Which aspect of your work do you enjoy most and why?
The aspect of my work that I enjoy most is working closely with clients and becoming an extension of their in-house team and, in the course of that, devising cost-effective solutions for protecting their IP portfolios. In my experience, only when an external adviser is prepared to put away their timesheets and timers and focus on getting the job done will clients consider them part of their team. I also enjoy advocating for clients’ causes with local and international authorities (whether those of the client’s country, those of European member states or local Chinese authorities) in order to level the proverbial playing field, which can be tilted depending on the jurisdiction concerned.
What impact is the rise of Chinese filers having on global IP systems?
The rise of Chinese filers will, especially in the trademark field, have a marked impact on the global IP scene. The continued rise in trademark filing subsidies, initially introduced as early as 2013 and then generously expanded by provincial and city governments, has led to unprecedented levels of Chinese applicants filing abroad. This veritable explosion in Chinese-origin trademark filings at the USPTO, the EUIPO, WIPO and various national IP offices will:
- increase workloads for trademark authorities in jurisdictions where they continue to monitor and reject filings on relative grounds; and
- create a level of ‘stuffing’ of the trademark register and potentially increase the numbers of bad-faith applications in jurisdictions where authorities do not examine on relative grounds.
All things considered, the growth in trademark filings will continue to put pressure on the international trademark system.
What is spurring the Chinese government’s efforts to improve IP protection for brand owners?
In its much-lauded China Manufacturing 2025 Initiative, China’s central government explicitly listed “growing Chinese brands abroad” as one of nine strategic tasks enumerated. In another of those tasks, the government talks of “internationalising Chinese manufacturing”. A new-found self-confidence, coupled with a legitimate desire to support Chinese companies that are expanding business all along the Belt and Road, is also spurring the government’s efforts to improve IP protection for all.
How have clients’ IP strategies changed over the past five years – and how are they likely to change again?
Over the past five to 10-year period, clients have become much more savvy about how they go about protecting and enforcing their IP rights in China – and rightly so. As their local businesses have expanded, so has their local expertise. Whereas five to 10 years ago, clients focused on protecting their IP assets at any price, more recently, clients have taken a more pragmatic approach and tend to focus on protecting and defending core rights. Having said that, the IP pendulum swings both ways and on seeing how Chinese companies increasingly strike out by filing rights overseas, clients are starting to recognise that they have to adapt some China-tailored strategies (eg, defensive filing and strategic oppositions) in more established jurisdictions.
How are law firm IP practices evolving in the current climate?
Chinese law firm IP practices have generally remained busy throughout much of the covid-19 pandemic. While enforcement and some forms of IP litigation have suffered a little, prosecution practices have continued booming and remained highly profitable. On a more pedestrian note, law firms are quickly adapting to the working from home trend, with many offering flexibility to staff where necessary, thus reducing commuting times, especially in China’s megacities. Another major change that is here to stay is increased digital and online interactions with authorities, tribunals and courts, as well as meeting formalisation and notarisation requirements through online means. Developments in these areas are yet to be tracked, but they should be expected to continue to grow, as this is the only way to resist the pressure of ever-growing demands in the IP field.
This article first appeared in World Trademark Review. For further information please visit https://www.worldtrademarkreview.com/corporate/subscribe