Spring Chang

What makes Chang Tsi & Partners stand out from other law firms?

Chang Tsi & Partners stands out as a top IP law firm in China thanks to our exceptional legal expertise, comprehensive services and unwavering commitment to quality. Our seasoned attorneys, with over 15 years of dedication to clients, embody our collaborative and structured approach to legal prowess. We offer a one-stop solution for a vast array of legal needs – from trademarks to cyber security law – and cater to both Chinese and international clients. Our high-class service and risk management systems meet international standards, which leads to top-quality output. With rigorous standard operating procedures and innovative automation technology, we ensure excellence and 24-hour responsiveness, which sets us apart when it comes to meeting and exceeding client expectations.

You told us previously that you are witnessing more powerful protection for well-known trademarks in China, both in administrative raid actions and litigation. What should brand owners be aware of when it comes to enforcing their rights in China, especially those attached to well-known marks?

We are indeed seeing powerful protection for well-known trademarks. For example, we successfully helped our client 3M to obtain well-known trademark recognition for its 3M mark in civil litigation at the Taiyuan Intermediate Court. When it comes to enforcing their rights in China, brand owners should:

• select a friendly IP court to initiate the litigation;
• secure evidence of the infringement and ensure appropriate relevance of the infringing goods and the brand owner’s products;
• provide sufficient evidence to prove that the brand owner’s mark has a good reputation;
• provide precedents to support the brand owner’s claim; and 
• preserve the assets of the defendants to ensure smooth execution of the judgment.

How do you predict that the appetite for domain-name applications might evolve in the next few years, and why?

In the coming years, we expect the appetite for domain-name applications to grow significantly as businesses continue to embrace digitisation and expand internationally. With the digital landscape evolving, there is a clear trend towards more personalised and industry-specific domain extensions to cater to the diverse needs that come with online branding. This is driven by the need for companies to establish a unique and recognisable online presence. 

As a result of more domain-name disputes as highlighted by WIPO, brand owners are likely to become more proactive in securing domain names associated with their trademarks to defend against squatters and reinforce their brand identities. This proactive stance will not only involve the registration of multiple relevant domains, but also a heightened focus on global monitoring and enforcement to safeguard these valuable digital assets.

What are the biggest challenges that your clients have faced in the last 12 months, and how did you help them overcome these?

Over the past year, one of the most significant hurdles that our clients encountered was the difficulty in securing trademark registration in the early stages of entering the Chinese market. To address these challenges, our law firm developed a comprehensive strategy tailored to each client's unique situation. When a client is unable to register their trademark due to prior registrations, we explore the various avenues to obtain legal rights for them.  This may involve negotiating assignments of contested trademarks or establishing alternative forms of prior rights, such as copyrights, trade dress or trade name rights. These measures help to fortify the client's legal position and market presence.

Simultaneously, we actively pursue legal actions to remove obstacles when it comes to trademark registration. This includes filing for cancellation, opposition or invalidation proceedings and engaging in negotiations with the registrants, often leveraging our clients’ rights and the evidence that we have gathered. When we suspect that a prior registration was obtained in bad faith, we conduct thorough investigations into the registrant's activities. We collect evidence of false propaganda or misrepresentation, which not only bolsters our invalidation actions but also lays the groundwork for potential infringement cases.

Through judgments in winning infringement cases, we have bolstered related trademark disputes, helping our clients to establish a stronger legal and market presence in China.

Generative AI made headlines in 2023, and looks set to continue being a hot topic in 2024. What is your take on its potential to impact the brand space? 

Generative AI is gradually permeating every aspect of trademark law with unstoppable momentum. From a trademark registration perspective, generative AI is capable of identifying conflicts in trademark applications and creating unique brand elements with identity recognition. In terms of enforcement, generative AI can use its search capabilities to assist in the detection of online infringement. Moreover, personalised marketing based on consumer data presents new opportunities for brands. 

At the same time, intelligent consumption – which refers to consumer choices based on AI results – may lead to a decrease in the use of trademarks and the trademark system, which relies on the function of source identification and advertising. This could be affected by generative AI. However, I believe that the intrinsic value of trademark law will never be replaced by artificial intelligence.

You have won praise for your creative approach to IP law, cultivated over three decades of practice. Can you tell us more about what sets this approach apart?

My creative approach to IP law is rooted in hands-on engagement with our clients' cases and a constant learning process. By leading comprehensive projects that adapt to China's rapidly evolving IP landscape, actively engaging in client conversations to understand their unique business models and embracing each case's distinct challenges, I ensure that our strategies are not only current, but also custom-fit to our clients' needs. This personalised, dynamic and proactive style – honed over 30 years – sets my practice apart.

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 brands using this right?

China has two systems for the protection of GIs. The first is the GI trademark protection system, which is based on the Trademark Law and involves the registration of GIs as collective marks and certification marks. The second is the GI products protection system. The new regulations aim to improve China's protection regime on GIs. 

For rights holders, it is essential to understand and utilise China's unique protection system. The newly implemented regulations have expanded the scope of protection for GI products and clarified infringement acts against them, as well as illegal acts of misusing or forging the special signs of GIs. China is accelerating the unification of GI legislation with the aim of developing a cohesive system that harmoniously coordinates specialised GI protection with trademark protection. Keeping a close eye on legislative changes in China will enable timely adjustments and the development of appropriate strategies.

What was your most memorable case from the past year, and why does it stand out?

Over the past year, the two cases that stood out to me the most involved the Oreo brand and an automobile design patent. The Oreo case was particularly memorable as it was the first civil case attached to a criminal case in Wuxi City, and achieved full protection of the IP rights in both criminal and civil aspects. The lawsuit not only pursued the criminal responsibilities of the defendants but also mandated them to bear civil liabilities, such as compensation for damages, reasonable expenses and a public apology, effectively optimising protection, minimising costs and maximising deterrence.

The automobile design patent case was notable as it clarified the conflict between design patents and prior trademark rights. It demanded a deep understanding of IP law, particularly in assessing trademark similarities and the patent's role as a trademark identifier. Recognised as one of the top 10 patent re-examination and invalidation cases of 2022, it has become a guiding precedent for innovators, highlighting the necessity of respecting existing rights and strategic IP planning.

You cover a wide range of industries in your practice, from electronics and consumer goods to pharmaceuticals and food and beverage. How do you adapt your strategy depending on the type of client that you are dealing with?

In adapting our strategy across diverse industries, we prioritise understanding each client's specific goals – whether that is to halt infringement swiftly, seek maximum compensation or set a deterrent example. We carefully assess the robustness of their IP rights to ensure that litigation success does not compromise their trademarks or patents. Our approach is flexible, potentially invoking trade dress rights over weaker patents, for example. Additionally, we leverage our in-house team of professional investigators to uncover evidence of infringement, tailoring our methods to the nuances of each industry – from electronics to food and beverage – ensuring effective and industry-specific legal support.

Can you share any advice for foreign clients tackling high-stakes IP issues at the local level in China? What are the most frequent mistakes that they make – and how can they avoid them?

For foreign clients, it is always recommended to register their IP rights early, as China operates on a first-to-file system for trademarks and patents. For tackling high-stakes IP issues, we develop enforcement strategies that are tailored to China’s market and the client’s business areas, including administrative actions, civil litigation and criminal prosecution for serious IP infringements. 

At a local level, it is also crucial to establish good working relationships with government officials that can assist in IP matters. Some common mistakes that foreign clients make include delaying IP registration, inadequate documentation and ignoring the role of culture. By being proactive, foreign clients can avoid such errors that may undermine their IP rights and business interests.