When Warren Lucas discovered that a manufacturer in China was illegally copying his portable sawmills he decided to take action.
He took legal action in a Chinese court and won his case against manufacturer SSML for infringing on the patent owned by his family business, Lucas Mill.
The company was awarded RMB2 million (A$400,000) originally, which was reduced to RMB1 million (A$200,000) following an appeal to the High Court, although Lucas isn’t confident that he will receive the damages.
The infringement was discovered when a staff member saw that a Chinese company was advertising a ‘Lucas Mill’ for sale. They discovered that SSML had done a direct copy of not only the mill itself, but also of the instruction manual.
They contacted a patent attorney in Melbourne who in turn engaged a firm of Chinese patent lawyers, as well as a private investigator in China to gather evidence for the legal action.
The private investigator learnt that a counterfeit machine had left the factory in China and was in a large dockside warehouse ready for export.
Customs seizes counterfeit goods
They informed Chinese Customs, who raided the warehouse and found the counterfeit machine.
As well as halting the export of a fake and inferior product, the raid provided the evidence Lucas Mills needed for the subsequent court case.
It’s an example of the sort of action a business can take in China if another company is copying its products.
The legal action was a considerable investment for the company, but Lucas said it was important to send a message.
“We needed to protect our market ... our product, all the research and development we'd put years into developing,” he said.
Enforcing your intellectual property rights in China
The first step to take if someone has been copying your brand or products is to engage an IP lawyer.
You can either choose an Australian firm with a presence in China or with trusted foreign associates in China. Another alternative is to directly engage a local Chinese firm.
Either way, you will need an IP professional with local expertise who will be better able to navigate their way through the Chinese IP system.
Your lawyer will be able to send a cease and desist letter to the infringer and if that doesn’t work, they can advise and help to tailor the best enforcement strategy for you.
You can also work with Customs as Warren Lucas did, and have them seize illegal goods before they leave the country.
- Take a look at our animation explaining the Chinese first to file trade mark rule.
- If someone else has already registered your trade mark in China it’s important to know about trade mark enforcement in China.
- If you're thinking about entering the Chinese market make sure you understand the trade mark application processes.
- Are you manufacturing in China? It’s important to look at the risks of manufacturing in China without IP protection.