How to hire a notary public at a trade fair

Trade fairs can provide a perfect opportunity for the holder of intellectual property rights (IPR) to catch a counterfeiter red-handed. But proving in court that the intellectual property (IP) infringement took place may be much more difficult. The China IPR SME Helpdesk explains how hiring a notary public to witness the infringement of a product, design or service can add invaluable strength to the plaintiff’s case.

Types of notarisation at trade fairs

In practice, the most common ways to secure relevant evidence of infringement at trade fairs by means of notarisation are:

1. notarised purchases (i.e. purchasing a sample infringing product at a trade fair whilst accompanied by a notary public); or
2. notarised photography of the presence of the infringer and/or infringing products at a trade fair (i.e. taking photos at trade fairs of the infringer’s exhibition booth, infringing products/exhibits, or infringing advertisement in the presence of a notary public).

The aim of this type of notarisation is to preserve the relevant evidence that proves the infringer has been committing or has committed IPR infringement at trade fairs.

According to Chinese law, any natural person, legal entity or other organisation can file an application for a notarisation in China at a notary public office either where their home, habitual residence or main administrative/business office is located, or where the IPR infringement is found. If a European small and medium-sized enterprise (SME) does not have a registered company or office in China, it should hire a notary public in the place where the trade fair is held.

What is needed to prepare for lodging a notarisation request in China?

Before going to a notary public office, some basic materials must be prepared. These include:

Power of Attorney (POA)

If the owner of the IPR being infringed at trade fairs entrusts an IPR agency or a law firm to carry out the notarisation for evidence preservation on their behalf, an executed power of attorney is required. If the POA is executed by a foreign enterprise/individual or from outside Mainland China, it shall be notarised and then legalised by the Chinese embassy or consulate in that country. Some notary public offices may also require any foreign language text to be translated into Chinese.

Business Registration Certificate

If the IPR holder is an enterprise, a copy of its business registration certificate is also required.  If the IPR holder is an individual, a copy of his/her identity certificate must be provided to the notary public office. Since equivalent certificates from European countries vary in format and content, IPR holders are strongly advised to have such documents translated into Chinese. Where such documents are obtained outside Mainland China, they may also need to be notarised and legalised.

Intellectual Property Certificates

These include certificates for trademark registration, copyright recordation and patents. The notary can accept both Chinese and non-Chinese IPR certificates; however, if an IP holder wants to sue the infringer in China, only Chinese IPR certificates are acceptable by the Chinese court.

Do’s and Don’ts when conducting a notarisation at trade fairs

Do’s

1. Pre-notarisation investigation against the targeted infringer is strongly advised to know which evidence to notarise. IP owners should spend time on the first day of the exhibition walking around the fair to make initial checks.
2. Before conducting the notarisation, IP owners are advised to discuss in detail with the notary public how to notarise evidence, to benefit from their suggestions and experience.
3. IP owners need to make sure all relevant evidence showing the IPR infringement is collected.
4. If a sample infringing product is purchased at trade fairs, the IP owner should ask for an official receipt with the infringer’s company seal or relevant person’s signature. Such evidence proves where the infringing product was obtained and the price, which will help demonstrate how much illegal profit the infringer has earned, or the losses the IP owner has suffered.

 Don’ts

1. If the infringing exhibitor has ceased offering the infringing product the IP owner earlier found for sale at the trade fair, then the IP owner should not try to induce the exhibitor to sell it during the notarisation, as such behaviour will be regarded by the courts as inducement to IPR infringement.
2. If the infringing exhibitor stops the IP owner from taking photos of their exhibition booth and the infringing product, it is not advisable to argue directly with them. Instead, the IP owner can request the exhibition holder to issue a letter confirming the presence of the infringing exhibitor at the trade fair.

What should be done after notarisation?

As soon as the notarisation is completed, make an appointment with the notary public to fetch the notary deed and the relevant evidence box. Usually the notary public issues two original notary deeds for the IP owner. In practice, three are necessary – one copy each for the IP owner’s company, the IP owner’s law firm and the court where the case is filed. More copies are required if the infringer is then sued at a different court. Photocopied notary deeds are usually accepted by IP administrative authorities if the IP owner files an administrative complaint. IP owners can usually request an unlimited number (subject to extra payment) of notary deeds.

Usually, evidence such as purchased items, company brochures and business cards will be kept in a box closed with the notary public’s seal. If the seal is broken or the box has been opened, such evidence will be considered questionable and may not be accepted by the court.

Continue monitoring suspected infringers

It is important to continue surveilling the infringing exhibitor after the notarisation to verify if the IPR infringement is repeated at any other trade fairs. It is at the IP owner’s discretion to decide if any more notarisation of evidence preservation is needed.

It is also recommended to proceed with the investigation into the scale of the infringing exhibitor’s business, its distribution network and its business locations before taking any further enforcement or legal action.

Should the IP owner take enforcement actions—no matter whether with the administrative authority or the courts—the notarised evidence can be used to set up the case (using copies of the notary deed is acceptable). The courts will use the original copy to examine the case, together with any other evidence, for instance: on the scale of infringement; volume of sales of infringing products; economic losses sustained by the right holder; illegal gains of the infringer and so on. If the IP holder wins the case, the court will order justified compensation.

The China IPR SME Helpdesk supports small- and medium-sized enterprises (SMEs) from European Union (EU) Member States to protect and enforce their IPR in or relating to China, Hong Kong, Macao and Taiwan, through the provision of free information and services. The Helpdesk provides jargon-free, first-line, confidential advice on intellectual property and related issues, along with training events, materials and online resources. Individual SMEs and SME intermediaries can submit their IPR queries via email (question@china-iprhelpdesk.eu) and gain access to a panel of experts, in order to receive free and confidential first-line advice within three working days.

The China IPR SME Helpdesk is an initiative by the EU. To learn more about the China IPR SME Helpdesk and any aspect of intellectual property rights in China, please visit our online portal at http://www.ipr-hub.eu/.