Smart strategies for protecting your IP at exhibitions and fairs

With the development of corporate marketing philosophies, modern transport and media communication, trade fairs have increasingly become an important platform for enterprises to exhibit their wares and strengths, and uncover potential customers. However, crowded trade fairs are also often used by shady merchants to infringe upon others’ intellectual property (IP).

As exhibitions are normally of short duration, it is usually difficult for IP owners to respond appropriately within a short period of time. Additionally, as China currently lacks legislation for the protection of IP at exhibitions, the securing of effective remedies is also difficult. Accordingly, rights holders generally will institute a legal action to safeguard their rights only after the end of an exhibition.

However, based on our experience in handling such cases, IP owners can adopt appropriate tactics during an exhibition on the strength of ample before-the-fact preparation to resolve such “quasi-disputes”. And even if it is ultimately necessary to decide the matter in court, the appropriate strategy during an exhibition can assist the rights holder in prevailing at trial.

Routine preparation

As trade fairs are normally short, infringement at such fairs will occur in a sudden and instantaneous manner. Accordingly, to rapidly determine whether a specific act at a fair infringes its IP, the IP owner must organise and classify its various types of IP in advance.

Additionally, the IP owner must show to the fair organiser that it owns the IP, to halt infringement. Accordingly, in order to respond to such suddenly occurring infringement, the IP owner should prepare in advance the documentation evidencing its title to the relevant IP.

Furthermore, if a certain exhibitor was found by a court to have committed infringement before participating in the fair, and the judgment that was rendered has entered into effect, the IP owner may, on the strength of the judgment, request that the local IP authority of the place where the fair is being held directly impose penalties on the exhibitor.

Accordingly, the IP owner should duly collate in advance the IP cases in which it prevailed and prepare the relevant judgment documentation.

Before the fair

Before the start of the fair, the IP owner should gather information on the fair, including information on the organiser, sponsors and the local IP authority, as well as the persons responsible for IP protection at the fair, and ascertain the remedy channels available for IP protection to be able to quickly and effectively initiate a rights safeguarding procedure once infringement is discovered.

At present, many fair organisers have little awareness of IP protection. If the IP owner, in the course of gathering information, finds that the organiser or sponsors have not provided any channels for remedies against IP infringement, it should inform the organiser of the responsibilities for IP protection that it bears in accordance with the law, procure that the organiser attach importance to IP protection, and propose that clauses on IP protection be added to the exhibition contract between the organiser and exhibitors. If the fair is to continue for at least three days, the IP owner can also recommend to the organiser that an IP complaint organisation be established for the fair.

Before the fair, the IP owner should also train its on-site personnel and formulate an action handbook to respond to infringement occurring during the fair, so as to assist the working personnel in accurately discriminating whether a certain act infringes its IP, and in effectively responding to infringement.

On the spot measures

On the basis of ample preparation, the IP owner can rapidly take the following measures on the spot in respect of infringement discovered at the fair:

• Prompt complaint. If the IP owner discovers infringement on the site of the fair, it should promptly file a complaint with the organisation responsible for protecting IP at the fair, the fair organiser or the local IP authority, and provide the rights safeguarding documentation requested by the above-mentioned organisation or authority; if the above-mentioned organisation or authority refuses to accept the rights safeguarding documentation, the IP owner may serve the same by same-day courier and retain the proof of service;
• Retention of evidence. During the entire process, from discovering the infringement to filing the complaint and requesting that the organiser remove the infringing exhibitor from the fair, the IP owner should pay attention to documenting the infringement and the acts it takes to safeguard its rights through such means as taking photographs, audio recordings, video recordings, etc., and retain the evidence; conditions permitting, the IP owner can also have a notary public notarise the circumstances onsite through the taking of video recordings, etc.

Institution of a legal action

If the fair organiser or local IP authority still fails to remove the infringing exhibitor after the IP owner has taken the above-mentioned onsite measures, the IP owner may still institute a legal action against the infringing exhibitor after the fair. In such a case, the video recordings, audio recordings and photographs retained by the onsite working personnel during the fair may be used as evidence in instituting the legal action.

The IP owner can also attempt to have the fair organiser – particularly if it is a commercial company – named as co-defendant with the infringing exhibitor. In such a case, the evidence retained in respect of the acts by the IP owner to safeguard its rights and the process of safeguarding its rights, such as the audio recordings and video recordings, including proof of service of the rights safeguarding documentation, may be used to evidence the organiser’s wilful joint infringement.

However, it is incumbent on the IP owner to remember that the fair organiser has a certain degree of discretion in assessing whether an exhibitor has committed IP infringement, and accordingly, the legal action instituted against the fair organiser could be rejected.