201911.11

Bringing Chinese counterfeiters before French courts

Recently, Cdiscount was criticized for not having disclosed the identity of alleged counterfeiters. However, it turned out that the information needed to identify these merchants were available on Cdiscount and that they had indicated a postal address in China (Online counterfeiting: Cdiscount cannot be held liable, iptwins.com, 24 Oct. 2019).

Like many others, this case raises the issue of the possibility of taking the Chinese counterfeiters before the courts. The first step consists of identifying counterfeiting, and counterfeiters, either through a platform such as Detective by IP Twins, or through on-site investigations.



The next step involves the implementation of a litigation strategy. On a procedural level, several issues arise: forum shopping (territorial jurisdiction, duration of proceedings, cost of proceedings and the amount of damages), territorial jurisdiction, and ultimately, where appropriate, recognition and enforcement of a foreign judgment in China. 

Historically, foreign IP owners have expressed reluctance to sue counterfeiters before Chinese jurisdictions for reasons that have evolved. At the opening of China in 1978, China’s judicial system was mistrusted. Once legitimate, this feeling, at the dawn of the 2020s, is based on less solid foundations. It is important to remember that in less than forty years, the Chinese judiciary system has been considerably modernized, and judges have received remarkable training. Maintaining a discourse based on such mistrust could be received as a contemptuous objection. Moreover, the number of Chinese proceedings dealing with counterfeiting cases is continuously increasing. This momentum is the result of a determined policy that has led to the implementation of specialized IP courts, and the evolution of legislation which constantly strengthens IPRs. 

There remains the question of the recognition of foreign judgments in China. Brand protection observers may have noticed that, in recent times, several trademark owners have brought suspected Chinese counterfeiters to US courts (as for examples: Juul Labs Gets an Injunction Against Thirty Chinese Counterfeiters, iptwins.com, 2018- 09-14, Louis Vuitton Combats Online Counterfeiting Before a Florida Court, iptwins.com, 2018-10-22), which necessarily raises the issue of exequatur. 

Back to the recent Cdiscount case, it is worth recalling that France and China have signed a Mutual Legal Assistance Agreement on Civil and commercial matters on May 4, 1987, which was incorporated into French law by Decree No. 88-298 dated March 24, 1988. Article 19.1 provides: 

“Decisions in civil and commercial matters rendered after the entry into force of this Agreement by the courts of one Contracting Party and having become res judicata shall be recognized and enforced in the territory of the other Party (…)”.

By way of example, let us recall that in 2017, Chinese judges, one from Liaoning Province, the other from Zhejiang Province, granted enforcement of the judgments delivered respectively by the Paris Commercial Court (chinajusticeobserver.com, 2019-03-17) and the Bobigny Commercial Court (chinajusticeobserver.com, 2019-03-17). Although these judgments were rendered by commercial courts -and not by courts of first instance, which have exclusive jurisdiction over infringement of IPR-, and the cases concerned had nothing to do with IPRs, these cases show that Chinese judges are sending positive signals. In the presence of a case relating to IPRs, one can argue that one should not distinguish where the law does not make a distinction. In other words, tort, including IPR infringement, falls within the scope of the Agreement. Another positive signal can be seen in the speech made on April 29, 2019 by the French Minister of Justice at the opening of the French-Chinese dialogue on law and justice. Indeed, the Minister announced a strengthening of judicial cooperation between the two states (justice.gouv.fr) and, although the IP was not expressly mentioned in this speech —which is unfortunate—, nothing indicates that IP should be excluded from the benefit of this trend. The Chinese judges could thus be favorable vis-à-vis the French IPR owners.

À propos d'IP Twins

IP Twins est un bureau d’enregistrement de noms de domaine accrédité par l’ICANN avec 15 ans d’expérience dans la stratégie et la gestion des noms de domaine.

Nous délivrons des certificats de sécurité parfaitement adaptés à vos besoins pour garantir la sécurité des visiteurs de votre site Internet.

IP Twins offre aussi des services de surveillance et de lutte contre la contrefaçon et le cybersquatting. Nous représentons les titulaires de marques dans les procédures UDRP. Notre logiciel de surveillance Detective identifie les contrefaçons en ligne. Nous collectons les preuves et pouvons procéder à la suppression des listes sur des centaines de plateformes de marché, de réseaux sociaux et sur le web en général.

Nous disposons également d’une équipe d’investigation présente en Chine.

N’hésitez pas à nous contacter.

About IP Twins

IP Twins is an ICANN-accredited domain name registrar with 15 years of experience in domain name strategy and management. We represent trademark holders in UDRP proceedings.

We deliver security certificates tailored to your needs in order to ensure the safety of visitors to your website.

IP Twins also offers anti-counterfeiting and anti-cybersquatting monitoring services. Detective, our monitoring software, identifies online counterfeits and cybersquatting. We collect evidence and remove references to counterfeits from hundreds of marketplaces, social networks and the web in general.

Should you need to complete these investigations, our team based in China can help.

Do not hesitate to contact us at info@iptwins.com.