What led you to a career in intellectual property and what advice would you give anyone considering the same?
When I first heard the words ‘intellectual property’, it was like innovation itself. The concept of protecting innovation is amazing and is what has led me to this career.
If you are drawn to wacky ideas, technologies and fancy brands and wish to be at the forefront of tech and marketing innovation, then choose a career in intellectual property. It is an industry in which you will witness how humans explore new and unknown areas, how persistency and the passion for excellence drive people to innovate untiringly and how curiosity can be transformed into products that benefit our lives. I think that these precious values reflect the hopes of humankind.
You are responsible for protecting a host of internationally recognised brands, including Dulux, which is now recognised as a well-known mark in China. What hurdles did you face in securing this status and how did you overcome them?
The standards for securing recognition of this status are extremely high and strict. The process requires a vast amount of evidence, which is certainly a challenge to an in-house team or company, as it requires the resources to collect and maintain effective and persuasive evidence. This is not usually the IP function’s sole responsibility – it should be done by many teams in a company, which must have a high awareness of – and invest resources to protect – intellectual property. Further, the need-to-recognise principle limits the possibility for recognition if defensive registrations are available and the key cited trademark enjoys a very high reputation in the industry.
You have been successful in a number of infringement suits, with various individuals being added to the black list of discredited personnel. What factors do you consider when deciding whether to pursue court action and what kind of damages to seek?
Assessing the impact of the infringement on business and whether it has created or is likely to create confusion among clients and customers are generally the main factors to consider. Stopping the infringing action is always placed as the main claim in infringement suits and is usually enforceable. This does not mean that we do not expect legitimate compensation, undertakings or public apologies in these kinds of case.
How do you stay one step ahead of counterfeiters and how do you engage other areas of the business in this mission?
There are many ways to do this. Conducting constant IP and brand protection awareness training internally with colleagues and externally with distributors and business partners can be effective. Market policing and recordal of trademarks with administrative authorities (ie, Customs and/or the marketing supervision administration) are other useful approaches. Last but not least, close cooperation with large e-commerce platforms (eg, Alibaba) and social media (eg, Wechat and Douyin) is indispensable to preventing counterfeits. IP functions and counsel must be agile and savvy to new business modules such as virtual businesses, which have changed the world entirely. We must work hand in hand with service providers such as investigation companies, online monitoring hubs and IP boutique firms.
Finally, how do you expect the nature of your brand protection practice to change in the next few years?
With the amendments to the Trademark Law that came into force last year, I expect practices to screen the large number of bad-faith filings submitted without genuine intention to use. I anticipate that refusals to this type of filing ahead of the publication procedure will increase the illegal costs for copycats and infringers. I am anticipating a stronger, more aggressive, agile and flexible eco-friendly IP protection system, which will adapt to new challenges and changes in brand protection efforts in the coming years.
Christy Qingtao Chen
Senior IP Counsel
Christy Qingtao Chen is a senior IP counsel responsible for IP protection in the Asia-Pacific region at AkzoNobel. She graduated with an LLB from the University of London and an LLM from the University of Hong Kong. Ms Chen deals with all soft IP matters in the region and leads IP enforcement actions. Her areas of expertise include trademark prosecution and enforcement. She has been ranked in the 2017 to 2020 editions of WTR 300: The World’s Leading Corporate Trademark Professionals.