IP pro bono? If it feels good, do it

By Nikita Xue, HFG
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Two years ago, a man named Mr Li was engaged in organising a small underground workshop and manufacturing counterfeit lubricants, based in Guangdong province.

Later, we had a chance to talk to Mr Li and asked him to stop his business, which was damaging other’s intellectual property (IP) rights.

Nikita Xue Partner HFG Guangzhou & Shanghai
Nikita Xue
Partner
HFG
Guangzhou & Shanghai

He explained that he had no choice, and just wanted to make a living for his family since he was not rich enough to establish his own business. His lack of legal knowledge meant he knew nothing about the legal risk.

Later Mr Li contacted us and said he had decided to stop his counterfeiting business, even showing us his plan to set up his own brand.

He also sought some legal advice from us. After evaluating his situation, we decided to help him acquire his own trademark by filing for trademark registration in China, without any charge.

We even waived the official fee, since it was pivotal for Mr Li to quit his previous activity and establish correct consciousness about IP, and more importantly, to respect other’s intellectual property rights.

IP protection

Let’s change tack and talk about IP protection. After considering legal action that can be taken via administrative enforcement, a civil lawsuit, criminal prosecution and so on, and apart from these most common practices to crack down on counterfeiters, there is another way to prevent existing and potential infringers and counterfeiters from further damage to others’ brands – pro bono.

The Latin phrase pro bono publico means “for the public good”, and is commonly known as providing any service, without compensation, to those incapable of implementing or affording financially to pay for such services.

People might hear about pro bono, or legal aid, in the areas of criminal and family cases, but probably seldom to do with IP protection.

Why pro bono?

Some might ask why we should help those people who have damaged other’s brands, since they did not care or respect another’s intellectual property.

They would argue that there is no other avenue but to launch legal action against these people.

However, things may not always be so simple. Fighting against IP infringers and counterfeiters is the main way to protect the brands, but it is not the only way, and we can also seek balance through the channel of pro bono for the following reasons:

  • even the infringer or counterfeiter is part of the community, and should not be summarily dismissed from it. We should be willing to help them have their own intellectual property as long as they stop their illegal activities;
  • to help small-sized companies and individuals acquire their own IP might reduce the risk of them infringing on others’ prior intellectual property rights; and
  • educating and promoting the importance of IP rights can help them to be more respectful of others’ brands and creative enough to establish their own brands.

Defining the service

So how do we define what kind of pro bono services to provide with respect to IP protection?

Some lawyers may believe that when they provide any kind of services without charge, it is pro bono, and some spend a certain amount of hours per month, or per year, helping others by providing their professional legal advice with waived charges, or perhaps even without billing.

Furthermore, people working to promote legal knowledge to the public – for example by promoting IP rights to target audiences like small- and medium-sized companies and individuals through forums or seminars – also provide pro bono services. No matter how you do it, the idea can be shortened into one term: “payless help”.

Versions differ

However, it was realised – after a survey carried out by an international organisation concerned with intellectual property in February and March this year in more than 20 countries throughout the world – that the programmes for implementing pro bono work can often differ quite considerably.

For instance, in China, pro bono programmes are not yet established – especially with regard to IP rights – and most lawyers have spent less time doing pro bono-related work in their careers.

The reason may be due to the limited promotion of pro bono programmes, which in the case of IP means either people in need have limited access to trademark and patent lawyers or law firms to help them, or the lawyers have limited awareness about those in need.

Forbidden fruit?

In some European countries, the law does not allow lawyers to provide their legal services for free, although this does not mean they are forbidden from doing pro bono services. Other countries do not have established pro bono programmes in place and do not understand fully how to promote pro bono work.

The good news is that, in recent years, there are more and more lawyers expressing an interest in, and willing to provide, pro bono services.

A growth industry

More non-profit organisations have also sprung up, devoted to promoting pro bono programmes to the public through establishing special websites, inviting influential people to give speeches on the importance of pro bono work, and inspiring capable people to help those in need.

In some countries, local governments are also paying more attention to establishing comprehensive legal aid regulations that encourage legal professionals to help others.

“It makes me feel good” is the most popular answer from people who have provided pro bono services.

Nikita Xue is a partner at HFG, and a member of the Pro Bono Committee of the International Trademark Association (INTA)

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