An article wrote for NINGBO GUIDE magazine, and published on the Vol 1, Issue 4, Sep. 2007.

By Sun Jin(Marlow), Chinese attorney at Law, Zhejaing Xinmu Law Firm, republishing the article pelase indicate the resource of this article.

In one of our previous articles we explained the concept of Intellectual Property (IP), IP laws in China, and protection of IP in China. Lawsuits are a very important protection method and a final remedy for the protection of IP, especially when all other remedies are exhausted and lead to unsatisfactory results.

I. Sufficient and legal evidence is the key element to win an IP lawsuit

In fact, sufficient and legal evidence are the key element to win in all civil lawsuits in China. An IP lawsuit is a type of civil lawsuit case. An IP tort lawsuit is a lawsuit raised by a property owner against offender and his tort actions over owners' property. The purpose of an IP tort lawsuit is to stop the offending actions so as to protect property owners' legal civil rights. Thus, the owners shall be under obligation to offer related evidence to certify that the tort action exists, as well as other obligations. So in an IP tort lawsuit, evidence is in the core position, and its sufficiency and veracity will form the basis for the court's decision directly, as well as the damage calculation.

Clause 1, article 64 of the PRC Civil Procedure Law says, it is the duty of a party to an action to provide evidence in support of his claims. This is a basic principle of assignment of obligation of raising evidence, that is, principle of ”°those who raise claims shall offer related evidence”±. Obligation of offering evidence means the party of a civil lawsuit must offer related evidence so as to certify his claims/points, and if he fails to do so, he may have to face a detrimental result against his claims/points.

II. Content of evidence in an IP lawsuit

In our previous article (Ningbo Guide issue 3, August 2007) we explained that property owners' choices to protect their property shall include litigation, arbitration, customs protection, and administrative disposal. So, remedies are not limited to lawsuits only, and we are going to include all above four remedies into this article. In fact, no matter what the means of property owners choose to act against offender and his tort actions over owners' property, they always must offer the related governing organizations who are in charge of the case with the evidence, which shall include evidence of the validity of IP, evidence that the IP has been infringed (tort evidence), and of compensations for infractions.

1. Evidence of IP (establishing its validity)

Related party shall certify the following:

1). He is the owner of the IP or he is an interested party to the IP, so he is entitled to be the plaintiff or claimant.

2). The IP exists legally, is valid, and is available for use in China.

For example, for trademark cases, the evidence must certify who is the owner of the trademark, and what type of trademark it is, whether or not it is a ”°famous brand”±, so that the protection scope of the trademark will be certain. Specifically, it shall include a) trademark's registration certificate and related period extension certificate. If it's an internationally registered mark, then include the related certificate of its validity in China from the National Trademark Bureau. b) Certificate of Famous Brand, certifying that the brand is awarded by some organization as ”°famous brand”± in China.

For patent cases, the purpose of delivering the evidence will be certification of ownership, and the situation and validity period of the patent. This will make the protection scope of the patent certain. Specifically, it shall include: a) Patent certificate and related files; b) receipt of the latest year's annual fee; c) when the sole-permitted user of the patent is in position of plaintiff/claimant together with the patent owner, the related contract authorizing the sole-permitted user will be needed.

2. Tort evidence

The plaintiff/claimant shall offer evidence to certify that the defendant is going to do the action being charged as tort. For example, the defendant's advertisement materials, product samples, commercial invoices, etc.

For example, for trademark cases, purpose of such evidence is to confirm what type of trademark tort the defendant had done, and scope of tort, it can include: defendant's products being charged as tort products, or related materials such as commercial invoices, sales contracts, videos, and so on. When the plaintiff/claimant is not able to get the original offending products, then the related commercial invoices and sales contracts can also be used as evidence.

For patent cases, the purpose of such evidence is to confirm what type of patent infringement the defendant did, and the scope of the claim. It can include: a) offending products manufactured by the defendant, this is direct evidence; b) if plaintiff/claimant is not able to get the original offending products, he can offer some indirect evidence, such as the defendant's advertisements or sales confirmation with a third party. Later, the plaintiff/claimant can try to get the direct evidence of the original offending products via some other ways; c) evidence certifying that the seller and/or users of products know that the products infringe IP. d) a comparison made by plaintiff/claimant between products being charged as tort products and patent rights documents, explaining the products' technical character fall into the scope of protection of the original patent, thus it's a tort product.

3. Evidence of compensations of infractions

In an IP tort lawsuit, when plaintiff/claimant raises claims against a defendant over compensation, then he must offer evidence to his method of calculating the sum of compensation.

In the several types of IP tort cases, we always have more than one method to calculate the damages, when all methods are available; we shall choose the one that can bring plaintiff/claimant the largest advantage. To choose a method, the plaintiff/claimant must deliver related evidence that can match his choice.

For example, for trademark cases, we have three methods: a) benefits which the offender had gained, this can be product of quantity of sold tortious merchandise and profit of a unit; when the profit of a tort unit is un-known, it can be the profit of a legal and real unit; b) loss of Plaintiff/claimant, which includes Plaintiff/claimant's reasoning expenses to stop the tort, including expenses of investigation and retaining lawyer/s. The loss can be product of Plaintiff/claimant's less-sold quantity of merchandise or quantity of sold tort merchandise and profit of a unit; c) or, the court can award a compensation sum of less than £¤500,000 according to the actual situation of tort, when court will take following elements into consideration: ponderance, period and result of tort; reputation of the mark; permission charge rate when under legal authorizations; reasoning expenses to stop the tort, and so on.

4. Detailed information about the defendant

Plaintiff/claimant shall collect detailed information about the defendant including name, address, enterprise type, registered capital, number of employees, business scope and so on, so that he can make related tactic of seeking compensation according to it and find the right governing organization who is in charge it.

III. Methods of evidence collection

1. Make an investigation and collect evidence by Plaintiff/claimant himself, or entrust a lawyer.

IP lawyers are specialized in it. This method is the most important and common one.

2. Make an application to notary public offices to save the evidence

One legal business scope of Chinese notary public offices is saving litigation evidence. So evidence under notarization will be regarded as real facts by the courts, when no counter evidence is able to dispute it. And the legal effectiveness of evidence saved by public notary offices is the same as that saved by courts. So, this is a very effective measure.

3. Apply to related court to save the evidence

This method is supported by several Official Legal Explanation documents of the PRC Supreme Court. But, if the party who applies for this type of saving does not raise the related litigation afterwards, then he will have to make compensation to the defendant whose property had been kept as saved evidence and his loss thus caused.

4. Apply to related court to investigate and collect the evidence

Article 64 of PRC Civil Procedure Law says: If, for objective reasons, a party and/or his agent are unable to collect the evidence by themselves, or if the court considers the evidence necessary for the trial of the case, the court shall investigate and collect it. The people's court shall, in accordance with the procedure prescribed by the law, examine and verify evidence comprehensively and objectively.

So, the court can investigate and collect related evidence both in initiative (in some very few situations) and upon the related party's application (more common). And the related party shall keep the following in mind: a) the evidence under application must in the legal scope; b) the application must in the time limitation for delivery of evidence.

5. Apply related municipal administrative bureaus to investigate and collect the evidence

Some government regulations have related articles about the investigation and collection of patent evidence by related municipal administrative bureaus.

IV. Some reminders during collection of IP evidence

1. The evidence must be legal, and must be collected legally

Illegality of evidence shall include following: a) collector or provider is illegal; b) procedures of collecting are illegal, like collecting the sample by force, threat, fraud, etc. c) content of evidence is illegal, that is, the evidence can not certifying any fact in the case, and so on.

2. Connection and conformability between evidence

First, evidence must have some objective connection between each other, and can be proof to each other, but not single evidence which will not be strong enough. Second, the evidence must match the subject to be certified. If subjects to be certified are dispersed, it will weaken the certifying effectiveness of evidence. And when discrepancy exists among the evidence, the court will reject it.

3. Pay attention to objectivity of evidence

No matter the related party will collect the evidence in which method; objectivity is always a pre-condition, when only objectivity will bring effectiveness of certifying. And never juggle or forge evidence, it's illegal and will lead to some severe legal penalties.




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