Scope of Services to be provided by Hylands Law Firm to Cematex re. ITMA ASIA & CITME Exhibition 2016

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1 Scope of Services to be provided by Hylands Law Firm to Cematex re. ITMA ASIA & CITME Exhibition Introduction The following is a summary of the scope of services to be provided to Cematex by Hylands Law Firm ( Hylands ) in advance of and during the ITMA ASIA + CITME Exhibition in October The services to be provided by Hylands include advice and assistance for identifying and dealing with instances of intellectual property right infringement occurring at the exhibition and for filing and handling complaints in respect of such instances of infringement, where such services are requested by the members of Cematex. 2. Summary of Services In general, the following categories of services will be provided by Hylands to Cematex and its Members in advance of and during the exhibition: a. Preparation of Documents Required for Complaints; b. Analysis and Advice on Suspected Infringement; c. Filing of Complaints with the IPR Complaints Office;.. d. Filing of Complaints to the Administration for Industry and Commerce ( AIC ) or the Local Intellectual Property Office, where necessary; e. Management of Complaint and Liaison with Authority; f. Fixing of Evidence of Suspected Infringement by Notarization. Further explanation of each category of service is set out below. A simple flowchart of the process is also provided as the end of this document. The services referred to at a. b. and c. above are included in the service fee paid by Cematex on behalf of its Members. The individual services referred to from d. to f. above will be provided to a Member only where requested by that Member and will be subject to an additional charge to the Member, outside of the agreement between Cematex and Hylands. For these additional services d. to f. Hylands will appoint a patent attorney to represent the Member, or the Member is free to appoint his own patent attorney. 3. Preparation of Documents (2a)(free of charge to Cematex members) Certain documents will be required for the filing of complaints at the exhibition. In order to be in a position to deal with complaints as quickly as possible and within the timeframe of the exhibition, the documents should be prepared in advance of the exhibition. 1

2 Hylands will liaise with Cematex, orits representative, in advance of the exhibition to prepare all of the required documents where such assistance is required by a Member. In order to identify the exactly relevant rights and registrants in relation to which the documents must be prepared, Hylands will collect all the information relating to the relevant registered intellectual property rights and the relevant intellectual property right holders ( IPR holders ) (i.e. the registration number of the IP registrations, the identity of the relevant registrations, etc.). The documents which are required are as follows: a. A copy of the official identification of the relevant IPR Holder (i.e. passport) or the Certificate of Incorporation, if the IPR Holder is a company. b. A copy of the certificate of registration of the relevant intellectual property right.trademarks a copy of the Trademark Registration Certificate issued by the China Trademark Office (CTMO). If the trademark is an international registration, a certified copy of the Trademark Registration Certificate issued by the CTMO. Copyright a copy of the Copyright Registration Certificate issued by the China Copyright Protection Center or an original notarized and legalized certificate obtained abroad. Patents A copy of the Record of Patent issued by the State Intellectual Property Office; or a copy of the patent certificate and a copy of the receipt of the annual patent fee. c. A Power of Attorney which confirms that the IPR Holder entrusts Hylands Law Firm to handle all matters relating to any complaint arising in respect of their intellectual property right. d. A Certificate of Legal Representative. This document is only required for the institution of an infringement lawsuit. We would recommend that it is also prepared in the event that it is necessary to take a lawsuit. e. Where an agent files a complaint, the relevant Power of Attorney entrusting that agent to act on the IPR owner s behalf. The Power of Attorney must be signed by the IP owner, notarized before a local notary public and legalized by the Chinese embassy or consulate in the place where the trademark registrant is located. f. Where the IP registrant is a company, the registrant s Company Incorporation Certificate issued by the local competent authority. The certificate must be notarized and legalized. g. As much information as possible about the suspected infringer and the infringing goods/materials. h. As much evidence as possible of the suspected infringement of goods/materials. i. A Chinese translation of each of the above documents must be provided, prepared by a translation company appointed by the Supreme Court of China. 2

3 Some of these documents are required to be notarized. We would highlight that according to the Chinese version of the exhibition rules, in addition to notarization,legalization of documents is also required. Hylands will work withthe Cematex member to ensure that all documents are notarized and legalized as required in advance of the exhibition. 4. Analysis and Advice on Suspected Infringement (2b)(free of charge to Cematex members) The Hylands representative will accompany the Members when viewing the exhibition stands at the exhibition, or if personal accompaniment is not possible due to a large a volume of Members, the Hylands representative will be available at a particular location at the exhibition, and by telephone, for consultation. On the finding of suspected infringing materials/goods, the Cematex Member should inform the Hylands representative of the general details of the suspected infringing material and the number of the relevant trade stand at which the material appears. The Hylands representative will accompany the Member to the relevant exhibition stand in order to view the material with the Member and to provide an initial assessment and analysis as to whether infringement has occurred. 5. Filing of Complaints with IPR Complaints Office (2c)(free of charge to Cematex members) If, following full analysis and assessment of the suspected infringement, the Member instructs the Hylands representative to proceed to file a complaint in respect of the suspected infringement on behalf of the relevant IPR Holder, Hylands will duly prepare the complaint by completing the IPR Complaint Office s complaint form and providing the pre-prepared documents required as part of the complaint. This service is available at a fee to the Members of Cematex. In circumstances where the IPR Complaints Office refuses the accept the complaint on the grounds that they do not recognize any suspected infringement, or on other grounds, Hylands will argue for the acceptance of the complaint by the IPR Complaints Office so that the suspected infringement may be swiftly dealt with during the timeframe of the exhibition... The following services can be provided to Members by Hylands but these will be chargeable - 6. Filing of Complaints with the AIC or the Local Intellectual Property Office (2d) In order to save costs and achieve quick action in relation to suspected infringement during the exhibition, the IPR Complaints procedure will be the recommended complaint procedure during the exhibition. 3

4 However, in the event that a complaint is not accepted by the IPR Complaints Office, there is an option to pursue the complaint through the AIC (in respect of trademark matters) or the local intellectual property office (in respect of patent matters). Hylands will advise in relation to the option to file a complaint through these routes where necessary, including the relevant costs and remedies which can be sought from the authorities. If it is decided to file a complaint, Hylands will complete the relevant complaint form and the relevant pre-prepared documents to be submitted. In circumstances where the AIC or the Local Intellectual Property Office refuses the accept the complaint on the grounds that they do not recognize any suspected infringement, or on other grounds, Hylands will argue for the acceptance of the complaint by the authority so that the suspected infringement may be swiftly dealt with during the timeframe of the exhibition. 7. Management of Complaint and Liaison with Authority (2e) Once the complaint is filed with the IPR Complaints Office, or with the AIC/local intellectual property office as the case may be, the relevant authority will assess the complaint and if they accept the complaint, they may request a response from the respondent in respect of the complaint within a prescribed timeframe. After expiration of this prescribed timeframe for response, where relevant, the authority provides their decision on the complaint. Hylands will liaise with the relevant authority in respect of the complaints made and will encourage and argue for timely action on complaints. The Hylands representative will act as agent in respect of the complaint and will keep the Member informed of progress of the complaint. Hylands will argue for immediate action by the authority in respect of the suspected infringing material, specifically for the removal of the infringing material from the exhibition. It should be noted that removal of suspect infringing material is more likely to be achieved in respect of a straightforward instance of infringement, for example a clear instance of trademark infringement. It is more difficult to achieve this in relation to suspected patent infringement, as there is a more complicated level of analysis required to assess whether infringement has occurred. 8. Fixing of Evidence of Suspected Infringement by Notarization (2f) In the event that a complaint in relation to a serious suspected infringement is not accepted by the IPR Complaints Office, the AIC or the local intellectual property office during the exhibition, or in circumstances where the IP registrant wishes to pursue damages, it may be necessary to consider preparing for the institution of an infringement lawsuit. In these circumstances, Hylands will advise as to the requirement to fix evidence at the exhibition, the chances of success of an infringement lawsuit and the costs and risks associated with the lawsuit. 4

5 If it is decided that an infringement lawsuit is a viable option for the IP registrant/right holder, it will be necessary to fix the evidence of the suspected infringement at the exhibition in order to provide sufficient evidence of the suspected infringement to the court. The fixing of evidence requires the services of a notary public to capture and notarize the required evidence. Hylands will arrange for a notary to attend at the exhibition to carry out fixing of evidence where required, and will advise as to the relevant costs of the notarization to be carried out. It is recommended that the permission of the IPR Complaints Office is obtained in advance in respect of the presence of a notary at the exhibition, if required, and permission for that notary to take relevant evidence. This would avoid any undue delay with notarization during the exhibition due to objections from exhibition holders. Hylands will liaise with the relevant Members representative in relation to ensure that this permission is obtained in advance of the exhibition. Contact Details If an exhibiting member of the 9 Cematex associations wishes to use the services of Hylands, he should keep his association informed and should also advise Maria Avery of Cematex by maria.avery@btinternet.com Hylands Law Firm can be contacted as follows prior to the exhibition Unit 1511, 15/F, Tower A, Full Link Plaza, No. 18 Chaoyangmenwai Ave., Chaoyang District, Beijing , China Tel: ; ; Fax: liuyuping@hylandslaw.com Ms. Erica Liu is the partner of Hylands acting as an attorney-at-law and a trademark attorney who has a lot of experience in trademark, anti-counterfeiting, copyright, domain name issues, and she will be our contact person and will show at the exhibition together with a patent attorney from Hylands. She speaks English. Full details on Hylands Law Firm and Ms Liu can be found at their website Ms Liu will be on site at the exhibition for 5 days - from the day before the show starts (20 October) until close of business on 24 October (the day before the show finishes). She will be based in the IPR office in xxxxxx (to be confirmed). Further contact details will be given nearer the time, however Cematex members should keep their associations fully informed of their planned actions so that we can do all we can to assist. We recommend that companies who believe they will be needing assistance on site regarding a potential IPR issue should contact Hylands as soon as possible to ensure that they prepare everything they need in advance of the show. 5

6 APPENDIX Hylands gather information on IP rights from Members Hylands prepare documents required at exhibition PRE-EXHIBITION PERIOD EXHIBITION PERIOD Members spot suspected infringing material at exhibition Members informhylands d l Hylands assess and adviseon suspected infringing material Rejection of Complaint by IPR Complaints Office No complaint filed Hylands file complaint with IPR Complaints Office on behalf of IPR owner File complaint with AIC/local IPoffice Acceptance of Complaint by IPR Complaints Office/AIC/IP office Hylands advise on other options i.e. lawsuit Rejection of Complaint by AIC/local IP office Hylands keep Members informed of progress andurge immediate action i.e. removal of infringingmaterial If serious infringement, Hylands will arrange notary to fix evidence Issue of Decision / ActionTaken Hylands continue to advise and manage lawsuit if instructed 6