fake Certificates

12

© 2018 CHINABRAND CONSULTING

Enforcement Strategy: Manage Joint Activities

13

Undercover

Investigations

Preservation of

EvidenceLegal Measures

▪ Assignment of detectives

▪ Undercover interviews

▪ Sham business

▪ Observations

▪ Call history & record (PSB)

▪ Loyalty tests of employees

▪ E-mail monitoring (PSB)

▪ Insider know-how

▪ Focused investigations in

milieus and regions

▪ Spot checks

▪ Trade fair monitoring

▪ Management and controlling

of detectives

▪ Procurement of documents

▪ Taking pictures

▪ Procurement of samples

▪ Recording of conversations

▪ Recording of videos

▪ Authentication of evidence

▪ Administrative procedures

(AIC/SAIC)

▪ Administrative raids

(AIC/SAIC)

▪ Police raids (PSB)

▪ Restraining order

▪ Deletion and nullification

proceedings

▪ Litigation

▪ Criminal trial

▪ Cutting off distribution channels

▪ Deletion of counterfeiters’

websites

▪ Cease-and-desist letters for

counterfeiters and distributors

▪ Cost-benefit-analysis

▪ Management of trials

Public Relations

Lobbying

▪ Creation of press articles in

Chinese

▪ Contacts to editors in print and

online media

▪ Placing of articles

▪ Monitoring of publications

▪ Dispatching of publications to

selected target groups

▪ Lobbying with associations,

organizations and public

authorities

Basic Procedure

© 2018 CHINABRAND CONSULTING 14

Counterfeit Auto Parts – Regional Centers

Findings of Counterfeit Auto Parts

Clusters of Counterfeit Auto Parts

Start in Hot Spots

15© 2018 CHINABRAND CONSULTING

Cutline

- Colors: orange = municipality, blue = provincial capital, black = other cities

- Symbols: distribution center metropolitan area

- Arrows: Inland sales Export

- Arrow / line thickness: emphasis on strength of import/export volume

● Harbin

● Lhasa

Xining ●

Hohot ●

● Urumqi Changchun

● Shenyang

Taiyuan ●

● Xi‘an

● Chengdu

Yinchuan

● Kunming

● Nanning Guangzhou, Shenzhen,

Zhongshan, Foshan, Shenzhen,

Qingyuan

Haikou ●

● Xiamen

● Fuzhou

● Hangzhou

● Nanchang● Changsha

● Wuhan

● Guiyang

Jinan

● Lanzhou

● Zhengzhou

● Nanjing, Danyang, Changzhou

Taizhou, Yuhuan

Wenzhou, Rui‘an

● Jinhua, Yiwu

Haikou, Hefei, Beijing,

Hangzhou, Xi‘an,

Fuzhou

Liaoning (Shenyang), Inner

Mongolia, Jiangsu,

Shandong, Guangdong,

Beijing, Shanghai,

Chongqing, Dongguang,

Kunshan, Baotou, Wuhan

(Potentially) Africa, Middle East

No specific countries●

Hefei

Anhui

Beijing, Tianjin,

Shanghai, Shandong

(Linqing), Shanxi,

Henan, Inner Mongolia,

Heilongjiang, Xinjiang,

Guangzhou

● Shijiazhuang, Cangzhou (Hejian), Xingtai

● Linqing

●Beijing, Tianjin, Jiangsu, Fujian,

Sichuan, Zhejiang, Hebei,

Jiangxi

Hebei

Shanghai, Fuzhou, Guilin,

Changsha, Liaoning,

Wuhan

Southeast Asian

countries

Wuhan

●Zhoukou,

Doumen

Southeast Asian countries

Harbin

Consider Export Destinations

© 2018 CHINABRAND CONSULTING 16

Foshan

Aote Lishi

ZJTEXNingbo

Hansen

Ye Guozhou *

ebm-papst

Shanghai

Dealer

Manufacturer

Supply

Alliance

Network

Raid

Lawsuit

Investigation

Beijing

Ximeng

Beijing

Longwei

Shengda

Beijing

Sanding

Zhongtian

Hong Along *

Ye Guozhou *

Business partner

Official dealer

* Legal Representative

Henan

Dingzetong

Ye Yuqin *

Ye Guo zhou is the

background boss

Former unofficial dealer, now official dealer for Henan prov.

Ximeng is

a part of

Dingzetong

?

Changzhou

Xiangming

Zhang

Guoxiang *

GP

Liu Zhengrong? *

Liu

Zhengrong *

Liu

Zhengrong *

Ningbo

Haitian

Ye Mingsen *

Fake labels

Shenzhen

Shenrong

Provides

fan blades

provides fake

fans

Shenzhen

Jiansheng

Dongguan

Zhongju

Shenzhen

Yuetai

TUOPUSI Unknown

label printer

He Shuhua *

PR

Shenzhen

Longgang

Dongguan

Saige

?

Unknown

factory

Sanmen Qilin

(Qida)

provides

unlabelled

fans

Foshan

Guangyi

Provides

fake labels

Shunde

Yusheng

one comapany

Provides

unlabeled fans

Suspect Shanghai

employee Tao Chuan

Helps Ye to sell

fakes

Haitian is suspect to

be the alias of GP

Hansen is

parent of

ZJTEX

TUOPUSI

sells fake

fans to

Saige

Xiangming prints

labels on request

Unknown

factory

Jiansheng sells fake

fans to Longgang

Suspect

companySuspect

company

Shenzhen

Huaqiang

Jeeger

SUNWILL

?

Ebmpapst counterfeiters network

© 2018 CHINABRAND CONSULTING 17

A&B

ElectricChitianYuyao

YuedaYuyao

Songxin

Yuyao

Arty

BaishiteMaydamlux

Xingke

BEGA Counterfeiters Network High Risk Level

Provides die castings

Provides design ideas / proposals / drawings

of the die castings

+

Die casting manufacturer

- LED

- Wall

- Spot

- Garden

- Solar

- Wall

- Bulkhead

- Spot

- Bollard

- Garden

- Garden

- Wall

- In-Ground

- Recessed

- Spot

- LED

- Garden

- Bulkhead

- Landscape

- Bollards

- Classical

- LED

- Wall

- Recessed

- Spot

- In-Ground

- Underwater

- LED

- Solar, wind

- Wall

- Garden

- Lawn

- Bulkhead

- In-Ground

- LED

- Garden

- Wall

- Waterproof

Fuxing

Unknown Die

Casting Manuf.

(possibly incl.

Xingke & Fuxing)

Ducheng Yanyu

- Garden

- Street

- Underground

- Spotlights

- Street

- Wall

- LED

EU Asia

20 mn

USD/pa

Asia

EU

Asia

USA

EU

EU EU

EU

USA EU

USA

Asia

USA

Core counterfeiter

Export Export

destination

HK Exhibitor in

Hong Kong

Exhibitor in

Guangzhou

GZ GZ HK, GZ HK

GZ

HK HK HK

GZ GZ

Die

Casting C

om

pa

ny

Lig

htin

g M

an

ufa

ctu

rer

Le

ge

nd

Core Counterfeiters

(Interdependence: die casting company provides

castings, lighting company provides design drawings)

EU

Jingyuan

- Garden

- Outdoor

- Bulkhead

- Wall

- Ceiling

GZ

Shianna

EU

+ South

America

In-depth investigation

EU

USA

Same

owner

Export volume

per annum

50 mn

USD/pa

30 mn

USD/pa

20 mn

USD/pa

Lighting company

+ South

America

12 mn

USD/pa

18

19

Cross-Border Investigations

© 2018 CHINABRAND CONSULTING

▪ Global network of professional IP

investigators

▪ Trace back the supply chain to identify

the Chinese manufacturer

▪ Procure shipping documents

▪ Get information through skillful

conversation

▪ Law enforcement in third countries

20

▪ 300+ investigators and informers,

familiar with local environment

▪ Nationwide network

▪ Quick response to local market

▪ >150 findings per month

▪ Basis for undercover investigation

and raids

© 2018 CHINABRAND CONSULTING

Carpet Investigation: Market Monitoring via WeChat

Investigation Against Heads of Counterfeiting Networks

© 2018 CHINABRAND CONSULTING 21

Undercover Investigation Inside of Companies

© 2018 CHINABRAND CONSULTING 22

© 2018 CHINABRAND CONSULTING

Consider a PSB-Raid for Prejudgment

23

© 2018 CHINABRAND CONSULTING

Notarization of Evidence

24

© 2018 CHINABRAND CONSULTING

PR in Chinese Print Media

25

© 2018 CHINABRAND CONSULTING

Customs Recordation and Training

26

▪ Russia is still mostly an offline market: trade fair and real market monitoring

▪ But: good indications of fake sources online, e.g. in professional forums

▪ Key to success: professional on-site investigation and evidence preservation

▪ Extremely important: close cooperation with authorities

What is Different in Russia? Monitoring the Real Market

© 2018 CHINABRAND CONSULTING 27

▪ Administrative actions are usually started by police, based on an

application of the right owner

▪ For fakes imported from (mostly) China: customs recordation!

▪ Customs are very efficient and the recordation in the database

TROIS / ТРОИС is highly recommended

▪ For fakes produced and distributed in Russia: IP Court / Arbitration

▪ Administrative prosecution based on anti-unfair competition by the

Federal Antimonopoly Service of Russia

What is Different in Russia? Ways of Enforcement

© 2018 CHINABRAND CONSULTING 28

What is Different in Russia? Customs Recordation Database

© 2018 CHINABRAND CONSULTING 29

Auto parts, auto engine parts, etc.

▪ For fighting infringement, a qualified

survey is very helpful

▪ Best address: VCIOM / ВЦИОМ:

Russian Public Opinion Research

Centrum

▪ Defines the degree of similarity of goods

/ services / trademarks based on public

opinion research and expert interviews

▪ The results are accepted by the IP

courts / regular courts / administrative

authorities for proving the fact of

counterfeiting

▪ The survey is also necessary to get a

Well-Known Trademark status

What is Different in Russia? Opinion Surveys Highly Effective

© 2018 CHINABRAND CONSULTING 30

▪ General awareness of the problem grows, chances to defend own IP are getting better

▪ Government has announced centralized ACF measures for auto parts in 2017

▪ Revenues for fake automotive parts just for passenger cars: 5 – 8 billion rubles / year

▪ Genuine auto parts should be marked with chips, just like it is implemented for products

of natural fur, details are being discussed

What is Different in Russia?

© 2018 CHINABRAND CONSULTING 31

Infringement

Litigation

Warnings

Opposition and

Invalidation

Proceedings

Reporting Fake

Certificates

Customs

ActionsPublic Relations,

Lobbying

Investigations

Raids,

Inspections

Laboratory

Tests

Deleting

Websites /

URLsDestruction

of Fakes

ACF-Strategy

Know-how

Protection Concepts

Company

Databases

Registration

of IPR

Monitoring,

Screening

IP-

Training

IP-

Guide

Protection

Technologies

Document

Processing

IP/ACF-

Databases

Judgment

Databases

Sample

Purchasing

Mediation

© 2018 CHINABRAND CONSULTING

▪ Research & Analysis

▪ Enforcement

▪ Prevention & Protection

One Stop Shop: Holistic Approach

32

Contact

For China:

Dr. Hans Joachim Fuchs

General Manager

Tel. +49 – 89 – 321 212 8016

[email protected]

Contact

© 2018 CHINABRAND CONSULTING 33

For Russia:

Evgeniya Vazhova

Manager

Tel. +49 – 89 – 321 212 8012

[email protected]

CHINABRAND CONSULTING LTD.

Munich Office

Grashofstrasse 3

D-80995 Munich, Germany

Phone: +49 – 89 – 321 212 80

Fax: +49 – 89 – 321 212 80 20

www.chinabrand.de

blog.chinabrand.de