Protecting and Licensing Trademarks in China

Description

U.S. companies feel the impact of changing intellectual property regulation in China. Protection and enforcement of IP rights continues to pose significant problems for U.S. businesses working in and with China.

To protect brands and trademarks, companies doing business in or with goods in China must create and execute a strategy tailored specifically for China. Registration and licensing of trademarks are among the effective tools that companies must incorporate in their strategic plan.

What other steps can companies take to protect and enforce their trademark rights when planning to enter the Chinese market, conduct business in or with China, or simply protect their IP from counterfeiting or other infringement from Chinese sources?

Listen as our authoritative panel of IP attorneys with China experience examines trademark protection both prior to entering and while conducting business in China, trademark licensing issues, and lessons learned from trademark litigation.

Outline

1. Trademarks in China
   1. Protecting IP before entering China
   2. Registration in China—how many classes?
   3. Limitations of protection
   4. Domain names
2. Licensing
   1. Necessary licensing agreement clauses
   2. Recordal of license agreement
   3. License your OEMs?
3. Trademark litigation and lessons learned
   1. Ferrero-Rocher and Starbucks
   2. Pfizer cases
   3. Silk Street Market cases
   4. Chongging Zhentong Pharmaceuticals Ltd.
   5. Zhejiang Blue Wild Liquor Co. v. Shanghai Pepsi Cola
   6. Sony Ericsson
   7. Danone v. Wahaha
4. Enforcement of trademark rights
   1. Administrative enforcement
   2. Enforcement in the courts
   3. Arbitration
   4. Local protectionism and jurisdictional issues
5. Best practices
   1. Audit IP assets before entering Chinese market
   2. Register marks in China in English and Chinese early on
   3. Monitor the Chinese marks in China
   4. Find the right partner in China
   5. Establish good relationship with AIC and police
   6. Procedures to address when counterfeit goods are discovered
   7. Use mix of enforcement strategies
   8. Develop reliable local resources

Benefits

The panel will review these and other key questions:

• What clauses are generally required for a trademark license agreement in China?
• What are the key IP enforcement, protection and registration issues in China for trademark owners?
• What are the advantages and disadvantages of using civil enforcement to enforce trademark rights?
• What steps can U.S. companies take to protect their brands against trademark infringement?

Webinar/Teleconference

Strafford webinars/teleconferences offer several options for participation: online viewing of speaker-controlled PowerPoint presentations with audio via computer speakers or via phone; or audio only via telephone (download speaker handouts prior to the program).  Please note that our webinars do not feature videos of the presenters.

CLE Credit

Strafford's live seminars qualify for CLE in every state that accredits webinars. They offer you a high quality, cost effective, and convenient CLE option, with no lost travel time or expenses.

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