Chang Tsi & Partners | View firm profile
Illinois Tool Works Inc. and its Chinese subsidiary ITW Performance Polymers (Wujiang) Co., Ltd. (collectively “ITW”),place great emphasis on protecting intellectual property rights and spare no effort in combating counterfeit and infringing products to safeguard the market. DEVCON is one of ITW’s famous brands for adhesive products.
Tracy Shen, Partner of Chang Tsi & Partners, and her team members Hermione Zhang, Mia Zhou entrusted by ITW, have been providing long-term legal services to protect ITW’s IP rights in China. Recently, this legal team closely collaborated with ITW’s legal and business team, employing multi-faceted strategies through administrative, criminal, and civil channels to address and dismantle the networks involved in counterfeit DEVCON products. The team’s efforts, supported by local authorities, have led to significant legal actions against all parties involved in the infringement chain, including the main distributor, Shanghai Songze Trading Co., Ltd., and other downstream participants (Mr. Zhang and his controlled companies, Sichuan Qinyuan Environmental Engineering Technology Co., Ltd., and another Sichuan company). Notably, Shanghai Songze, an old and stubborn infringer, received deserved punishment in this case. This case has significant implications for combating trademark infringement, especially those involving long-term, complex counterfeit chains and stubborn infringers. It also demonstrates ITW’s determination to crack down on infringers, purify the market, and protect their intellectual property.
Detailed Case Analysis
In 2020, ITW discovered that a Sichuan company sold a large quantity of suspet counterfeit DEVCON to a local end user. ITW found no sales records of such products to this Sichuan company, and on-site identification confirmed that the DEVCON products were counterfeits. Tracy Shen and her team meticulously crafted a strategic plan, which included notifying the local market supervision bureau and effectively collaborating with them to trace the counterfeit products back to their source at Sichuan Qinyuan, controlled by Mr. Zhang.
The severity of the case met the threshold for criminal prosecution under Article 214 of Chinese Criminal Law, leading to a criminal investigation by the Public Security Bureau (PSB). During the PSB’s investigation the stream of the countefeits were uncovered, and the main facts and the right owners efforts resulted in a conviction by the People’s Court of Yilong County, Sichuan Province. The court convicted Mr. Zhang and Sichuan Qinyuan Environmental Engineering Technology Co., Ltd. of selling goods bearing counterfeit registered trademark, sentencing Mr. Zhang to one year in prison, with a suspended sentence of one year and six months, and imposing fines and confiscating illegal gains.
Chang Tsi & Partners’ strategic insight prompted ITW to extend legal actions to include upstream suppliers of the counterfeit goods. After reviewing the criminal case files in detail and identifying the upstream suppliers, the firm advised ITW to file a civil lawsuit targeting all infringers in the chain, especially holding Shanghai Songze accountable. In April 2024, the Intermediate People’s Court of Leshan City ruled in favor of ITW, ordering the cessation of infringement and awarding RMB 310,000 in damages and reasonable expenses.