What is a counterfeit?
Such reproduction/imitation is illegal when an Intellectual Property Right (IPR) is infringed, inter alia:
- a registered trademark or trade name
- and/or an unregistered proprietary right for the "trade dress" or "get-up" or designation of a product
- and/or a patent, utility model
- and/or design right/design patent and/or a copyright
The IPRs listed above are infringed if any of the following occurs:
- Registered trademark or trade name: the copy products bear a mark or other designation which is identical or confusingly similar to that of a product with a registered trade mark or trade name.
- Unregistered "trade dress" / "get-up" / designation: these terms designate the copy products which have a form and visual appearance, or bear a designation which are recognized by the public as distinctive and hinting to a specific producer. The public may therefore be led to the erroneous belief that the copy products come from the same source as the original products.
- Patent, utility model, design right: here one or more parts of the original product are protected by valid patents and/or utility models and/or design rights (in the U.S. called design patents), and these protected parts show up in the copy product.
- Copyright: the copy product is a text (brochure, book, pamphlet, manual etc.) or picture or film or sound or computer software or technical document and drawing2, which is basically identical with the original product.
What are clones?
The following terms do not define a counterfeit product, but may define a product that could be of concern for similar reasons:
Clone – a product that is a close copy of a product, but is not represented as a product manufactured by the original manufacturer. These products bear the name or trademark or the original manufacturer, but are typically represented as “equivalent” to the original products. These products may be infringing on SE intellectual property.
Remanufactured/Reconditioned/Refurbished – a product that originated as a legitimate product, but has since been altered or remanufactured by another entity. These products may be represented to customers as original products and they may retain the original label/trademark giving the customer the impression that they are unmodified originals. There are instances where remanufacturers have counterfeited labeling to make the product appear as new.
Shadow Companies in Hong Kong
Increasingly people incorporate companies in HK whose names include registered trade mark of Schneider in Chinese characters that do not belong to them. Those so-called shadow companies largely impact Schneider Electric China (hereafter referred as to "SEC") business by requesting Chinese factories to manufacture infringing products and distributing, exporting such infringing products. Since their company names include the registered trade mark "Schneider in Chinese characters", customers and authorities are confused and believe they are related to the right owner, Schneider Electric.
Currently, there are 189 such shadow companies incorporated in HK using "Schneider" Chinese character mark as the dominant part of their company names, and the number of such shadow companies is rapidly increasing every year. Good news is that the 2010 HK Companies Ordinance came into effect on 10 December 2010, under this Ordinance, the Companies Registry can direct a change of company name to the one without using "Schneider in Chinese characters" based on Court Order. It is very efficient to take actions against shadow companies now.
SEC is working hardly to solve this issue by taking the following steps: sending warning letter to the shadow companies requesting changing their names; striking off those shadow companies which failed to file annual return for three consecutive years; filing legal proceedings against those which do not cooperate by changing their names; and complaint with Hong Kong Companies Registry to issue formal directions." We hope SEC could send clear signal to those infringers and their registration agent: "Schneider care about our IP rights, we are taking actions against "shadow companies"; you will need to stop further infringement now!"