On July 16, QBPC successfully held the "Member Service Journey-Best Experience Sharing of TWE”. More than 50 representatives from member companies attended the sharing meeting. As announced in April, a criminal case and a civil case nominated by Treasury Wine Estates (TWE) have been selected as 2019-2020 QBPC Annual Top Ten Cases in IP Protection. The cases are “Yantai Longkou Cluster Battle (the 11.27 case of producing and selling counterfeiting wines in Yantai, Shandong” and “Southcorp Brands Pty Limited v. Huai’an Huaxiazhuangyuan Vintage Co., Ltd., Hangzhou Zhengsheng Trade Co., Ltd.”.
Membership Service Committee Chair Mr. Ruiping Hao hosted the meeting and Best Practices/Enforcement Committee Vice Chair Mr. Kelvin Liu gave his professional reviews.
Ms. Louisa Xu, IP Counsel for TWE in North Asia, introduced the two cases and share her experiences in IP protection.
Yantai Longkou Cluster Battle (the 11.27 case of producing and selling counterfeiting wines in Yantai, Shandong
By combing through the timeline of the case, Louisa presented and meticulously explained the complete network diagram of the case, reviewed the beginning and end of the case, and introduced the key difficulties and highlights of the case. In this case, since the discovery of the clues by the right holder in November 2018, the Yantai Public Security Bureau actively cooperated with and attached great importance to the case and immediately set up a task force to conduct a comprehensive investigation around the counterfeit wine supply and distribution network. Through a variety of investigative techniques, collecting a large number of clues, nationwide forensics, digging deep into the source of counterfeiting, truly achieved the "fight the source, end dens, cut the chain, destroy the network", so that the whole case closed, can be called a model for the work of criminal protection of intellectual property rights. This series of cases, due to its significant impact, was successfully selected and ranked first among the top 10 typical cases of food safety improvement in 2019.In January 2020, the Ministry of Public Security gave a general commendation to the "11.27" series of cases involving the manufacture and sale of counterfeit branded wine.
This meeting also specially invited Wang Peng of the Yantai Public Security Bureau's Food, Drug and Environmental Crime Investigation Branch to share, but due to his temporary work assignment, he asked Louisa to share on his behalf. Wang's sharing script summarized the three major tactics relied on to successfully solve this case, namely (a) in-depth exploration, extensive collection of clues. (2) Strengthening the linkage, forming a strike force. (C) city and county as a whole, to improve the ability to attack.
In response to the second point, which involves the part of close cooperation between the rights holder and the public security in this case, the member representatives at the meeting were well aware of this. As mentioned by Kelvin Liu, Best Practices/Enforcement Committee Vice Chair, since August 1, 2017, when the Shandong Provincial Public Security Department's Food, Drug and Environmental Crime Investigation Department signed a memorandum of cooperation with QBPC, mutual communication training and seminars have been held with QBPC member representatives every year to share experiences on various topics in IPR criminal protection. QBPC actively builds a platform for exchange between enterprise right holders and the public security, and constantly promotes the establishment of cooperation mechanisms to combat intellectual property rights infringement.
Best Practices/Enforcement Committee Vice Chair Mr. Kelvin Liu (Qualcomm)
Wang's manuscript also made special mention of "the success of the case can not be separated from the quality assurance committee for us to build such a good communication platform, can not be separated from help and support of the anti-counterfeiting front brothers and comrades ." He said that Yantai Public Security will continue to maintain close contact with QBPC, strengthen cooperation and escort the healthy development of enterprises.
In the discussion session, Louisa also shared her successful experience in cooperating with research companies.
Southcorp Brands Pty Limited v. Huai’an Huaxiazhuangyuan Vintage Co., Ltd., Hangzhou Zhengsheng Trade Co., Ltd.
Comparison between the right holder's trademark "PENFOLDS" and the infringing goods' use of the mark "PENFUNILS"
Louisa gave a detailed account of the case process from four aspects: market monitoring, market investigation, evidence preservation, and enforcement action. In March 2018, the defendant discovered the infringing goods "PENFUNILS" at the Chengdu Sugar Wine Fair, and the defendant was the registrant of the "PENFUNILS" trademark. After investigation, the defendant was the registrant of the trademark "PENFUNILS" and had filed several applications in bad faith for trademarks identical or similar to "PENFOLDS". The infringing trademark "Penfunils" was highly similar to the plaintiff's trademark "PENFOLDS", which was copied or imitated by Penfolds. In addition to applying for registration of the copycat trademark, the defendant also produced and sold infringing wines, and repeatedly used the plaintiff's "PENFOLDS" trademark to mislead consumers in the course of sales. Through the FouYi Wine Group's brand protection strategy, the judicial and administrative authorities were linked through a comprehensive range of remedies, including civil proceedings, trademark administrative proceedings, industrial and commercial law enforcement, and customs seizure, to form a powerful intellectual property protection network. Based on factors such as the public's awareness of the "Penfolds" trademark, the duration of its continuous use and its geographical scope, the court recognized it as an unregistered well-known trademark and granted it protection.
The highlight of the case also lies in the fact that the court took into account the reputation of the plaintiff's trademark, the circumstances of the defendant's infringement and subjective malice, the profit margin of the defendant's sale of the infringing product, as well as the social impact, and fully supported the right holder's request for compensation. At the same time, the success of this case is inseparable from the multi-link and multi-faceted cooperation and coordination between the market supervision department and the customs department in the process of rights protection. The verdict in this case has had the effect of shaking the tiger and clearing the roots of the cottage phenomenon in the wine market, promoting the healthy development of the wine industry.
HongFangLaw Founding Partner Jianfei Su
With regard to the well-known trademark issue involved in this case, HongFangLaw Founding Partner Jianfei Su, shared his understanding and experience with relevant cases. From case selection, concepts related to well-known trademarks, scope of protection and legal approaches, he summarized the advantages of well-known trademarks, including 1. cross-category protection, the higher the reputation, the more categories across; conducive to invalidation and opposition cases; 2. more advantageous in the fight against other counterfeiting cases; 3. higher compensation in trademark infringement cases; 4. effectively prevent others from using the business name, domain name, keyword search and other business logo. On the hotspot issue of providing evidence for the certification of well-known trademarks, the participants also had a heated discussion and exchange. Louisa said that it was a difficult process and took a lot of time, involving the coordination of multiple departments within the company and the collection and arrangement of the early paper evidence.
At the end of the meeting, Hao Ruping thanked Louisa and her legal team for their wonderful sharing. It was a very fruitful afternoon, and all the participants were very satisfied. The QBPC member service journey - best case sharing series of activities will continue to meet with members and friends in the following time, and everyone is welcome to actively participate in the exchange and sharing.