How should Shenzhen enterprises respond to trademark registration and patent infringement

The best-selling furniture we designed, just three months after its launch, was flooded with knockoff versions. The other party even registered a design patent in advance and sued us for infringement, "said the owner of a design company in Longhua, Shenzhen, spreading out a thick stack of materials in front of me with a tone full of helplessness. This situation is not uncommon in Shenzhen: trademarks are being hijacked, core technical drawings are taken away by former employees for use in competitors, and exterior designs are being counterfeited in bulk. Intellectual property is no longer a niche clause in the legal department, but a tangible line on a company's balance sheet.

1、 First, distinguish three different types of 'infringement'

1. Trademark registration being hijacked: the dispute is for "prior use"

Some "professional hijackers" specifically focus on the brand names of start-up companies. Once the other party has gained some fame, they submit applications in bulk and then threaten to file infringement complaints or take the platform down, demanding transfer fees. The key to resolving such disputes lies not in "who registers first", but in "who uses it first and whether it has an impact". According to the relevant provisions of the Trademark Law, if someone illegally registers a trademark that has already been used by others and has a certain impact, the prior user may raise an objection or request invalidation.

The trouble lies in providing evidence. 'Has a certain impact' depends on contracts, invoices, advertising records, media reports, and sales data piled up. Many bosses think that 'once the product is made, the copyright naturally belongs to me', but copyright registration and trademark registration are two completely different paths, and copyright cannot resist the party who uses it in good faith. Once a trademark is registered, the passive level of rights protection will increase exponentially.

2. Patent Accused: Controversy over "Stability of Rights Basis"

Design patents do not undergo substantive examination, which makes them a tool for some people to "reverse their rights" - apply first, file a complaint later, and then negotiate conditions. When receiving such warnings, the focus is not on whether he looks like my design, but on whether his patent holds up.

We once handled an industrial design case, and the idea was to first check whether the other party had any records of public sales or public use before the patent application date, and then fix the "prior disclosure" through notarized purchase, exhibition materials, and e-commerce history pages, and request to declare the patent invalid based on this. Once the foundation of rights is denied, the accusation of infringement naturally becomes impossible to talk about. In addition, according to the provisions of the Patent Law on punitive damages, if it can be proven that the other party has obvious subjective malice and the circumstances are serious, the amount of compensation can be increased within the statutory range.

3. Trade Secrets: Controversy over "Secret Points" and "Confidentiality Measures"

This is the most difficult type of intellectual property to handle. Many core employees take away technical parameters and customer lists under the pretext of "personal experience" when they resign. According to the relevant provisions of the Anti Unfair Competition Law, the rights holder must first prove that they have "taken corresponding confidentiality measures" and accurately define what the "secret points" are - which parameters, which lines of code, and which customers' quotation structures they are referring to, rather than simply saying "our technology has been stolen". If these two things cannot be achieved, it will be difficult to advance in the future.

2、 When accused or infringed upon, follow this order

1. First check the basis of rights, don't rush to defend yourself

When receiving a lawyer's letter or lawsuit materials, the first step is not to write a defense statement, but to retrieve the other party's rights documents to see: the application date of the trademark, the approved category of use, and whether it has not been used for three consecutive years; The application date, claims, and whether annual fees have been paid for the patent; Does the completion time of copyright registration match the actual creation time. The turning point of many cases is in this document.

2. Evidence must be presented before the other party

The webpage should be notarized or have a trusted timestamp, the infringing physical object should be notarized for purchase and the logistics documents should be retained, and the exhibition materials should be photographed in the exhibition catalogue, booth number, and date. The more complete the evidence chain, the greater the space for sending letters, complaints, or lawsuits later on. On the other hand, if you talk to the other party first, it is easy to expose your litigation ideas.

3. The three paths can be parallel, but they need to be arranged in order

Administrative procedures, including trademark opposition, invalidation declaration, patent invalidation declaration, and complaints to market supervision departments; Civil procedure, advocating for the cessation of infringement and compensation for losses; Criminal procedure, reporting violations of trade secrets that meet the filing criteria. The evidentiary standards and time costs of the three paths are different, and which one to go first depends on whether the goal is to "stop infringement as soon as possible" or "get compensation".

We have represented a Shenzhen design company in safeguarding their rights: original furniture was directly molded and mass-produced by factories in other provinces, while infringing products were sold nationwide through e-commerce stores. The team approached from three aspects simultaneously: evidence chain, rights foundation, and compensation basis. The court ultimately ordered the other party to stop manufacturing and compensate for a loss of 3 million yuan. This amount was not common in similar cases at that time, relying not on a brilliant argument, but on sales data, design drafts, and notarized certificates from three years presented in court one by one.

3、 Three suggestions for Shenzhen business owners

Firstly, make the layout during the product approval process. Apply for trademarks according to "core category+related category+defense category"; Patent applications should be combined around core inventions, not just one application; Establish version management and access permissions for technical documents. These actions are done during project initiation and have the lowest cost.

Secondly, treat evidence as a daily action. The design draft, version record, release time, and first sales order should all be able to correspond to the time. Many companies lose by saying 'I made things, but I can't prove when they were made'.

Thirdly, sign the contract before cooperation. Confidentiality agreement and job achievement attribution agreement signed by employees upon entry; Outsourced development clarifies the ownership and scope of use of the results; Complete the data handover checklist after the cooperation ends. According to the relevant provisions of the Labor Contract Law and the Anti Unfair Competition Law, these documents are the basis for subsequent claims of rights.

4、 Frequently Asked Questions

Q: What do Shenzhen companies look for when looking for intellectual property lawyers?
Answer: If there is any practical experience in similar cases, can we break down the "infringement chain" and explain it; Secondly, it depends on whether the team can handle both administrative and litigation procedures simultaneously, as many disputes require two legs to resolve; Check if you are willing to conduct evidence evaluation before discussing the plan, instead of promising the results immediately.

Q: Do I have to spend money to buy back a trademark that has been registered illegally?
Answer: Not necessarily. First, check how many trademarks are registered under the name of the hijacker and whether they have been actually used. If it belongs to batch registration and is clearly not intended for use, objections or invalidation declarations can be made; If the other party has not used the registration for three years, they can apply for revocation. Buyout is the last option, not the inevitable way out.

Q: Can the list of customers taken away by employees after resignation be filed?
Answer: There are three points to consider: whether the customer list is confidential, whether the company has taken confidentiality measures, and whether employees have signed confidentiality and non compete agreements. Three points are complete, both civil claims and criminal reporting are possible; If one item is missing, the difficulty will increase to a higher level. So the documents at the time of joining are more effective than the accountability after leaving.

The issue of intellectual property ultimately boils down to turning intangible things into provable ones. Every day in Shenzhen, companies are worried about trademarks, patents, and drawings, and it is often the preparations made before disputes arise that truly determine the outcome. If you are dealing with similar issues or want to complete the documents in advance, you can contact Guangdong Zhiming Law Firm at Room 1802, Building A, Xintian Century Business Center, Shixia North Second Street, Futian District, Shenzhen, with a phone number of 0755-25986969.