Chang Tsi & Partners
What has been the secret to your success over the years?
I would say that if there has been any secret to my success, it must be life-long learning and a passion for work. It is challenging yet fascinating to keep one’s expertise up to date in the IP field, which is ever changing. I am excited and filled with a sense of accomplishment when developing and enforcing strategies tailored for my clients in China and overseas.
Who would you say has had the biggest impact on your career?
My father and my mother are both my idols. My father is an extremely hard-working and energetic engineer (he became a professor later in his career). He taught me repeatedly when I was young that girls can be as successful as boys so long as I work hard. He has shown me that learning is a life-long career and what he taught me has been inspiring me so far. My mother as a teacher is a very optimistic lady and a woman of action. She has had a strong influence on my personality.
What has been one of your biggest achievements over the past year?
I have been practising for nearly 30 years and during my career I have trained many IP lawyers. Regardless of whether they are still working with Chang Tsi & Partners, I am amazed when I see and hear of their progress and am very proud of all of them. I think that my biggest achievement is to assist young lawyers to grow because they are the future of intellectual property in China.
How do you convince clients to invest in IP protection from the outset?
“The best time to plant a tree was 20 years ago, and the second-best time is now.” I always tell my clients that we should invest in IP protection as soon as possible, even if their business is still being developed. Such investment at an early stage is relatively costless but more effective for long-term operations, especially considering that the amount of clear land available for intellectual property is limited. If trademarks become registered by others or legal rights infringed, clients will have to spend more on legal or business actions to put this right. It should be remembered that patents, trademarks and other forms of intellectual property are assets for companies – that is why they are termed as ‘property’.
What are the most important nuances for international rights holders to be aware of before pursuing litigation in China?
The most important thing of which international right holders should be aware before pursuing litigation is the objective of that litigation per se. Objectives can vary significantly but any litigation strategy must be developed with the objective – whether that is to stop an infringement, to acquire compensation, to send warning signs to force other infringers to pay patent royalties, to push for a letter of consent, to acquire IP rights or a combination of all or some of these - at the forefront. Only with a thorough understanding of the client’s objective, can we develop a precise and tailored strategy for the litigation.
The Chinese authorities have made clear their intentions to continue strengthening IP protection in the region. How is the IP regime improving and what still needs to be done?
China continues to make efforts to protect and enforce IP rights in a better way, many of which are being recognised by lawyers and IP counsels from different countries. The Chinese government has published a series of laws and regulations to resolve IP disputes in various areas, including those of trademark, patent, copyright and e-commerce. Based on our experience, the civil servants of IP-related authorities (eg, Customs, the courts and IP administration), are being more professional and efficient than ever before. I believe that China’s IP regime has largely improved. However, it cannot be denied that challenges remain. For instance, the Chinese government should consider taking further actions to establish an updated and comprehensive legal framework for areas such as trade secrets and uneven enforcement. It might also need to deal with the significant procedural barriers for both foreign and domestic companies. Notwithstanding this, the situation is getting better and we can expect I to see further improvement.
How hopeful are you that recent amendments to the Criminal Law will help to deter IP infringement in China?
Putting infringers in gaol is extremely effective as a means of deterring IP infringement. The recent amendments have made the Criminal Law clearer and more easily enforceable. That is the positive part. The big challenge lies in the practical execution. In particular, it is still difficult for a rights holder to acquire preliminary evidence before reporting a criminal case. In addition, it can still be difficult to persuade public security bureau officers to accept a criminal case as the threshold for this is still high in some regions of China. We hope that the situation will be improved soon.
How can key stakeholders work together to clamp down on counterfeiting?
Efforts might include paying close attention to changes of legislation and practice and best utilising these to develop a comprehensive strategy. Watching the market closely to clamp down on counterfeiting on time is also very important, especially when the counterfeiting is still small scale. Taking actions over different channels, such as border protection, and with regard to both online and offline infringement should be an important part of any enforcement strategy. Crucially, key stakeholders should take tough measures to ensure that big and/or repeated infringers serve time in gaol.
What are the biggest challenges facing clients when it comes to protecting their brands online, and how can these be overcome?
With the exponential development of the Internet and the rapid growth of e-commerce, online shopping platforms are occupying a dominant position in the market. In China, data released by the National Bureau of Statistics show that nationwide online retail sales accounted for Rmb1.1 trillion ($164 billion) in 2019, while online retail sales of physical (ie, non-virtual, non-service) goods accounted for Rmb852.9 billion ($127 billion). Therefore, online protection of trademarks is becoming more and more important for trademark owners. Unfortunately it is considerably more challenging to locate counterfeit goods on online platforms than it is to take action in physical shopping malls. Besides this, the phenomenon of malicious complaints can negatively affect normal business operations. Under Article 42 of the new E-commerce Law, if a notification sent by a rights holder is incorrect and results in damages to the respondent, the rights holder must take legal responsibility for those damages. It is therefore necessary to be cautious about the legal risks when enforcing IP rights on online platforms.
To overcome these difficulties, trademark owners must take care to stay up to date with the latest laws and local regulations. Courts in China at all different levels have also issued guidelines for trademark infringement related to e-commerce. More importantly, rights holders should explore multiple methods – from routine monitoring and complaints via platforms right up to litigation – to protect their legal rights. At Chang si & Partners, we provide comprehensive, one-stop and multi-level legal services for trademark protection.
Which recent cases do you expect to have the biggest long-term impact on your clients’ IP strategies?
We are extremely proud to have acted for the winning side in the trademark infringement lawsuit that secured rights for Michael Kors to use the MK Logo in China. This was a representative case in which a small local company in Guangdong – Jianfa Handcraft Factory – sued the multinational Michael Kors for infringement of trademark rights and demanded that it compensate it for economic losses and other reasonable expenses in the amount of Rmb95 million. This was one of the most valuable IP cases in China.
From 2017, we have won at first and second instance for our client, effectively safeguarding its commercial interests. Last year, the Supreme People’s Court issued a ruling rejecting a retrial request. The trial was lengthy and difficult but was meaningful – not only for Michael Kors but also for other multinationals doing business in China. The case was also picked as one of the Supreme People’s Court’s 2019 Top 50 IP Typical Cases, as well as one of the Zhejiang Higher People’s Higher Court’s 2019 Top 10 Typical Cases.
Named the world’s leading IP lawyer by Chambers & Partners, Spring Chang has extensive knowledge and experience of trademark and design patent law. Leading a number of professional advocacy teams with diversified backgrounds, her sharp judgment and creative problem-solving skills have been valued by multinational companies in a wide array of business fields, including consumer goods, apparel, electronics and pharmaceuticals. In addition, Ms Chang is a keen advocate of design rights as a means of providing additional protection for products.