Protecting and Licensing Trademarks in China

Safeguarding Brands and Marks in the Global Marketplace

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


Conducted on Wednesday, November 18, 2009

Program Materials

This seminar will discuss registration and licensing of trademarks in China, enforcement of trademark rights, and best practices for protecting trademarks for businesses either entering the Chinese market or already doing business there.

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.

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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?

Faculty

Paul D. Jones
Paul D. Jones

Principal
Jones & Co.

He advises on national and multi-jurisdictional trademark and domain name applications and disputes, as well as...  |  Read More

Benjamin P. Fishburne, III
Benjamin P. Fishburne, III

Partner
Winston & Strawn

He advises U.S. and non-U.S. clients on investment, acquisitions, technology transfer, business ethics, and major...  |  Read More

Edward Xu
Edward Xu

Registered Foreign Lawyer
Winston & Strawn

His practice focuses on foreign direct investment, cross-border mergers and acquisitions, corporate...  |  Read More

Yitai Hu
Yitai Hu

Partner
Alston & Bird

He focuses his practice on international intellectual property litigation and client counseling. He has served as...  |  Read More