Jason Yao

Ranked in China and SARs: China: Domestic
WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise

Silver - Individuals: enforcement and litigation

With an astonishing 15,000 national marks and more than 800 active trademark litigations in its care, it is no surprise that Chinese IP titan Wanhuida Intellectual Property has dominated the trademark market for yet another year. The establishment is now home to 450 IP professionals, of which 90 and 140 attorneys are dedicated to trademark and IP litigation, respectively. Its leading trademark team has contributed frequently to the development of Chinese IP law and set precedent after precedent in the realm of trademark application and infringement lawsuit. Foreign counsels are enthused by the high quality of work that the outfit brings to the table. “Wanhuida is a true business partner which understands the business very well.” “They are one of the most knowledgeable, efficient, and effective Chinese firms I have worked with.” The rainmakers here are co-founders Haiyan Ren and Gang Bai. In addition, with the work of Hui Huang, the outfit and has gained unmatched stature and reputation in the IP field. Throughout her 27 years of practice, Ren has been a trustworthy name when it comes to trademark filing and registration and guided a team of more than 300 lawyers in tackling tricky brand protection issues. Huang has a razor-sharp understanding of the theory and practice of the whole trademark cycle. As an attestation to this, he has been regularly invited to participate in the initial drafting and subsequent amendments to China’s major trademark-related laws, regulations and judicial interpretations. Currently serving as the board director at INTA, Bai is a fierce representative in trademark infringement and anti-counterfeiting disputes, some of which have been selected as the annual cases by Supreme Court over the years. The trio join forces to represent Supreme New York in obtaining favourable review of opposition decision and subsequently prevailing in an unfair competition and trademark infringement proceeding. Another seasoned litigator on the roster, Shenzhen-based Jason Yao safeguards IP rights and battles counterfeiter and trademark infringers before all level of courts across the country. He, on behalf of New Balance, successfully invalidated an existing visual mark before the Supreme Court. Partner Yunquan Li brings a wealth of legal and industry knowledge to the table and is particularly adept at trademark due diligence, investigation, prosecution and negotiation.

Jason Yao's Profile

Jason Yao is a partner at Wanhuida Intellectual Property and a member of the firm’s management committee. He is also the managing partner of the firm’s Shenzhen office and Hong Kong office. His practice covers a wide range of IP matters, including litigation relating to trademarks, patents, copyright and trade secrets; investigation and enforcement against trademark counterfeiting, patent infringement and piracy through administrative and criminal actions; licensing, transferring and acquiring trademarks, patents and copyrighted works; and compliance and government investigations in unfair competition and antitrust matters.

Mr Yao uses a unique combination of in-house and outside counsel experience in managing IP portfolios and corporate legal matters for both multinational and Chinese companies. He led the brand protection team of P&G in China and handled more than 1,000 cases in seven years, some of which were the very first IP cases of the region. After finishing his higher education in IP law at Boston University School of Law, Mr Yao joined Gillette as the general counsel for the Greater China region, where he handled a complex investigation and enforcement action against a counterfeiting syndicate. After Gillette’s acquisition by P&G, he joined Acushnet, where he served as the leading counsel for both IP and general legal matters in the Asia-Pacific region. He successfully coordinated major US golf manufacturers and put together a comprehensive programme for cooperatively and collectively fighting against counterfeit and pirated products in the region, achieving significant results.

As the legal committee chair and vice chair of the Quality Brands Protection Committee of the China Association of Enterprises with Foreign Investment, Mr Yao has worked with legislative authorities, judicial departments and government enforcement agencies to improve the legislation and enforcement of IP rights in China.

Mr Yao is among the Legal 500 Recommended IP Lawyers for 2020 and 2021. He is ranked by World Trademark Review as a recommended individual in the category of enforcement and litigation in 2020, 2021 and 2022. He is also listed as one of the 2020 ALB China Top 15 IP Lawyers.

Firm Profile

Wanhuida Intellectual Property is a leading IP service provider in China. It has two main legal entities, Wanhuida IP Agency and Wanhuida Law Firm, with offices covering all major IP hubs in China.

Wanhuida is now home to some 450 employees working exclusively in the field of intellectual property. It has some 120 IP lawyers specialised in IP litigation and enforcement work, 90 trademark attorneys, 70 patent attorneys and other professionals, including investigators and supporting staff. Many of them are recognised leaders in their respective fields. They come from a broad range of backgrounds, having worked in private practice, as in-house counsel or in government services in courts, police departments or administrative agencies.

The firm’s professionals have broad and in-depth experience. Over the years, they have cumulatively litigated thousands of IP cases in courts all over China, prosecuted tens of thousands of patent applications and filed hundreds of thousands of trademark registrations. Many of the cases are first of their kind. They are recognised by industries, courts and administrative agencies as exemplary cases for their legal significance.

Wanhuida understands the law and its context through years of study and practice. It actively participates in the development of the legal framework. Since its creation, the firm has thus been closely associated with the legislative progress of Chinese IP laws and regulations. It continues to play an active role in the improvement of the Chinese legal and regulatory environment. Its practitioners are involved in the processes for revising the trademark law, patent law, copyright law, anti-unfair competition law and relevant judicial interpretations through the submission of comments to draft laws and organising platforms for discussion and communicating with authorities responsible for policy development.

The firm’s active involvement in policy and law development enables it to stay abreast of how the laws are shaping up and gives its professionals insights that can be critical to protecting its clients' interests. The firm also keeps its finger on the pulse of legal practice changes through the thousands of cases it handles before the courts and administrative agencies.

This mix of legal expertise and result-oriented practical approach has been critical to the firm’s past success and remains a key feature as it launches into the future.

The trademark practice has been a core strength since the firm’s creation. The firm is known to clients and peers for stellar credentials in trademark laws and regulations. The top-notch team has generated a record of firsts and landmark cases in the nation’s trademark prosecution and litigation history. The firm has also made frequent contributions to the development of trademark laws in China.

The firm has some 120 professionals with experience in patent litigation, prosecution and counselling. Some of its patent cases are selected by courts or agencies as exemplary cases. They include cases selected as the Guiding Cases of the Supreme People’s Court on IP Rights Trial, the Annual Report of the Supreme People’s Court on Intellectual Property Cases, the Top 10/50 IP Rights Cases of the Chinese Courts (released annually by the Supreme People’s Court) and the 10 Exemplary Cases of the Patent Re-examination and Invalidation Department. These have contributed to patent law development in subjects such as claim construction, claim amendment, inventiveness determination and sufficient disclosure.

The firm’s reputation in copyright is on the rise. It is fostering a team of top copyright practitioners as the copyright litigation team expands. The firm has recently won copyright cases before the Supreme People’s Court, successfully persuading the court to re-adjudicate erroneous lower court decisions. It has also obtained favourable decisions in various lower courts, obtaining injunctive as well as sizeable monetary reliefs for clients.

The firm is at the leading edge of litigations. Each year, its 100 or so IP litigators litigate hundreds of cases, gaining abundant experience in the court practices across China. The firm is at the forefront of frequently litigated issues, such as procedure, jurisdiction, enforcement, evidence admission, burden of proof and interim reliefs. It litigates both civil and administrative cases before administrative agencies and at all levels of courts. The firm’s expertise also extends to litigating criminal trade secret cases and arbitration matters.
 

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