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New Chinese Trademark Law Amendments: Impact on U.S. Companies' Abilities to Establish and Enforce Rights in China

Recording of a 90-minute premium CLE video webinar with Q&A

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Conducted on Thursday, June 29, 2023

Recorded event now available

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This CLE webinar will guide IP counsel on the new Chinese Trademark Amendments and other recent changes. The panel will address key changes proposed by the Chinese authorities and discuss how they impact legal, as well as business approaches. The panel will discuss considerations when advising about protecting trademark rights in China and will offer best practices for the protection of brands in China and Asia generally.

Description

Many of the brand owners in the U.S. and Western world fall into two main categories: (1) companies that are currently manufacturing/sourcing or advertising/selling to China (or both); (2) companies that are actively thinking and planning to either manufacture or advertise--or both--in China in the near future.

Squatters are rampant within the trademark system in China and cause significant challenges when attempting to obtain and enforce a trademark in China. This behavior impacts not only the brand owner's ability to secure trademark registrations, but also the ability of the enterprise to continue business as usual. A U.S. trademark registration has no legal authority in the People's Republic of China, which makes a trademark registration with the China National Intellectual Property Administration (CNIPA) a prerequisite for conducting any business in China. What can a brand owner do if its trademark is already registered by squatters?

On top of these longstanding issues, in January 2023, the CNIPA released a draft that formally kicked off the fifth amendment to the Trademark Law. With 101 articles (including 74 new/revised ), it is an ambitious draft for the public's consideration. Exactly what are the key changes that brand owners must be aware of and how would these changes impact legal strategies when it comes to trademark protection in China?

During the same month, the Supreme People's Court released its Draft Interpretation of Several Issues Concerning the Application of Law in Handling Criminal Cases of Intellectual Property Infringement. This interpretation from China's highest court will guide the lower courts on criminal IP cases. What is the key message by the Supreme Court and what's the new trend in China IP protection?

The 12th edition of Nice Classification became effective on Jan. 1, 2023, and many newly added terms provide specific coverage for Web3 goods and services. What will be China's reaction and should we expect new descriptions and even subclasses when it comes to NFTs, crypto assets, blockchain, and the metaverse space?

Listen as our panel examines the key changes proposed by the Chinese authorities and discusses how they impact legal, as well as business approaches.

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Outline

  1. Key system differences between trademark laws in China and the U.S. that lead to practical impacts on business operations
  2. Considerations for a brand owner before manufacturing and advertising in Asia
  3. Considerations when advising about protecting trademark rights in China through the International Registration of the Madrid Protocol or nationally-filed application with CNIPA
  4. Key changes proposed by the Chinese authorities and their impact on trademark practice in China
  5. Tips, trends, and suggestions when it comes to trademark litigation, criminal enforcement, and metaverse protection
  6. Best practices for the protection of one's brand in China and Asia in general

Benefits

The panel will review these and other key issues:

  • Key system differences between trademark laws in China and the U.S. that lead to practical impacts on business operations
  • Considerations for a brand owner before manufacturing and advertising in Asia
  • Considerations when advising about protecting trademark rights in China through the Madrid Protocol or nationally-filed application with CNIPA
  • Key changes proposed by the Chinese authorities and their impact on trademark practice in China

Faculty

Chicoski, Jennifer
Jennifer Chicoski
Attorney Advisor, Office of Policy and International Affairs
U.S. Patent and Trademark Office

Ms. Chicoski is an attorney advisor in the United States Patent and Trademark Office (USPTO) Office of Policy and...  |  Read More

Hsiao, Amy
Amy Hsiao

Partner & CEO
Eligon IP

Ms. Hsiao is the Chair of Asia Trademark Practice of her firm (Eligon IP) and also the co-chair of Anticounterfeiting...  |  Read More

Shen, Christopher
Christopher Shen

Senior Partner
NTD Intellectual Property Attorneys

Mr. Shen concentrates his practice in IP strategy counseling, foreign-related IP litigation and administrative...  |  Read More

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