Chang Tsi & Partners Assists High Performance Industries, Inc. (U.S.) in Successfully Combating Intellectual Property Infringement on Cross-Border E-commerce Platform

Source: IPR Daily

Author:Tracy Shen、Leslie Xu、Young Ma、Stephanie Lu Chang Tsi & Partners

In a recent landmark case, ChangTsi & Partners, representing the global automotive tuning giant High Performance Industries, Inc. and its subsidiaries HOLLEY PERFORMANCE PRODUCTS INC., POWERTEQ LLC, MSD, LLC, and APR, LLC, has successfully orchestrated a crackdown on a counterfeit ignition coil operation on Alibaba International Platform. Utilizing combined approaches of AIC complaint and cease-and-desist letter, the rights holder has delivered a decisive blow against intellectual property infringement.

[Case Spotlight] From Suspicious Links to a Decisive Strike

In 2023, the ChangTsi team uncovered that Tianjin Hanjinyongming International Logistics Co., Ltd. was selling multiple counterfeit ignition coils, branded with the client’s DINAN, MSD, and APR marks and logos, at deceptively low prices on Alibaba International Platform. The packaging and trade dress of these infringing goods was a blatant copy of the client’s products, posing a high risk of misleading consumers.

The ChangTsi team swiftly mobilized and executed a comprehensive enforcement strategy:

Strategic Precision: Assessing the client's intellectual property portfolios in China, including trademarks and copyrights, the team identified that the infringement was not limited to trademark misuse but also included the replication of APR logos and the distinctive trade dress of the clients’ products, thereby infringing on multiple legal rights. ChangTsi crafted a bespoke enforcement strategy, aiming to amplify the impact of the infringement crackdown while ensuring the maximum protection of the client's rights.

Efficient AIC Complaint: After solidifying the evidence through website and purchase notarization, the ChangTsi team filed an AIC complaint with the Market Supervision Administration of Hexi District, Tianjin, on behalf of the clients. The team diligently followed up the investigation process, supplemented evidence of ongoing and new infringements, and clearly clarified the facts through multi-departmental cooperation to the officers, thereby accelerating the case's progress, while tracing the source of the counterfeit goods.

The Market Supervision Administration of Hexi District, Tianjin, ultimately issued an administrative penalty decision against the infringer, mandating an immediate cessation of the infringement and imposing a fine, effectively stemming the flow of counterfeit products. This case underscores the resolute commitment of rights holders to defend their interests through the power of the law.

Parallel Cease-and-Desist Letter Yields Compensation: As an export-oriented enterprise, the infringer primarily distributed products overseas via Alibaba International Platform. During the AIC complaint process, the clients discovered that the infringer continued to use the client’s trademarks/ logos in marketing emails sent to Southeast Asian and European markets, some targeting the client's distributors in these regions directly.

To confront the infringer with the full scope of the client's global intellectual property rights and to signal the client's vigilant oversight of the global market, the ChangTsi team dispatched a cease-and-desist letter, taking into account the prevalence of counterfeit goods in international markets. Following persistent engagement and pressure from the Chang Tsi team, the infringer fully acknowledged the client's worldwide intellectual property rights and committed in writing to cease all infringing activities, also providing compensation for the damages incurred due to their infringement.

[Brand's Anguish] The Flood of Fakes vs. The Enduring Battle

Brands such as DINAN, MSD, and APR are benchmarks in the global automotive modification landscape, renowned for their dedication to technological innovation, exceptional performance, and uncompromising quality control.

DINAN: Since its inception in 1979, DINAN has been synonymous with BMW vehicle tuning excellence, and in recent years, it has expanded its expertise to include MINI and Mercedes-Benz. With its industry-leading warranties, quality products, and solid engineering, DINAN has become an emblematic brand among BMW driving enthusiasts.

MSD: The MSD brand has been driving the development of innovative components that helped shape the way cars race and perform. As a pioneer in multiple sparking, capacitive discharge ignitions for engines, MSD has been propelling technological advancements in motorsport for 40-plus years. Its MSD 6 Series ignition system, with its race-proven performance, reigns as one of the most popular aftermarket ignitions in the world.

APR: APR, renowned for its high-performance upgrade solutions for Volkswagen, Audi, Škoda, and Porsche, has emerged as a top-tier brand in the realm of performance enhancements. Its proprietary hardware, software, calibration & data-logging tools for engine and transmission controllers, including intake systems, exhaust systems, intercoolers, turbochargers, suspension systems and brake systems, have earned APR a prestigious standing in the high-performance sector.

Since entering the Chinese market in 2008, these brands have swiftly expanded their reach through a robust authorized dealer network, earning the trust and loyalty of consumers nationwide. However, the shadow of counterfeit products looms large, threatening to tarnish brand reputation and consumer safety as infringers peddle substandard fakes on e-commerce platforms at temptingly low prices.

[Industry Insights] A Declaration of Rights Protection and a Guide to Avoiding Pitfalls

1. Unwavering protection of intellectual property rights is the strategic cornerstone for businesses to cultivate a deep presence in the Chinese market

For High Performance Industries, Inc. and its subsidiaries, this victory in rights protection is of monumental strategic significance. On one hand, it directly safeguards the brand's reputation and defends the industry leadership established by its core technologies. On the other hand, by publicly demonstrating their commitment to rights protection, they send a powerful message to the market, reinforcing the trust in their brand and their authorized distribution network.

Furthermore, rights holders caution market participants to honor intellectual property rights, warning that any infringement will be met with stringent legal consequences. With the support of a professional team, ChangTsi will continue to stand guard, forging an impenetrable shield for clients' intellectual property rights.

2. An "Anti-Counterfeiting" Guide for Consumers

High Performance Industries, Inc. and its subsidiaries advise consumers to purchase through official channels, either via the brand's official website (https://www.holley.com/) or through authorized dealers. Be vigilant against the lure of "price traps", support authenticity, and protect your safety and rights. Additionally, should you encounter any suspicious infringement activities, do not hesitate to report them to ChangTsi & Partners.

Looking ahead, High Performance Industries, Inc. and its subsidiaries will persist in their collaboration with enforcement and judicial authorities to nurture an ecosystem of intellectual property protection, foster the healthy evolution of China's automotive aftermarket, and uphold consumer rights.

Author's Profile

Tracy Shen

Chang Tsi & Partners

Partner | Deputy Director of the Management Committee

tracyshen@changtsi.com

+86 10 88369999

As a partner and Deputy Director of the Management Committee, Tracy Shen directly manages all foreign-domestic IP business and project teams. Tracy Shen graduated from Renmin University of China and pursued further studies at Emory University School of Law. With nearly 20 years of deep expertise in intellectual property (IP) law, her practice spans the entire spectrum of IP rights prosecution, enforcement, and dispute resolution. She is particularly skilled in providing comprehensive trademark protection strategies, infringement investigations and evidence collection, civil litigation, non-litigation IP dispute resolution, trademark criminal enforcement, and a wide range of specialized dispute resolution services.

Clients served by Tracy span various industries, including industrial manufacturing, software & internet technology, apparel, building intelligence and security, banking and finance, commercial wholesale and retail, automotive and chemical, building products and design, sports & entertainment, and medical devices. Her profound professional knowledge and exceptional work ethic have not only earned the trust and praise of numerous domestic and international clients but also garnered high regard from colleagues and peers in the legal community.

Leslie Xu

Chang Tsi & Partners

Counsel | Attorney at Law

LeslieXu@changtsi.com

+86 10 61682668

Dr. Leslie Xu is the head of Shanghai office and a Level II lawyer (senior title) recognized by the Shanghai Judicial Bureau. He has been focusing on intellectual property (IP) related practice and research since 2013. His practice areas cover the overall strategy of IP prosecution and enforcement, trademark and copyright infringement litigation and non-litigation dispute resolution, IP administrative protection, IP due diligence, IP licensing, internet IP protection, domain name dispute resolution, anti-unfair competition, and antitrust. His industry experience spans consumer and retail, manufacturing, leisure and dining, industrial, technology, finance, energy, and new media.

He has helped numerous clients, including Fortune 500 companies and startups, develop comprehensive IP protection strategies and has assisted clients in protecting their IP rights in China through administrative and judicial means. He has successfully represented clients in several challenging and complex IP infringement lawsuits, securing substantial compensation for them. He also focuses on IP protection for Chinese companies expanding overseas and has participated in assisting several leading Chinese enterprises with investment projects in Europe, particularly in Germany. Additionally, he has provided IP due diligence services for investment and merger projects of many well-known multinational companies, as well as antitrust review filings for business concentration cases.

Young Ma

Chang Tsi & Partners

Attorney at Law | Trademark Agent

Litigation5@changtsi.com

+86 10 88369999

Young Ma works as a lawyer and trademark agent with extensive experience in intellectual property rights protection.

Young has know-how in trademark, copyright, and domain name registration and licensing, as well as practical reserves in trademark enforcement, litigation, and dispute resolution. As a licensed lawyer in Chinese Mainland and New York State, USA, she possesses a wealth of knowledge crossing multiple jurisdictions and is adept at providing overall intellectual property protection strategies for clients, maximizing their interests. Her clients come from various fields, including Retail & E-commerce, Transportation & Mobility, Life Science, Construction, and Consumer Products.

Stephanie Lu

Chang Tsi & Partners

Attorney Assistant | Trademark Agent Assistant

+86 10 88369999

Stephanie Lu is a legal assistant and trademark agent assistant at Chang Tsi & Partners. Her practice mainly focuses on the rights protection in the field of intellectual property, including trademarks, copyrights, and domain names, as well as customs matters, AIC complaints, and litigation and dispute resolution related to intellectual property protection and anti-unfair competition. Since joining Chang Tsi & Partners, Stephanie has been involved in formulating trademark protection strategies for several well-known multinational companies. She has assisted with the intellectual property protection, prosecution & enforcement for numerous transnational corporations operating in China. Her clients span a variety of industries, including cross-border e-commerce, automotive, construction, consumer electronics, and fast fashion, providing them with tailor-made professional legal services.

Source: IPR Daily

Author:Tracy Shen、Leslie Xu、Young Ma、Stephanie Lu Chang Tsi & Partners