By Daniel C.K. Chow

Multinational companies (MNCs) with valuable trademarks in China seek criminal enforcement against counterfeiting because other available avenues of relief, such as administrative and judicial remedies, have proven to be ineffective. While MNCs prefer enforcement through China’s Police, the Public Security Bureau (PSB), many MNCs are unaware of the significant hidden dangers of using the PSB.Most MNCs will delegate enforcement of trademark rights to their Chinese subsidiaries. These subsidiaries are known to make illegal payments to the PSB that may violate the laws of the PRC as well as the United States Foreign Corrupt Practices Act (FCPA). These acts expose MNCs to draconian penalties under PRC law and the FCPA. MNCs can be unaware of these illegal practices because many MNCs organize their business structures and intellectual property (IP) management strategies in ways that shield MNCs from reviewing some of the on-the-ground actions by their Chinese subsidiaries. This Article exposes these risks, explains how some of these risks arise, and makes suggestions on how MNCs can structure their business organizations and IP management structures in China to eliminate or mitigate these risks. *

By Daniel C.K. Chow 

The proliferation of counterfeits for sale on e-commerce sites has created new and more dangerous challenges to brand owners than counterfeits sold through brick and mortar establishments. Most brand owners are currently focusing their efforts on simplifying and streamlining Notice and Takedown (“NTD”) procedures set up by ecommerce platforms to remove illegal listings. The shortcomings of these efforts are that NTDs do not directly reach the counterfeiter who remains free to conduct its illegal activities with impunity and that NTDs do not prevent delisted counterfeiters from reappearing in short order under a new fictitious name and identity. Brand owners should seek to induce China to rigorously enforce its recently enacted Electronic Commerce Law (“ECL”), which was designed by China’s lawmakers to create a “choke point” that excludes counterfeiters and other unscrupulous merchants from gaining access to online accounts. The ECL requires multiple layers of government review and approval that were designed so that they can be satisfied only by legitimate and economically viable business entities. To date, e-commerce sites in China do not strictly comply with the ECL, and U.S.-based ecommerce sites do not require any compliance whatsoever with the ECL. Rigorous enforcement of the ECL should result in preventing counterfeiters from gaining access to e-commerce sites based in China and the United States and should lead to a decrease in sales of counterfeits on the internet.