Team: Tracy Shen, Hermione Zhang, Rhea Zhan, Eric Li

Illinois Tool Works Inc. (ITW) and its subsidiary in China, ITW Performance Polymers (Wujiang) Co., Ltd. (collectively referred to as "ITW"), have always prioritized the protection of intellectual property, tirelessly combating counterfeit products and cleaning up the market.

In a recent trademark infringement case, Chang Tsi Team (Tracy Shen, Partner of Chang Tsi & Partners, and her team members Hermione Zhang, Rhea Zhang, Eric Li), collaboratiing with ITW’s legal team, leverages their extensive experience and strategic insight to devise strategies that maximized the client's benefits at a critical juncture.

In this case, the team adopted an innovative "civil and criminal combination" strategy, tracing and forcefully attacking all infringing activities in the counterfeit product chain. They held a Beijing company accountable through civil litigation for selling counterfeit products, and also successfully tracked down the source of the counterfeit products during the settlement process – namely Tianjin Tuoda New Materials Co., Ltd. and its actual controller Jiang, and effectively pursued criminal liability against them.

This case has successfully unveiled the pattern of infringement and resulted in a substantial compensation of over CNY 2 million. Furthermore, the main offender was sentenced to more than four years in prison. This judgment served as a powerful deterrent against the manufacturing and selling of counterfeit products, underscoring the authority of the law and ITW’s commitment to protecting intellectual property.

Case Details:

In 2020, ITW discovered that a Beijing company was selling counterfeit PLEXUS industrial adhesives and commissioned Chang Tsi Team to take legal action against this company. After meticulous evidence collection and rigorous strategy formulation, under support of ITW’s legal team, the Chang Tsi Team filed a civil lawsuit on behalf of ITW against the Beijing company.

During litigation proceeding, the Beijing company proactively contacted the Chang Tsi Team seeking for a settlement. Considering the hidden nature of the counterfeit trade in such adhesive inductry and the client’s primary concern of eradicating counterfeit products from the source, ITW, after discussion with the Chang Tsi Team, agreed to settle with the defendant in hopes of achieving more substantial results outside of litigation. After multiple rounds of negotiations, the defendant agreed to compensate ITW for some economic losses and also agreed to cooperate in tracing the upstream counterfeit producer, Tianjin Tuoda Company.

In subsequent stage, the Beijing company provided transaction materials with its upstream counterfeit producer. After analyzing the case evidence, Chang Tsi Team determined that this case involved a high amount and severe circumstances, constituting a criminal offense. The case was reported to Haidian PSB in July 2023 by the Beijing Company, requesting criminal accountability for Tianjin Tuoda Company. In August of the same year, Haidian PSB arrested Jiang, the actual controller of Tianjin Tuoda Company.

During the criminal investigation, per instruction and support from ITW, Chang Tsi Team actively cooperated with the PSB, sorting out case facts, providing expert opinions and explanations on the production conditions of the involved products, and offering dual support in legal and factual aspects, facilitating the smooth transfer of the case to the prosecution. In the prosecution phase, the Chang Tsi Team continued to provide necessary support to the Haidian Procuratorate and Haidian Court, submitting victim statements. Under continuous efforts from all parties, the suspect, under pressure, proactively contacted the Chang Tsi Team to seek leniency and reduce penalties. After multiple communications, Jiang agreeded and compensated ITW’s damages and promised not to infringe again, in such condition ITW issued a letter of forgiveness.

After judicial proceedings, Beijing Haidian District People's Court issued criminal judgment (2024) Jing 0108 Xing Chu No. 273, finding Tianjin Tuoda Company and Jiang guilty of counterfeiting registered trademarks. Tianjin Tuoda Company was fined CNY 2.1 million, and Jiang was sentenced to four years and six months in prison and fined CNY 700,000. The counterfeit adhesives involved were confiscated according to the law.