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 Henkel Group in three design infringement lawsuits against Chinese counterfeiters of the client’s iconic design for the “Bref” toilet freshener.
    • Representing a US company manufacturing mobile phone accessories in a patent infringement lawsuit filed by a US competitor in China, concerning devices for holding mobile phone cases.
    • 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.

    Trademark Infringement/Counterfeiting and Copyright

    • Representing a French shoe brand in a dispute with a Chinese troll, including trademark invalidations proceedings, administrative enforcement by raids against the Chinese infringer’s factory and a lawsuit filed against the same counterfeiter.
    • Coordinate all the trademark enforcement actions for the Henkel Group in China. In 2018, we conducted 13 raids and more than 20 investigations of trademark infringement activities by Chinese counterfeiters.
    • 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.
    • 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.

    Trademark Filing and Prosecution

    • Manage the trademark portfolio in China for several European fashion brands, including Clark’s, Tod’s, Furla, Benetton, Roger Vivier, etc.
    • Manage the China trademark portfolio of Henkel Group and several other EU and US brands.
    • Obtained important decisions recognizing the well-known status of several clients’ trademarks in China.

    Education

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

    Languages

    • English
    • German
    • Italian
    • Mandarin
    • Spanish
    • Ranked, WTR 1000: China and SARs: China: Foreign
    • 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, “Multi-National Design Enforcement: The Road to Remedies,” 2018 Designs Conference: The Power of Design Program, London, England, February 26-27, 2018.
    • 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.

    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 Studio – Lexis Nexis, March 9, 2016.
    • Author, “Trademarks anti-counterfeiting in China: Corrupted Enforcement Officials and the Role of Foreign Brands,” IP Frontline, January 27, 2016.
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