By Mr. Xiaoming Liu & Ms. Jiao Ren of Chofn IP
To succeed in IP infringement cases, it is important to prove the act of infringement and preserve all relevant infringing evidence. While it is acceptable to preserve evidence of infringement by the right holders or the lawyers in some countries, especially in the countries where affidavit or self-declaration is widely acceptable, the authenticity of the evidence preserved by the right holders or the lawyers in China is usually denied by the infringer and challenged by the judges. Instead, as stipulated in Civil Procedure Law, notarized facts and documents shall be accepted by the courts without doubting its authenticity unless there is evidence to the contrary. Thus, evidence preserved by the Notary Public is widely accepted by the courts and little can be done by the infringers to defend against it. Consequently, it has become an almost necessary step to preserve evidence through notarization before initiating any IP litigation.
In this article, I would like to elaborate two kinds of most used notarization to preserve infringement evidence in IP cases in China, webpage notarization and purchase notarization.
1. Webpage notarization
In the current cyber era, online sales and online shopping becomes more and more popular, infringement also shifts from offline to online. The infringers often have their own stand-alone websites or rent space from online platforms such as Alibaba or eBay to operate their stores. The cost for online infringement is much less than that of offline infringement and it is much easier for the infringers to delete evidence of their infringing activities, simply deny any infringement or even disappear when the right holders want to take action. As such, it is very important to have any relevant web pages notarized to preserve the infringement evidence before actions.
Webpage notarization is often conducted by an attorney by using the Notary office’s computer, witnessed by a Notary. The Notary will record the steps regarding how the attorney enters a website, how he or she accesses each second or third-level web pages. The steps taken and the webpages accessed are usually recorded by screenshots which will be later printed out and edited in the notarization certificate, and sometimes the same can also be recorded by a camera which films the whole process and will be later burned onto a CD.
Not only the web pages proving the infringement need to be notarized, web pages which prove the infringers’ identity also require notarization. Information such as the domain name registration data for an infringing website or the online store owner’s identity which is usually available and credible when found in the stores within the major online platforms such as Taobao or Alibaba. Sometimes, during the course of notarization, online chat or even a telephone conversation is necessary to reach the customer service staff to confirm or tactically elicit more useful information. Such online chat and telephone conversation can also be recorded via screenshot, audio or video.
If there are many websites or webpages to be notarized at one time, it is advisable to firstly rehearse all the steps of opening different links and keep a record of such steps before going to the Notary office, just in case some important webpages are missed in the process.
Webpage notarization is quick, easy and not very expensive. Usually, the notarization certificate can be issued in 1-2 weeks. If a CD with audio or video is produced during the notarization, this CD will be sealed in an envelope and given to the attorney for safe keeping. In many cases, webpage notarization is sufficient to prove the infringer’s identity and the infringing activity.
2. Purchase notarization
In some cases, webpage notarization is insufficient to prove either the infringer’s identity or infringing activity. In this case, a purchase notarization might become necessary.
Generally speaking, a purchase notarization is to have a Notary witness and notarize the whole process of purchasing an infringing product. The purchase is usually conducted by an attorney, online or offline, and the Notary’s job is to witness and record the entire purchasing process, to ensure its authenticity. Purchase notarization mainly covers online purchase notarization and offline purchase notarization.
1) Online purchase notarization
If the infringer sells the infringing product online, a corresponding online notarization, much cheaper than the offline purchase notarization, may be considered.
Online purchase notarization generally can be divided into two phases. The first phase is to go to the Notary office and use its computer to place an order and pay the money online to the infringer, while the whole process is recorded by the Notary. The second phase is to go to the Notary office to receive the delivered product. Usually the attorney’s mobile phone and an address nearby the Notary office will be used for receiving the product.
When the courier delivering the product arrives at the address, he will contact the mobile phone of the attorney. Then the attorney will go to the address nearby the Notary office to receive the product, and the process of receiving the product will be witnessed by the Notary. The Notary also takes photos of the product, invoice, name card, brochure, packaging and any other materials delivered together with the product. The whole process will be recorded by the Notary. Then the record of the two phases’ process, including the photos taken, will be edited into one notarization certificate, and the purchased product usually will be sealed in a carton. The invoice, name card, brochure and any other materials obtained in the process will be sealed into an envelope or sealed into the carton together with the infringing product.
If a CD with audio or video is produced during the notarization, such CD will also be sealed in the envelope or carton. The carton or envelop is sealed up carefully by the Notary with a special kind of paper strip, bearing the Notary office’s name, seal and sometimes the sealing date on the paper, as shown in the samples below.
The sealed evidence shall be given to the attorney for safe keeping, but the attorney cannot open the carton and/or envelop by themselves. Usually, the sealed carton and/or envelop will be opened during the court hearing procedure, witnessed by the judges and the opposite party. If the sealed evidence is opened without being witnessed by the judge and/or the opposite party, the specially sealed paper strip will be surely damaged which can be noticed even if it is re-sealed again. If so, the opposite party will surely argue that the carton has been opened up secretly after it is sealed by the Notary, and thereby challenge its authenticity.
Online chat with the infringer’s customer service staff is sometimes necessary for online purchase notarization, just like when we conduct normal online shopping in our daily life. The same as in the webpage notarization, more useful information can be confirmed or obtained during online chat if the attorney plans very well in advance.
Before going to the Notary office to conduct a purchase notarization, it is advisable to have a test purchase and rehearse each and every step, to ensure that nothing will go wrong during the notarization process. For example, in many cases, the name indicated in the invoice will be very important to prove the infringer’s accurate identity, and the most important task for many purchase notarizations is to get such an invoice. In such cases, the attorney needs to chat with the infringers in advance to ensure the invoice with the infringer’s name indicated can be obtained.
Online purchase notarization is more time and cost consuming than webpage notarization, but much less expensive than the offline purchase notarization. Usually, the notarization certificate for online purchase notarization can be issued in 2-3 weeks if the purchased product can be delivered smoothly.
2) Offline purchase notarization
In some cases where webpage notarization and online purchase notarization is not available or insufficient to obtain or consolidate important evidence, an offline purchase notarization, which is more expensive, might become necessary.
Offline purchase notarization often means an attorney or investigator goes to the infringer’s offline stores or even factories to buy the infringing product, accompanied by the Notary, with his identity hidden, throughout the whole process. The whole process, including the date, place, some photos, and even some audio or video secretly taken, will be recorded or edited into the notarization certificate by the Notary.
Usually, prior to the offline purchase notarization, an investigation and/or a test purchase needs to be conducted to learn more about the infringer and the infringement situation. Then the attorney needs to make appointment with the Notary. Most of Notaries are reluctant to conduct offline purchase notarization as they are time consuming and sometimes risky. In addition, only the Notary offices in very few big cities like Beijing, Shanghai, Guangzhou are capable to perform such notarizations. Most Notary offices in small and medium cites will directly decline such requests as they do not have any experience. As such, the number of competent Notaries is quite limited, and it is very important to make appointments in advance.
As offline purchase notarizations might be somewhat risky in some cases, it should be well planned, including a well-designed pretext. The attorney or investigator and the Notary need to be quick-minded persons or even good actors, to reduce risks.
As it is not easy to make appointments with the Notaries, offline purchase notarization might take several weeks to prepare and complete. For some complicated cases, a Notary might be occupied for several days in the process of an offline purchase notarization. This explains why offline purchase notarizations are more expensive than their webpage and online purchase counterparts. Moreover, the same as the above two notarizations, the purchased product, name card, invoice and any other materials obtained during the purchasing process will be sealed in a carton and then given to the attorney for safe keeping.
To sum up, the above mentioned webpage notarization, online and offline purchase notarization are the most commonly used notarizations to preserve and consolidate evidence in IP infringement cases. In many cases, the basic and cost-efficient webpage notarization will be sufficient, but in some complicated cases, the online or offline purchase notarization will be necessary before taking further legal action. Different cases need different notarization strategies, and a good and suitable notarization strategy will be very important for the success of the following legal action.
Notarization in IP infringement Cases in China.pdf
