The importance of evidence in intellectual property (IP) cases is self-evident. Whether the evidence is comprehensive and irrefutable has an important impact on the trend of the case and the amount of compensation. However, the most difficult link in intellectual property cases is evidence fixation.

Evidence to be provided/fixed

In IP cases, when the obligee brings a lawsuit against an infringement act, the evidence to be provided mainly includes that of right basis, infringement and damages.

The evidence of right basis is the basis of litigation. It usually includes right registration and registration certificate (such as copyright registration certificate, trademark registration certificate and corresponding renewal certificate, transfer certificate, change certificate, patent certificate, authorisation notice), licence contract, source document of works, and technology development contract.

Evidence of infringement is the core for determining the trend of case, and also the focus for evidence collection in IP cases. The infringement on IP is usually quite covert, and infringers are very vigilant. Therefore, it is necessary to carefully design and arrange the steps of obtaining evidence before obtaining it, and to obtain evidence from multiple aspects as much as possible, so as to make evidence corroborate other evidence, forming a complete chain. The forms of evidence to be fixed vary for different cases. In addition to the conventional evidence fixation methods of notarisation on purchase, website notarisation, etc., evidence of various forms need to be combined to provide support for infringement claims.

The evidence of damages is a difficult point for evidence collection in IP cases. Since it is difficult to provide evidence about the losses of the oblige, and the profit of the infringer, the court mostly determines the amount of compensation according to the infringement circumstances, the infringement consequences, and infringement malice in judicial practice.

The obligee can provide evidence about its market popularity, the infringer’s subjective malice, the publicity and promotion information of infringing products, and network sales data as a reference basis for the court to determine the amount of compensation. At present, the trend in favour of the obligee is that in some cases, if the obligee has tried its best to provide preliminary evidence, and the infringer does not co-operate with the court in obtaining evidence, the court may rule the infringement compensation to the amount in favour of the obligee, which reduces the difficulty for the obligee to obtain evidence about infringement compensation, and is more beneficial to the right protection of the obligee.

Fixation methods

In practice, the selection of specific evidence fixation method should be considered in combination with the case background, the difficulty for obtaining evidence, the importance of evidence, etc.

Generally speaking, the evidence fixed by notarisation has higher probative force. The forms of notarisation are various, such as website notarisation, on-site notarisation, sample purchase notarisation, and recorded notarisation, and all are important means for the obligee to fix the evidence. However, notarisation also has problems such as high costs, strict application procedures and long certificate issuing time, which may not be the best choice for urgent evidence fixation.

In addition to notarisation, electronic evidence such as recording, photographing and video-recording from webpages and mobile phones can also be fixed by means of a trusted time stamp, which has been recognised as key evidence in many judicial trials. Although its soundness is slightly inferior to that of notarial evidence, it can be used as an alternative way to fix evidence in case of an emergency or a limited budget.

In addition to evidence collection and fixation conducted by the obligee, it can also request the public authority to intervene in the infringement evidence fixation. For example, evidence can be obtained through customs seizure, and investigation and punishment by the Administration for Market Regulation departments.

The obligee can also directly apply evidence preservation to the court. However, relying on public power to obtain evidence that may be successful is not under the control of the obligee, so it is appropriate to make it a supplement to the evidence obtained by the obligee itself, rather than rely solely on the court to retrieve the evidence.

Impact on the case

Whether the fixed evidence is irrefutable and comprehensive, and whether it can form a complete evidence chain, often play a decisive role in the result of a case. In addition to choosing the appropriate evidence fixation method, the legitimacy and rigour of evidence fixation process are also very important.

Even though the evidence is fixed by notarisation, if the notarisation steps are defective and the information is not complete, the authenticity of the contents and the probative force of the evidence will be questioned. Therefore, rigorous evidence collection steps can avoid, to the greatest extent, a situation where the evidence cannot be recognised due to the defects of evidence.

After the evidence is fixed, the obligee has more choices for action. Even though no legal action is taken to protect rights instantly, if the negotiation between the obligee and the infringer breaks down, or the infringer does not co-operate after a warning, the obligee can still file a lawsuit based on the fixed evidence.

Evidence fixation also plays an important role in the cases of confirmation of rights. For example, in the procedure of trademark opposition and trademark invalidation, the quantity and quality of evidence provided by the opponent, or the invalidation applicant, to prove that the disputed trademark infringes on its prior rights, or if there is a malicious rush registration application, will affect the examiner’s judgment on the case. In the procedure of the system for cancellation of registered trademark without use for three years, the use evidence provided by the trademark owner is directly related to the survival of its trademark.

To sum up, evidence fixation is the key to winning a case. Given that the complexity and professionalism of IP cases, evidence collection and fixation usually need the professional guidance of lawyers. The success of evidence collection is also inseparable from the assistance of the parties concerned, whose understanding of case background, infringement subject and industry is very important for the design of evidence collection steps. Only when both parties fully communicate and co-operate can they ensure the smooth development of evidence fixation, and the quality of evidence, to the greatest extent.

This article was originally published in China Business Law Journal.


Head of Shanghai Pacific Legal, Partner, Intellectual property, Antitrust and competition