Protecting and Licensing Trademarks in China
Safeguarding Brands and Marks in the Global Marketplace
Recording of a 90-minute CLE webinar with Q&A
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.
- Trademarks in China
- Protecting IP before entering China
- Registration in China—how many classes?
- Limitations of protection
- Domain names
- Necessary licensing agreement clauses
- Recordal of license agreement
- License your OEMs?
- Trademark litigation and lessons learned
- Ferrero-Rocher and Starbucks
- Pfizer cases
- Silk Street Market cases
- Chongging Zhentong Pharmaceuticals Ltd.
- Zhejiang Blue Wild Liquor Co. v. Shanghai Pepsi Cola
- Sony Ericsson
- Danone v. Wahaha
- Enforcement of trademark rights
- Administrative enforcement
- Enforcement in the courts
- Local protectionism and jurisdictional issues
- Best practices
- Audit IP assets before entering Chinese market
- Register marks in China in English and Chinese early on
- Monitor the Chinese marks in China
- Find the right partner in China
- Establish good relationship with AIC and police
- Procedures to address when counterfeit goods are discovered
- Use mix of enforcement strategies
- Develop reliable local resources
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?
Paul D. Jones
Jones & Co.
He advises on national and multi-jurisdictional trademark and domain name applications and disputes, as well as... | Read More
He advises on national and multi-jurisdictional trademark and domain name applications and disputes, as well as copyright matters including software and entertainment matters, and patent disputes. His article on protection of Chinese character trademarks was chosen by the Republic of China IP Office's Director General for teaching material.Close
Benjamin P. Fishburne, III
Winston & Strawn
He advises U.S. and non-U.S. clients on investment, acquisitions, technology transfer, business ethics, and major... | Read More
He advises U.S. and non-U.S. clients on investment, acquisitions, technology transfer, business ethics, and major infrastructure projects in many countries, including China. He also represents clients in international dispute resolution and is a member of several panels of arbitrators.Close
Registered Foreign Lawyer
Winston & Strawn
His practice focuses on foreign direct investment, cross-border mergers and acquisitions, corporate... | Read More
His practice focuses on foreign direct investment, cross-border mergers and acquisitions, corporate restructuring, and tax. He has a thorough understanding of PRC legal and tax issues. He has extensive experience in advising international corporations in setting up business in the PRC.Close
Alston & Bird
He focuses his practice on international intellectual property litigation and client counseling. He has served as... | Read More
He focuses his practice on international intellectual property litigation and client counseling. He has served as lead counsel on cases before U.S. district courts and state courts concerning patent, trade secret and licensing disputes. He also has arbitrated cases, both in the United States and abroad, involving licensing and technology transfer disputes.Close