Gang Bai

What has been your biggest professional challenge to date, and how did you overcome it?

There have been numerous challenges over the years, which have also provided opportunities. Currently, the biggest challenge is a combination of global geopolitical tension, economic downturn and fast technological changes. In response to uncertainty in regional and global economic prospects, in-house legal departments are facing increasing budget crunches, which in turn squeeze the profitability of law firms.

The changing technology is key to meeting the present challenges and securing long-term prosperity. We are investing in technologies that would allow us to leverage AI, automation and machine learning to cut costs and improve the proficiency of our services. Effective use of technology also frees our practitioners from time-consuming repetitive tasks and allows them to focus on more creative work that adds value for our clients. In addition, building upon our core competencies, we are also branching into new business-growth areas to generate steady revenue streams.

Big events (eg, the 2024 Olympics, UEFA Euros 2024) are taking place this year, with counterfeiting around these expected to surge. How can brand owners prepare and mitigate against this?

Counterfeiting operations are becoming increasingly clandestine. Most counterfeiters have moved to online marketplaces to sell their products; they are leveraging social media and traditional online shopping platforms to reach end consumers and evade the monitoring of brand owners. Also, many counterfeit products are for sale on cross-border online platforms and are shipped out in small quantities through courier services.

We suggest that brand owners take the following steps. First, they need a dedicated database to pool all the available information about the manufacturing and sale of counterfeits in the industry and map out the terrain concerning the network’s operations. Second, brand owners could create an online monitoring programme to police the target platforms on a regular basis and identify repeat offenders and high-profile sellers for further offline investigation and enforcement action. Last but not least, brand owners need to develop a multipronged enforcement approach (ie, administrative raid action, customs interception or civil and criminal proceedings, or a combination of these) targeting different tiers of offenders in the counterfeiting chain.

You have been instrumental in many cases over the course of your career, some of which have been selected by the Supreme People’s Court for its annual collections of exemplary cases. What has been the key to your success, and how do you prepare for high-stakes situations?

I would rank our expertise in law and high degree of client trust among the main factors that contribute to our success. We strive to master the law and its applications, and we often have opportunities to address novel legal issues and contribute to the development of various laws. We are not scholars of law but its practitioners with practical legal issues in mind. The mix of legal expertise and a result-oriented approach has been critical for obtaining client support for our strategy and desired results for our clients.

Effective firm-wide cooperation also contributes to our success. Lawyers are experts when it comes to technicalities. High-stakes situations demand our concerted effort and require an ‘all-hands-on-deck’ approach. I constantly talk about “we” rather than “I” because I am a firm believer in teamwork. Winning a case, particularly a high-calibre one, calls for knowledge and other soft skills like unfailing grit, tenacity, creativity and leadership. You would struggle to find all these valuable traits in just one person.

What inspired you to pursue a career in intellectual property, and what advice would you give to someone considering a similar path?

I have been extremely fortunate to have had likeminded clients and colleagues supporting and inspiring me throughout my career. I have clients that followed me to my own boutique firm in 1999 and have remained with us for 25 years. I have dedicated colleagues who stuck with me in both good and bad times – when we were cash-strapped in the early days, they offered their savings to keep the firm running. They are the cornerstone of my strength and confidence in pursuing the career.

I would like to advise young IP practitioners to overcome the discomfort of marketing themselves. You need to get out there and be bold and visible and be your own advocate. The journey is not always easy, but resilience will carry you through.

How have client demands evolved over the course of your career, and how have you adapted your practice to manage these?

Over the last 25 years, clients have expected responsive, cost-efficient and quality services from our firm. Client demands have evolved and diversified markedly. Nevertheless, we are constantly called upon by clients to advise on high-profile, high-stakes and frontier IP matters. In response to various challenges, we have been adapting our practice to make it client centric, which means that we mobilise firmwide resources and tailor our service team to ensure that client matters are addressed with the necessary interdisciplinary and sector expertise to deliver the desired services within their budgetary constraints. We align our goals and deliverables with client expectations, and we strive to be thorough, supportive, empathetic and flexible. Our ultimate goal is to become the clients’ close and reliable allies, to the point where they trust us like their in-house counsel.

How is your firm keeping costs down in the current economic climate?

Besides the approaches described earlier, we are also expanding in medium-sized cities where we could build a presence and recruit top-tier talent. This approach, among other things, has been helpful in increasing our cost-efficiency.

There has been a renewed focus on GIs in China, with new foreign regulations having taken effect in February. What advice do you have for rights holders looking to protect their brand using this right?

I have been active in the field of GIs in China for many years, representing major rights holders from France (ie, wines and spirits). I can say that we have obtained very good results based on China’s trademark and anti-unfair competition laws. In China, GIs can be registered as collective or certification trademarks and/or as "GI products" under a sui generis registration system. However, when it comes to effective enforcement of GI product rights against misuse, China still lacks strong legal foundations. I would therefore recommend that GI holders consider registering their rights as collective or certification trademarks as well as GI products. I would also recommend that they regularly monitor the trademark gazettes in order to take immediate action against any conflicting applications or registrations.

In your view, what is the greatest challenge currently facing brand owners when it comes to enforcement strategies, and how can they avoid or overcome this?

It is fair to say that brand protection has greatly improved over the last decade. The increased sophistication of infringers that move from simply counterfeiting to infringing and selling the products online makes it more difficult for brand owners. Unlike counterfeiting, infringement is not subject to criminal prosecution. The administrative enforcement authorities that handle infringement are sometimes overly cautious in finding similarities between two signs, which leaves civil litigation as the only recourse for brand owners. Of course, civil litigation has its advantages as well. Brand owners may obtain financial compensation for the injuries caused by the infringing activity.

However, there is a challenge in obtaining adequate compensation for damages. This is because almost all judgments (over 98%) made by civil courts are based on statutory damages, which are awarded at the courts’ discretion and are capped at 5 million yuan. Statutory damages are intended for cases where the plaintiff lacks evidence to prove damages or illegal gains made by the infringer. Because of the difficulties in getting evidence, statutory damages unfortunately become almost the default damages award. There is, however, a glimmer of hope. In response to widespread complaints of low damages, courts are working on improving evidence collection and damage determination. At the same time, the Supreme People's Court has authorised courts – when they are convinced that the size of damages is obviously larger than the statutory limit – to award damages beyond the cap.

How has your membership with organisations such as INTA, the China IP Society and the China Trademark Association contributed to your professional development?

Wanhuida has thrived and benefitted from collaborations with international and national organisations. In 2021, we signed on as INTA’s first-ever Strategic Sponsor. The strategic sponsorship focused on enforcement and anti-counterfeiting, which are key issues for both organisations as they look to protect intellectual property and combat the proliferation of counterfeit goods worldwide. As INTA’s Enforcement and Anti-counterfeiting Strategic Sponsor, we collaborate extensively with the association to help address these critical issues, including raising awareness, sharing thought leadership and educating the IP community and the public.

Last year, we decided to continue the strategic sponsorship with INTA for a second year. INTA hailed the renewal as a milestone that not only solidifies both sides’ commitment to working together to address issues of mutual concern, but also stands as a testament to the support that the firm has shown INTA in China and beyond.

The collaboration allows us to reach a global audience, and share our expertise and best practice in enforcement and anti-counterfeiting with a broader community.

On 27 February 2024 the Supreme People’s Court announced its new case database. How could this platform impact your practice, given the concerns over its transparency?

The reported new case database is only available to the people's courts. I am aware that there were reports raising concerns that this new database may end up reducing the number of court decisions available to the public. Publication of all court decisions has been hailed as a hallmark of progress in transparency and the rule of law. It helps to ensure consistency between decisions, no matter where and when they are made. It also places court decisions under public scrutiny, informs practitioners and IP owners – potential parties before the courts – and educates the public about the meanings of the laws.

China is a member of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). Article 63(1) of the TRIPS Agreement imposes a transparency requirement:

Laws and regulations, and final judicial decisions and administrative rulings of general application, made effective by a Member pertaining to the subject matter of this Agreement (the availability, scope, acquisition, enforcement and prevention of the abuse of intellectual property rights) shall be published, or where such publication is not practicable made publicly available, in a national language, in such a manner as to enable governments and right holders to become acquainted with them.

If the new database results in restricting the availability of court decisions to the public, there would apparently be an issue of TRIPS compliance.

I hope the concerns raised do not materialise. At present, we are yet to see a noticeable impact.