Paolo Beconcini

Patent, Trade Secret and Design Infringement

• Representing a French company specializing in manufacturing complex production machinery for aviation components in a trade secret infringement case in China.
• Representing a world leading Italian company in mechanical components for furniture in patent infringement and patent invalidation lawsuits in China.
• Advised a US corporation regarding trade secret theft by a former employee based in China.
• Representing a leading German tool manufacturer and distributor in a cross-border patent infringement matter originating in China and expanding to several European countries.
• 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 award­-winning 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 Harris Tweed Authority in its anticounterfeiting investigations and enforcement in China.
• Representing Major League Baseball (MLB) in its anticounterfeiting enforcement activities in China; led nearly 200 successful administrative and criminal raid actions in 2023.
• Representing MF-Brands (Lacoste) in anticounterfeiting investigations and enforcement in the US.
• Representing Diesel SpA in several trademark enforcement matters in China and Hong Kong.
• Coordinating and conducting all investigation and IP enforcement in China for a German cosmetic brand; this includes dozens of civil lawsuits following from police raids. Handling approximately 100 investigation and enforcement matters annually.
• Represented Valentino SpA in several trademark infringement lawsuits in China, including a significant lawsuit that was favorably settled in our client’s favor.
• Representing fashion brand Roberto Cavalli in trademark infringement investigation and enforcement.
• Representing a well-known English shoe brand in all trademark enforcement matters in China.
• 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.
• Coordinated, for three years, all the trademark enforcement actions for the Henkel Group in China. In 2018, we conducted 16 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 coordinated and conducted an extensive criminal enforcement operation in Eastern China which resulted in raids on several factories by the Chinese police. The operation resulted in the arrest of a dozen individuals and the seizure of almost 100,000 pieces of fake cosmetic products on behalf of our client.
• 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.