The Authors: Rose Xu, Elian Xue

I. Features of kitchen and bath products and the infringement situation in the industry

The competitive factors of kitchen and bath products lie in the excellence of product performance, the maturity of production technology and aesthetic value of product design. In other words, product performance and design play a very important role in influencing consumer purchase decisions. Thus, IP infringement in the kitchen and bath industry focuses on the imitation of product performance and design. In the Chinese kitchen and bath market, it is common to encounter products which imitate design patents and thus infringe the IP of rights holders. To curb and eliminate infringing products in the kitchen and bath market, it is recommended that rights holders effectively use the complaint method in trade shows.

The Kitchen & Bath China (hereinafter "the KBC") held every spring is a seminal event in the kitchen and bath industry. To date, the KBC has been held for 23 years. Every year, the four-day trade show attracts thousands of exhibitors and millions of the public from at home and abroad. Every year, a great number of transactions totaling more than CNY 13.4 billion (about USD 2 billion) are concluded via the KBC. Almost all manufacturers of kitchen, sanitary ware and electric appliances would like to seize this opportunity to demonstrate their latest products and technologies. However, since it is easy to imitate the appearance of sanitary ware products, the KBC is also a place where infringements are frequently found.

By taking the IP complaints filed by Chang Tsi & Partners on behalf of Kohler at the KBC as an example, we would like to illustrate the effect of IP protection afforded by the complaint method at the KBC trade show.

II. Result achieved by Chang Tsi & Partners in the KBC

As a leading enterprise in the kitchen and bath industry, Kohler Company places a strong emphasis on brand building and thus focuses on strong IP protection. Kohler pays careful attention to the protection of its IP rights at the KBC, and has authorized Chang Tsi & Partners to protect its rights in this trade show for the last five consecutive years. Each year, more than 20 targets are discovered and over 10 targets have been the subject of onsite complaints.

The result of complaints at the KBC have been positive and encouraging. 70%-80% of the targets removed their infringing products immediately or within 24 hours of notification. In addition, the markets have become increasingly free of infringing products as anti-counterfeit activities have been carried out each year. During the 23rd KBC in 2018, we discovered that some of the producers of infringing products that had been the subject of design patent infringement complaints never showed up, and the number of other infringers also declined significantly.

Despite the positive results above, Chang Tsi & Partners also found that a highly distinctive Kohler showerhead, which enjoyed design patent protection in China, was massively imitated and displayed. The infringing products amounted to more than 16 pieces. Chang Tsi & Partners made onsite complaints against 8 targets, 7 of which removed the infringing products, and only 1 of which prepared a response. The success rate of complaints against this infringing product reached 87.5%.

From the response by one target, Chang Tsi & Partners successfully traced the source of manufacture of the infringing products. After an in-depth investigation into the source of manufacture, it was ascertained that the manufacturer was the source of most of the infringing products at the 2018 KBC. In addition, the manufacturer was found to be the culprit for other malicious IP infringements. These findings allowed Chang Tsi & Partners to prepare appropriate enforcement actions against the manufacturer.

In general, IP complaints at trade shows can play a crucial role in cracking down on infringement activities, allowing the brand owner to trace the source of infringement and protect its IP rights.

III. Notes for complaints in kitchen & bath trade shows

1. Pre-exhibition: adequate preparations

A relatively large number of patents are usually involved in a dispute in such professional trade shows as the KBC, among which design patents are the main IP rights which are most susceptible to infringement. Due to the great number of registered patents owned by Kohler, Chang Tsi & Partners finished the following work within one month prior to the start of the KBC.

a. A review of all design patents of Kohler, to become familiar with the patents and have a full knowledge of the bases of patent rights for Kohler.
b. A systematic background investigation into all kitchen & bath exhibitors involved at the trade show, by visiting the official websites to check whether there is any infringing product, with a special focus on targets against which we have taken enforcement actions in the past five years.
c. Contact the notary offices to arrange for notary-related affairs before complaints are filed.
d. Communicate with the KBC organizers tasked with administering IP complaints to learn about their requirements for successful complaints before preparing the complaints.

During the four-day exhibition, almost all notarizations and complaints were completed within the first two days. In other words, within only two days, all field visits, notarizations and complaints against infringing products were completed. Our Chang Tsi team recognized that every minute was too valuable to be wasted once the exhibition started. Therefore, the pre-exhibition preparation was very important. If we failed to become familiar with the large patent portfolio of the client and the design features thereof, it would have been impossible to spot the infringing products, and the success rate of complaints could thus not be guaranteed. In view of this, we started the preparation work one month before the opening of the trade show.

2. On-Exhibition: intensive investigations and complaints

In the first two days of the four-day trade show, we first conducted field investigations into all exhibitors to determine whether there was an infringing product. After locating an infringing target, we would contact the notary publics to notarize the infringing product onsite so as to secure the infringing evidence. Then, a complaint would be filed instantly.

An owner of IP rights can file a complaint with an office in charge of IPR complaints at an exhibition or directly make a complaint to the relevant intellectual property administrative department.

The owner shall submit the following materials when making a complaint to the office in charge of complaints:

(1) Legal and valid ownership certificate for intellectual property rights: if a patent is involved, the owner shall submit the patent certificate, the text of patent grant, the identity certificate of the patentee, and the certification of legal status of the patent;
If a trademark is involved, the owner shall submit the trademark registration certification documents that are signed and confirmed by the complainant and the identify certificate of the owner of the trademark rights;
If copyright is involved, the owner shall submit the copyright certification document and the identity certificate of the copyright owner;
(2) Basic information on the parties suspected to have committed IP infringement;
(3) Reasons and evidence for suspected infringement; and
(4) If an agent is appointed to make a complaint, a power of attorney shall be submitted.

Only with complete documents can the complaint organization accept such complaint.

The KBC established a special office to handle IPR complaints. We thus filed complaints directly with the office. After examination of the complaint documents, if the office preliminarily determined that suspected infringement was involved, it would assign a staff member to the exhibition hall to deliver the complaint notice and meanwhile check on the suspected infringing product. If the staff considered that the suspected product did not constitute infringement after the onsite check, he or she would stop the delivery of the complaint notice. Otherwise, he or she would request the exhibitor to remove the infringing product from the shelves. The common treatment of an infringing product is to remove it from the shelf, or cover it, so that the exhibition of such product is no longer possible. If the exhibitor argues that its product does not constitute infringement, it should provide a reply within 24 hours.

3. Post-exhibition: constant follow-up of non-complained of targets

As for the targets which conducted infringement but were not the subjects of complaints or were not suitable for complaints, we took conventional enforcement actions to safeguard Kohler's IP rights against such targets after the exhibition. The conventional enforcement actions include field investigations, notarization, C&D letters or civil lawsuits.

IV. Summary of experience of IPR complaints in kitchen and bath trade shows

We summarize the experience from 5 years of IPR complaints on behalf of Kohler at the KBC:

a. Locate the infringing targets, effectively trace the source of infringement

It is relatively easy to locate a great number of infringing products if we fully prepare for the trade show in advance and conduct thorough investigations at the show. Since the infringing targets are often concealed in the market, making discovery difficult and thus expensive, a trade show is a convenient and effective venue/event to locate infringing targets. If a target is not the original source of infringement, it will usually disclose the source of infringement in its response to the complaint. This will allow us to trace the source of the infringement.

b. Comprehensive strike on an infringing target

Generally, exhibitors will display the products they deem aesthetically pleasing and technologically advanced. As a leading brand in the kitchen and bath industry, Kohler's products are usually imitated. Often, targets will imitate more than one patent. Also, the infringement is not limited to design patents. Trademark and copyright infringement are sometimes conducted along with patent infringement. The IPR complaint at the trade show can timely and effectively crack down on all kinds of infringement.

c. Stop the conclusion of transactions of the infringing products and protect the market share of the client

A timely IPR complaint can stop the further exhibition of the infringing product. Thus, it can prevent the transaction of the infringing product from being concluded. In this way, the market share of the client' brand is protected.

V. Other applicable industries of IPR complaints in trade shows: daily necessities, consumables, industrial tools, etc.

IPR complaints can help safeguard intellectual property rights and clean up the market. The effectiveness of IPR complaints is not limited to the kitchen and bath industry. In industries such as daily necessities, consumables, industrial tools, etc., there are various trade shows or exhibitions. The IPR complaint method at the trade show should be taken into consideration for the protection of intellectual property rights in these industries.

For more details about IPR complaint in trade shows, please contact marketing@changtsi.com.