Fake products from WeChat Platform of Shanghai Pudong New Area Intellectual Property Office -Link: https://mp.weixin.qq.com/s/pP4gjAM5tUiJ3oIs3tRm0g

Reported by the Conseil Interprofessionnel du Vin de Bordeaux ("CIVB"), on June 4, 2020, the People's Court of Shanghai Pudong New Area issued a criminal judgment on the case of Shanghai Feitong Trading Co., Ltd. infringing the "BORDEAUX/???" Geographical Indication collective trademark.

The counterfeiter has been found guilty and given an 18-month suspended prison sentence by the Court. In addition to the suspended prison sentence, the conviction also included a fine of 100,000 RMB for the company involved and 50,000 RMB to be paid by the guilty individual, for a trademark counterfeiting offence involving a batch of nearly 10,000 bottles, the CIVB said.

"Bordeaux became the first collective brand to win a victory in criminal proceedings in China (for both Chinese and foreign brands)", announced the CIVB.

In February of 2019, the defendant Mr. Zhuge commissioned others to design and produce the label bearing "BORDEAUX" affixed to the package of the company's filled wine bottles without the authorization from CIVB. Later in March of 2019, the fake Bordeaux wines had been showcased at the Chengdu Wine Fair, which were removed after mediation by Chengdu authorities.

Later the case was passed to Shanghai from Chengdu authorities, with the CIVB offering technical support.

"Since the company has brought the products to the exhibition, they are likely to have a certain scale of production and are still committing infringements", as mentioned by PAN Chunsen, the person in charge of the Enforcement Inspection Division of the Intellectual Property Office of Shanghai Pudong New Area.

Storage environment from WeChat Platform of Shanghai Pudong New Area Intellectual Property Office. Link: https://mp.weixin.qq.com/s/pP4gjAM5tUiJ3oIs3tRm0g

After several inquiries, according to the address and an inconspicuous phone number on the bottle body, it was found that the actual business location, warehouse and defendant's residence were located in different area of Shanghai. The enforcement actions were launched simitaneously against 3 locations. Finally, the illegal facts on producing and selling infringing wines were seized.

"The CIVB congratulates the investment and determination of the Chinese authorities in bringing this case to a successful conclusion," said CIVB president Bernard Farges.

Criminal sanctions for trademark infringement actors

In accordance with article 57 of Trademark Law, Any of the following conducts shall constitute an infringement of the exclusive right to use a registered trademark: Using a trademark that is identical with a registered trademark on the same goods without the licensing of the trademark registrant; ...Counterfeiting or arbitrarily forging others' registered trademark, or selling the counterfeited or arbitrarily forged trademark...

Undoubtedly, the production and sale of infringing goods by the parties have already constituted an infringement of the exclusive right to use a registered trademark. However, does the act meet the standard for criminal prosecution?

In accordance with article 213 and 214 of Criminal Law, Whoever, without permission from the owner of a registered trademark, uses a trademark which is identical with the registered trademark on the same kind of commodities (art. 213), or Whoever knowingly sells commodities bearing counterfeit registered trademarks shall, if the amount of sales is relatively large (art. 214), if the circumstances are serious, be sentenced to fixed-term imprisonment of not more than three years or criminal detention and shall also, or shall only, be fined.

Furthermore, according to the relevant judicial interpretation, the starting standards for the crime of counterfeiting registered trademarks and the crime of selling commodities bearing counterfeit registered trademark is that the amount of illegal business (sales amount) reach over 50,000 yuan.

Fake products from WeChat Platform of ShanghaiPudong New Area Intellectual Property Office. Link: https://mp.weixin.qq.com/s/pP4gjAM5tUiJ3oIs3tRm0g

In view of the large number of goods (nearly 10,000 bottles) involved in the subject case and the large value of the amounts, which reached the standards of criminal prosecution, therefore, the criminal responsibility should be investigated.

A major milestone in a decade-long battle against counterfeits

Bordeaux gained 'geographical indication' status in China in 2015, and 45 Bordeaux appellations (GIs) were officially recognized by the Chinese government in 2016.

According to Agence France-Presse, China is the largest market for Bordeaux wines, accounting for 23% of total sales (27% of total value). Counterfeit Bordeaux wine is a stubborn problem around the whole world, also in the Chinese market, and it is of great significance for the Chinese officials to stop counterfeiting.

"This case could act as a catalyst and encourage the various Chinese authorities to pursue similar cases and bring them to a successful conclusion. Prison sentences will constitute a significant deterrent for counterfeiters." CIVB representative said in a statement.

Indeed, China has gradually become the main market of wines. Not only BORDEAUX, but also Champagne and other winemakers are seeking greater trademark protection, working in coordination with Chinese officials. Undoubtedly, the wining of Bordeaux has set a favorable precedent for them and also future cases.

Last year, the EU and China concluded the negotiations on a bilateral agreement to protect 100 European Geographical Indications (GI) in China and 100 Chinese GI in the EU against imitations and usurpation.

The wining of Bordeaux on GI collective trademark coincided with the bilateral agreement and also demonstrated the determination of China to strictly and equally protect intellectual property rights.

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