counterfeiting at aapex: how to protect your products and intellectual property presented by: marc...

COUNTERFEITING AT AAPEX:

How to Protect Your Products and Intellectual Property

Presented by:

Marc Fleischaker & Sarah Bruno

October 1, 2008

Counterfeiting at AAPEX

Overview

(1) Your Intellectual Property Rights Defined – What is being infringed?

(2) Exhibitor Responsibilities

(3) How to Approach Counterfeiters

(4) Questions?


Section 1:

Your Intellectual Property Rights Defined – What is being infringed?


The right conferred by the patent grant is “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States.

Examples:

Your Intellectual Property Rights Defined: Patent


Your Intellectual Property Rights Defined:

Trademark

Trademark protection extends to names, designs or other elements that act as “source identifiers”

A product name, company name or slogan Part numbers The shape or design of a product


Trade Dress

Trade Dress Rights Extend to the Look and Feel of Your Product or the Package Design


Your Intellectual Property Rights Defined: Copyright

Copyright Protection may extend to original creative elements on products or product packaging

• Elements of the product design• Packaging or labels• Catalogs and brochures• Images and photographs


Section 2:

EXHIBITOR RESPONSIBILITIES


Criteria for Exhibitors

1) A manufacturer that offers product(s) for sale• May be an assembler, packager, exclusive importer, etc., so long as such

product or products are exclusively proprietary. • An importer may technically be called a distributor, but the exclusivity shall

qualify him as an exhibitor-manufacturer by reason of such exclusivity.

2) Non-domestic manufacturers may participate in their government or trade organization block.

3) A manufacturer Rep firm may NOT exhibit but may work in an exhibit for an exhibiting company. • The exhibiting company that the manufacturer Rep firm is representing must

have their company name on the exhibit contract and on any other promotional pieces.

• The manufacturer Rep firm may not list their name on the exhibit contract. • The manufacturer Rep firm may only list their company name on the contract

for the exhibitor booth space drawing under the authorization section.


Exhibitor Regulations and Commitments

Rules for Products and Advertising

• Product to be displayed must be automotive parts, accessories, equipment, or other industry-related products or services.

• Exhibitor must advertise or display only such products indicated by the exhibitor in the “Products/Services” section of The Agreement and are intended for and generally used in a manner that conforms to State, Federal, or other applicable laws or regulations.

• No exhibitor shall display any product or display or distribute advertisements for a product which infringes upon the registered trademark, copyright, or patent of another company.

• An Exhibitor may not use a competitor’s product in a demonstration or any type of comparisons.

• Show Management, in its sole judgment, will determine the appropriateness of products exhibited and reserves the right to prohibit display or advertisement of products



An Exhibitor may not show the following products:

(1) Counterfeit products (2) Another manufacturer’s products which have been purchased or lifted from a distributor or another

manufacturer, or (3) Any products which are deemed by Show

Management in its sole discretion to be deceptively or illegally marketed.

(4) Non-compliant Parts – consider FMVSS standards imposed by NHTSA



If there is a violation of Exhibitor Agreement – • There may be a cancellation of the Agreement to occupy exhibit space and

the forfeiture of any monies paid.

• Show Management shall have the right to take possession of the exhibitor’s space, remove all persons and properties of the exhibitor, and hold the exhibitor accountable for all risks and expenses incurred in such removal.


Section 3:

HOW TO APPROACH COUNTERFEITERS


Range of Sanctions

1. Polite request to remove product if no previous history.

2. Mandatory removal of product(s).3. Correction and/or removal of catalogs and other

literature.4. Booth closure.5. Prohibition of future show participation.

NOTE: Show Manager has the authority to decide.


Recommendations for Intellectual Property Owners

1. Pre-Show meetings with Show Manager/Counsel.2. Investigate the Show floor before making

allegations.3. Court Orders are the best evidence.4. Patents may be difficult to interpret. Be clear and

specific. Many products are similar.5. Bring written support for your position.6. You may wish to speak with the alleged violator

before seeking Show Management assistance.7. You may not take pictures. Show Management

may.


Support of Your Position

What do you need?• A letter (preferably from a lawyer) describing

the infringement• Photographs of counterfeit good• Photographs of legitimate good• Trademark or patent certificate• Evidence that counterfeit products

are being displayed at the show• Evidence that the infringement is

occurring at the show• Copyrighted items that are being duplicated• Other evidence, posters, advertisements

or pictures


Summary of the Actions at 2007 AAPEX

Number of Complainants: 7

Number of Companies Complained About: 32

Nature of Violations (The number exceeds the total number of complaints because there were multiple complaints about some companies)

• Non-compliant product: 22• Patent Violations: 5• Trademark and/or part number infringements: 4• Generalized IP allegations, including trade dress and copyright: 1

Resolution of Complaints (without follow-up to assure compliance in all cases)

• Insufficient evidence to pursue, or complaint withdrawn or deferred: 3• Product and/or catalog not on display or voluntarily withdrawn: 22• Products seized and/or catalogs redacted: 4• Shut Down booth: 1• Other action: 2


Banned From Participation

Agreement to send letters barring participation for 5 years (or longer) from AAPEX:• ACHR/Wenzhou Huaran Electrical Machinery Co., Ltd.• QAP Automotive Industries (China) Inc.• CRQ Fuel Pumps (China) Co., Ltd.• HanKang Mechanical Electric C., Ltd.• Ningbo Motor Industrial Co., Ltd./Ningbo Motor Company • Ossca Parts (China) Co., Ltd.• Sane Mechanic Industrial Co., Ltd.• Yangzhou Fupond Electronic Technology Co., Ltd.• LeiShen Co. / China National Automotive (China)• Zhejiang Automobile Parts Co., Ltd.• Zhejiang Pullman Automobile Co., Ltd. (banned through 2010)


1. AAPEX will monitor and enforce IP rights.2. Success is dependent upon your investigation

and follow-up.3. Fairness is uppermost, and AAPEX will not

enforce invalid or weak claims.4. For assistance, contact:

1. William Glasgow, Sr. Phone: 708.226.1300. Fax: 708.226.1310.

2. George Keeley. Phone: 312.782.1829. Fax: 312.782.4868.

3. Marc Fleischaker. Phone: 202.857.6053. Fax: 202.715.8483.

4. Sarah Bruno. Phone: 202.775.5760. Fax 202.857.6395.


Questions?


Thank you for joining us!

Presented by:

Marc Fleischaker & Sarah Bruno

September 26, 2007

counterfeiting at aapex: how to protect your products and intellectual property presented by: marc...

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