Clyde & Co LLP
You have practised IP law in Australia, Europe and China. How has working across different continents shaped your professional development?
Australia is an excellent jurisdiction in which to earn your IP spurs, as Australians have been trailblazers in this field. Working at a highly respected Australian IP practice provided me with an excellent foundation in domestic intellectual property and especially in corporate matters, including licensing and IP commercialisation. The move to Europe, building on studies at Oxford, provided an international dimension with cross-border IP enforcement and dispute resolution experience, especially in Central and Eastern Europe. The move to China was then triggered by a convergence of circumstances; clients started asking why I could not provide IP enforcement where infringements originated – for many clients and their products that was (and remains) China. In addition, I had a successful German-client practice built on referring work from Europe to offices in Asia, including Thailand, Vietnam, Indonesia, but especially China. Last but not least, I have always felt a personal affinity with Chinese culture. Having spent about 18 months in Beijing on my arrival in China and again as much time in Guangzhou, I found that Shanghai provided the perfect base for developing a reputation for intellectual property among foreign clients, many of which have their China headquarters there.
You represent a number of Fortune 500 companies and multinationals, including those in the engineering, technology and automotive sectors. What are the essentials of portfolio optimisation and strategy in any innovative industry?
Speaking from a China perspective, the key factor is not to underestimate the competition – especially when it comes to their potential for innovation. Today’s infringer may well be tomorrow’s legitimate competitor. So the essentials are:
- to accurately predict and anticipate where your own China market position will be in five years;
- to conduct thorough competitor IP landscaping – by this I mean current and future competitors, and especially potential local competitors;
- to err on the side of over-protection when it comes to filing – for most clients a triadic filing strategy (ie, filing in the United States, Europe and Japan) has evolved into a quadratic filing strategy, with the addition of China;
- to adapt to local circumstances – in China this means embracing utility model patents and, on the branding side, defensive filing into sub-classes and classes; and
- to proactively enforce IP rights, while not hesitating to invalidate usurpers’ rights.
How has cross-border IP protection changed in recent years, and in what ways has this affected your practice?
International trade has changed tremendously over the past 15 years and these changes have only accelerated during the recent coronavirus crisis. While much cross-border trade was large scale in the first decade of the 2000s, now a significant amount is in the form of small consignments. As a result, IP protection and enforcement has had to adapt. Whereas in the past rights holders could pinpoint a given country as the source of IP infringements, this is much harder now. While products may still be assembled in China, it is common for parts to be shipped across borders for assembly in other countries. This has led to protection strategies becoming more regional, with enforcement adapting to online trading marketplaces and adopting a regional cross-border approach.
What are some of the biggest enforcement challenges facing brand owners in Asia-Pacific?
One of the biggest challenges is probably the previously mentioned cross-regional manufacturing networks and supply chains. Another big challenge is movement into the online space, which makes it more difficult to track infringements unless sales take place on a recognised platform (some of which have taken material steps to help enforce intellectual property). This situation continues to evolve; it takes solid strategies and tools to connect infringers’ online and offline operations in order to stay ahead of the game.
Finally, how do you think the brand protection landscape will change in the next five years, as a result of recent global events?
I fear that for some countries, and indeed companies, IP protection and even enforcement may fall off the radar – this de-prioritisation was noticeable following the 2008 financial crisis. While it is understandable that countries and companies trying to recover from the crisis must first focus on rebuilding their industrial positions, the sooner they re-prioritise IP protection and enforcement, the quicker the path to economic growth can resume.
Elliot Papageorgiou has practised IP law on several continents since 1995. He advises on strategies for optimising IP portfolios across the Asia-Pacific region, as well as cross-border patent, trademark and copyright disputes. Mr Papageorgiou represents a number of Fortune 500 companies and multinationals in Chinese IP litigation. His client briefs include developing IP strategies for one of Europe’s largest venture capital funds, global automotive technology companies, global engineering and manufacturing conglomerates, and Europe’s best-known fast-moving consumer goods and jewellery brands.