Case
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Surveillance and investigation |
Investigation of
ink-cartridge counterfeiters (IP investigation) |
Our
client, an American manufacturer of inkjet and laser printers, was growing increasingly
concerned at the number of counterfeit versions of its inkjet cartridges
which were available worldwide. It
believed that many of these counterfeits were being manufactured in China. It
also wanted more information about manufacturers of compatible cartridges
(those which work in our client’s printers, but do not carry our client’s
brand name): it needed to know who was making the cartridges; who was making
vital high-tech components; how big the leading manufacturers were; what
their key markets were; and to what extent they were infringing on the
client’s patents. Posing
as a potential customer, Sinogie initially conducted an extensive survey of
manufacturers of remanufactured (recycled) cartridges; compatible cartridges;
and counterfeit cartridges. We made
initial contacts with target manufacturers by e-mail or phone, and then
visited the target companies’ offices and factories. We
identified which companies we suspected were counterfeiting, and which might
be infringing our client’s patents. We
also identified the sources of key components for compatible and counterfeit
cartridges, and identified the largest cartridge manufacturers in Hong Kong,
Mainland China and Taiwan. We provided
the client with a wide range of information on specific manufacturers,
including information on their manufacturing facilities, manufacturing
processes, sales and marketing practices, target markets, possible patent and
trademark infringements, and other relevant issues, and provided the client
with samples. In
the course of our investigation, we identified a number of companies which
were involved in the manufacture of counterfeit cartridges. Our
experiences with one of these companies are set out below. In
this case, after we had identified the target company, the client invited two
more of the world’s leading cartridge manufacturers to join it, and the three
companies worked with Sinogie to close down the counterfeiter. These companies chose to join the project
as the target had been flooding markets in South-East Asia, South America,
Africa, the Middle East and Europe with copies of all three of our clients’
products. The
local authorities are generally unable to take action against a counterfeiter
unless proof of the counterfeiting can be found. Typically, the easiest way to ensure this
is to ensure that counterfeit products are on the premises before the
authorities conduct a raid. Posing
as a potential customer, a Sinogie representative arranged to purchase
several hundred counterfeit cartridges from the target company. Working with Chinese lawyers, we then
informed the local Administration of Industry and Commerce (“AIC”) of the
situation. We worked with the AIC to
arrange for AIC officials to conduct a raid and seize the products. When
Sinogie’s representative went to collect the cartridges, AIC officials
followed him to a warehouse where the counterfeit products were being
stored. AIC officials then raided the
warehouse, seized the counterfeit products, and took the counterfeiters into
custody. Following a full AIC
investigation, the counterfeiters’ company was closed down; their
manufacturing equipment was seized, and the counterfeiters themselves were
given custodial sentences. |
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