Dr. Paolo Beconcini consults companies seeking protection for their IP rights in China and legal action against infringers, advising on issues of law and enforcement, conducting evidence gathering and piloting their cases through the Chinese legal system.

A sought-after authority on IP protection and litigation in China, Paolo manages the trademark, copyright and design portfolios of European and US clients, conceives and implements IP litigation strategies, regularly appears in Chinese courts and attends IPR administrative and police raids on counterfeiters. His record of success in patent and trademark infringement lawsuits includes landmark cases designated "case of the year" by several IP journals. He leads business intelligence teams that pursue evidence of counterfeiting operations, particularly concerning automotive, fashion and consumer goods.

He is frequently invited to speak at conferences devoted to the growing field of Chinese IP, and has been actively involved in field projects, including trademark and patent enforcement training programs for Chinese civil servants. Paolo is regularly interviewed on China IP matters by media around the world such as The Wall Street Journal, CNN, BBC, The Times, Bloomberg, La Tribune and Il Sole24 Ore, to name a few.

In China, where intellectual property disputes routinely involve multiple cultures, Paolo’s fluency in five languages, including Mandarin, helps him navigate international borders, and creates confidence in his clients. Paolo represents US and European clients in confronting the myriad cross­cultural challenges – legal, commercial, political – that threaten patent and trademark assets.

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Patent and Design Infringement

  • Representing a US brand selling outdoor furniture in a cross-border US-China litigation against another US competitor and its Chinese suppliers. The case revolves around the infringement of the design rights of his client on outdoor furniture. It involves several parties and two major lawsuits in China and the US. The matter is still pending.
  • Representing a US car maker in the investigation and enforcement of an infringement of a design patent over the outer design of a commercial vehicle by a Chinese competitor.
  • Neoplan v. Zonda – When the client's award­winning luxury bus design was copied by Chinese competitors, Paolo's team gathered evidence against the infringers, successfully defended five patent invalidation proceedings and managed the high-profile media aspects of the case, resulting in an award of €2.5 million in damages. This remains the largest award to date for a design patent infringement action in China. The case was named 2009’s “case of the year” in several international IP journals.
  • Harting & Co. KG v. Sibas – The patent for a best-selling electronic connector was infringed by a Chinese company, which was about to be acquired by an American competitor of a German client. The client’s continued market leadership was at stake. The team obtained solid proof both of the infringement and of illegal profits made by the infringer. In court, the legal team overcame difficulties arising from unclear drafting of the patent and from the need to resort to several complex infringement theories, including the "exclusive functional relation" of electronic components. The Shanghai court ruled for the client, ordered cessation of the infringement and awarded damage compensation. The result was also instrumental in convincing the US competitor to abandon its proposed merger, allowing the client to maintain a solid lead in the market.

Trademark Infringement/Counterfeiting and Copyright

  • Representing a German chemical company in a trademark enforcement action in South China against a former distributor. The dispute focuses on the former distributor’s illegally appropriating of the client’s trademarks and business secrets. Action is still pending.
  • Successfully raided more than 18 factories and warehouses in China manufacturing and storing more than 10,000 fake auto parts of a famous car part maker from Europe during 2017. Two of these cases are heading to a criminal trial and civil litigation for damage recovery will follow, given the seriousness of the infringements.
  • Successfully raided more than 17,000 fake shoes of an Italian shoe brand in the course of 2017. Three of the relevant raids have been concluded with the criminal trial and conviction of the infringers. One of these cases has then been litigated before a civil court in South China and the client has been awarded more than €30,000 in damages.
  • Represent a US/Swiss client in the telecommunication business in a complex cross-border infringement of a copyrighted software regarding encryption of mobile communications. The case was litigated both in China and in Singapore. Case is awaiting judgment, which is expected in January 2018.
  • Winning a landmark copyright lawsuit in Shenzhen to protect the outer shape of a bag on behalf of an Italian fashion brand. The lawsuit validated the copyrightability of the three-dimensional embodiment of copyrighted drawings of a bag.
  • Automotive Counterfeit Matter – After orchestrating the seizure of 4,000 counterfeit tire rims – market value: over US$1 million – Paolo's team pursued parallel civil and criminal actions, on behalf of a major automotive client, against a counterfeiting operation based in the small Chinese town of Huangshi. The infringer, an influential force in the town, brought pressure on local authorities to be released without punishment in exchange for destruction of the counterfeit goods, but it was decided that criminal charges and compensation damages would be sought. Despite numerous challenges in court – including the need to prove the well­known status of the trademark and the illegal profit made from sale of the goods – the infringer agreed to settle and pay the full damages demanded.
  • Organized and orchestrated the raid of an underground factory and the seizure of over US$3 million in counterfeit bags. Relying on both its strong evidence-gathering capabilities and its good relations with local law enforcement, the team’s efforts led to the arrest of five individuals, with lengthy jail terms.

Education

  • University of Florence, LL.M.
  • University of Florence, B.A.

Languages

  • English
  • German
  • Italian
  • Mandarin
  • Spanish
  • Anti-counterfeiting consultant to Interpol Illicit Trafficking and Anti-Counterfeiting Division
  • Consultant to Italian Custom Police on China IP-related matters
  • Consultant to the Danish Patent and Trademark Office on China IP-related matters
  • Consultant to the EU China IPR SME Desk

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Speaking Engagements

  • Speaker, "IPR Protection in China," Association of Corporate Counsel APAC, September 12, 2017.
  • Speaker, "IPR Protection in China," Association of Corporate Counsel of Orange County, California, August 19, 2017.
  • Speaker, "IPR Protection in China," Association of Corporate Counsel of Los Angeles, August 17, 2017.
  • Presenter, "IP Rights Enforcement in China," Dutch Embassy and the Benelux Chamber of Commerce, Beijing, October 26, 2015.
  • Presenter, "China Update on Trademarks – Developments in Law and Practice," Danish Patent and Trademark Office, Taastrup, Denmark, October 8, 2015.
  • Presenter, "Trademark Enforcement – How to Succeed in China," International Chamber of Commerce, Paris, October 5, 2015.
  • Presenter, "Fighting Machine Copiers in China," German Association of Mechanic Industries, Beijing, September 25, 2015.
  • Co-presenter, "Product Liability in the New Consumer-Centered China," The AmCham China, Beijing, China, September 16, 2015.
  • Presenter, "China IP Protection," Luxury Law Summit, London, May 2015.
  • Trainer, "Police Operation Real 3 – Training and Build Up Session," Interpol Operational Training, South Korea, April 21-23, 2015.
  • Presenter, "Counterfeiting from the East," Barzano & Zanardo's Biennial Conference, Vicenza, November 19, 2014.
  • Presenter, "Trademark Opposition system in China in light of the new Trademark Act of May 1, 2014," The International Trademark Association (INTA) Roundtable, Vicenza, November 18, 2014.
  • Presenter, "Enhancing and Protecting Brand Value in the Global Marketplace," Bucerius IP Conference 2014, Hamburg, October 2, 2014.
  • Presenter, Luxury Law Summit 2014, organized by The New York Times, Herald Tribune and Global Legal Post, London, May 21-23, 2014.
  • Presenter, Fashion Law Symposium, University of California, Hastings College of Law, San Francisco, February 28, 2014.
  • Presenter, "IP Protection for SME's in China," Benelux Chamber of Commerce, Beijing, China, October 24, 2013.
  • Presenter, "China brand protection," Luxury Law Summit 2013, organized by The New York Times, Herald Tribune and Global Legal Post, London, May 22-23, 2013.
  • Presenter, Product Liability Conference, British Institute for International Comparative Law, London, May 21, 2013.
  • Lecturer, "China IP Law," University of California, Hastings College of Law, San Francisco, March 2013.
  • Presenter, Global IP Summit Convention 2013, Bengaluru, India, January 23-30, 2013.

Publications

  • Co-author, Design Rights: Functionality and Scope of Protection, Wolters Kluwer, September 2017.
  • Author, "Rules of Engagement: Trademark Strategies, Protection and Enforcement in China," Kluwer Law International, November 2016.
  • Co-author, "Design Rights: Functionality and Scope of Protection," published by Wolters Kluwer for the AIPPI Series, September 2016.
  • Co-author,"Trade Secret Protection in China: Lack of Regulation or Know-How Mismanagement?" IP Licensing Journal, Wolters Kluwer, Vol.36, no.3, March 2016.
  • Co-author,"Potential Threats Behind a Joint Patent Application in China – Caveats for Foreign High-Tech Companies Dealing with Chinese Research Institutes," Legal StudioLexis Nexis, March 9, 2016.
  • Author,"Trademarks anti-counterfeiting in China: Corrupted Enforcement Officials and the Role of Foreign Brands," IP Frontline, January 27, 2016.
  • Co-author, "New Chinese Advertising Law: A New Weapon Against Counterfeiting," Legal Studio – Lexis Nexis, September 15, 2015.
  • Co-author, "The Final Impression Counts: Seeking Common Ground in the Design Patent Infringement Analysis," Journal of the Patent and Trademark Office Society, September 2015.
  • Co-author, "The Rise of Counterfeit Alcohol in China," Asia IP, April 2015.
  • Author, "Improving Administrative Enforcement Efficiency in China: The Latest SIPO Draft on Patent Administrative Enforcement Rules and Its Effects on E­Commerce," The Licensing Journal, April 2015.
  • Author, "Napoleonic Warfare and IP Protection in China," Mondaq.com, March 11, 2015.
  • Co-author, "Counterfeit Alcohol – Coming Soon to a Glass Near You?" IP Frontline, February 19, 2015, and Mondaq.com, March 4, 2015.
  • Author, "The Role of Trademark Opposition in the Protection of Brands in China in Light of the New Trademark Law," IP Litigator, January/February 2015.
  • Author, "How To Protect IP When Selling TV Formats To China," Law360, October 6, 2014.
  • Author, "Online Marketplaces' Liability for Counterfeiting: a Comparative Overview of the American, European, and Chinese Legal Systems," IP Litigator, September/October 2014.
  • Co-author, "E­Commerce Platforms as Nests for Counterfeiters," IP Frontline, August 12, 2014.
  • Author, "A Look at Proposed Changes to Chinese Copyright Law," Law360, August 4, 2014.
  • Author, "An End to Trademark Grabbing and Trademark Troll in China," The Licensing Journal, May 2014.
  • Author, "A Look at Proposed Changes to Chinese Copyright Law," Law360, August 4, 2014.
  • Author, "An End to Trademark Grabbing and Trademark Troll in China," The Licensing Journal, May 2014.
  • Author, "Trademark Counterfeiting in China and Manufacturers' Product Liability Worldwide," IP Litigator, Vol. 20 No. 2, March/April 2014 – Wolters Kluwer, April 2014.
  • Author, "Brand Protection and the New China Trademark Law," IP Litigator, Vol. 20 No. 1, January/February 2014 – Wolters Kluwer, February 2014.
  • Author, "Trademark Counterfeiting in China and Manufacturers' Product Liability Worldwide," Global Legal Post, February 7, 2014.
  • Author, "Protecting Against Online Counterfeiting," The Licensing Journal, Vol. 34, No. 1 – Wolters Kluwer, January 2014.
  • Co-author, "Protection of Pattern Trademarks from Non­Use Cancellation In China," IP Frontline, January 21, 2014.
  • Author, "How Insurers Can Recover Domestic Product Liability Losses For Products Manufactured In China," Mondaq, December 11, 2013.
  • Author, "Are Chinese OEM's Still Copying Western Car Design?" Automotive Megatrends, December 2013.
  • Author, "Patent Protection and Enforcement in China," The Economist, Special Report, November 19, 2013.
  • Author, "An End to Trademark Grabbing?" Global Legal Post, October 21, 2013.
  • Author, "Waste Disposal in China: IP, Product Liability Strategies," Law360, September 18, 2013.
  • Author, "AQSIQ, a New Anti­counterfeiting Star in China?" Global Legal Post, August 12, 2013.
  • Author, "Working with Taobao Against Fakes," Global Legal Post, August 15, 2013.
  • Author, "Auto Brands Must Confront Counterfeiting in China," Automotive World, January 3, 2013.
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