Ray Lei Zhao

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

When I first graduated from law school, China’s legal industry had entered an era of professional division into several practice areas. Thus, the specific choice of direction for a young lawyer required careful consideration.

When choosing the exact legal field that I wanted to practice, I found that intellectual property seemed to be a promising industry that had the potential to emerge like the rising sun. As I enjoy learning new things, taking challenges and having a fast-paced working rhythm, I believed that intellectual property would be the ideal choice. Even after more than 20 years of practice, I still think that I made a great decision and I am still enthusiastic. Being an IP lawyer is not just a profession for me, it is something I will always do. 

For others who are considering a similar path, my advice would be to make sure that you have passion and curiosity for the field. Intellectual property is fascinating and it is a good career choice for young lawyers who love exploring. You need to make sure that you are willing to learn new things and take on challenges in your life. 

IP firms globally are exploring how AI tools can benefit their practice. What advice do you have for those trying to incorporate this rapidly evolving tech into their work?

I fully agree that AI tools should be incorporated into our work, as they will help lawyers to do repetitive tasks much quicker and more efficiently. I also think that using AI tools will become increasingly common in law firms. IP firms should embrace the development of AI technologies and make full use of these to improve our services to clients.  

However, there are still many tasks that generative AI cannot do that only humans can. Complex aspects of legal practice require human expertise, empathy and judgement, such as client and strategy development and interaction. Embrace AI technologies but do not depend on them too much. When using AI technologies, we should also explore what we can do better ourselves and how to improve our own skills. 

In your view, what makes a strong trademark team, and how do you go about building one?

A good team brings individuals together to work productively and efficiently towards our goals. In my opinion, a strong trademark team is built on leadership, good people, common goals, team spirit, an incentive policy and good enforcement that yields the best performance. 

First and foremost, we need a good and responsible team leader to define team goals, provide motivation and organise daily work. I always think that leadership is a process of self-development. In my efforts to be a good leader, I am always trying to step outside of my comfort zone and be willing to face adversity at the front line. I also create opportunities for team members to communicate with each other and I always try to be trustworthy . 

Good people with talent and a sense of responsibility are crucial. I build my team with the most talented and equipped young lawyers who are willing to dedicate themselves to their careers and be responsible for the client’s business. They also have good communication skills, both with other team members and our clients. Every day they contribute creativity and generate new ideas, providing constructive feedback to each other and me in order to make our team better. 

Commitment is closely related to motivation, enthusiasm and engagement, and it is driven by common goals and team spirit. As a team leader, I need to set up common goals and build the culture for my team members. 

I also establish an incentive policy in my team to encourage them to improve, explore, compete and perform better. 

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

Client demands are becoming increasingly diversified. To adapt our practice, we are building knowledge and learning actively throughout our careers. We have a strong will to explore unfamiliar fields; we never stop learning and equipping ourselves, and utilising what we have added to our services in a timely manner. We are also developing our dedication and sense of responsibility to provide clients with the best services, taking their businesses on as our own. We consider things thoroughly from the client's point of view and provide comprehensive strategies and advice instead of simply answering their questions.

You have amassed extensive prosecution experience over the course of your career. If you could change anything about China’s prosecution regime, what would it be, and do you think that it is likely to happen?

I would establish an intent-to-use requirement for filing trademark applications. 

Our current system emphasises registration but not use, which means that the exclusive right to use a trademark is based on registration instead of actual use. Trademark owners can register their marks and let the marks sleep unless non-use cancellation actions are filed against them. Currently, we have 46.146 million registered trademarks in China. This is an astounding number that leads to a higher rate of trademark refusals. 

The establishment of intent to use in our trademark law would swiftly clean up trademarks that are not being used by their owners, release their resources to the public and help people and entities that really need to establish their brands to obtain trademark registration and secure protection. 

Intent to use has already been introduced in the draft of the fifth amendment to the Trademark Law, which has been published by the China National Intellectual Property Administration, so I am hopeful that one day it could be added to our trademark law. 

With such a wealth of experience, what are your top tips for staying abreast of all the latest developments in the IP world in China and beyond?

First, enthusiasm is key. Passion for the work means that you feel excited about what you do. If you don’t love this field, then you won’t have the fundamental incentive to learn about all the latest developments in the IP world in a timely and comprehensive manner. 

Second, I always stay curious of the changes and developments in this field. Curiosity is the best teacher. If you are curious enough, you will never rest on the knowledge that you have accumulated in the past. 

Third, I always try to develop a sense of mission to realise my value. I am not just doing one job, but I am also doing something meaningful for myself and my country. I try to become the bridge between my country and my international friends and colleagues to help them better understand IP developments in China. 

What are some common mistakes that foreign rights holders make when seeking to enforce their rights in China, and how can they avoid them?

Some foreign rights holders lack a long-term strategy for the mainland Chinese market. When they decide to leave the market, they tend to leave everything behind and leave their IP rights unprotected. Also, foreign rights holders fail to localise their brands and adapt the way that they conduct business in China. 

Whether or not you are doing business in the Chinese market, it is always crucial to build your IP portfolio and actively protect your IP rights in China. Try to do business in a way that the Chinese people will accept and welcome. As the saying goes, “when in Rome, do as the Romans do”. Foreign rights holders should learn more about Chinese culture and try to localise their brands. They could select suitable Chinese names with good meanings, and build a brand culture that is acceptable and welcomed by the Chinese people. 

You have won acclaim for your ability to deal with challenging litigation. What has been your most memorable case to date, and why does it stand out?

The most memorable case for me was when I helped my client Ferrari to get its English brand, Chinese brand and the prancing horse logo successfully recognised as well-known trademarks in China. The reason this case stands out is because recognising well-known marks in China is rather difficult. Only a number of foreign brands have requested and obtained recognition through the courts. 

The current legal services landscape is competitive and high-quality legal work is considered a minimum. How do you add value for clients in such an environment? 

Our goal is always providing services with a USP. Our firm has clearly defined our service concept as "considering every problem from the perspective of the clients" and "paying full attention to every detail of the clients". Besides competitive and high-quality legal work, we offer additional services and set high standards for almost everything. We provide carefully tailored and customised services that not only provide answers to the client’s questions, but also provide a full strategy for its IP protection in China. 

What has been the biggest professional challenge you have faced in the last 12 months, and how did you overcome it?

The biggest professional challenge that I have faced in the last 12 months has been the development of AI technologies and how we, as lawyers, should embrace and make full use of these. I am always thinking about what I could do better than AI and what I can do that AI cannot. I always equip myself with new skills. IP lawyers never stop learning or exploring new fields.