Ray Lei Zhao
The Supreme People’s Court and CNIPA are cracking down on infringement with new guidelines this year. As a result of this change, what are your top three recommendations for international rights holders doing business in China?
First, as China has adopted a unique subclass system, international rights holders that generally have limited knowledge of it should review the scope of their registered trademarks at an early stage of operating business in China to ensure the protection granted can cover all of their commercial needs. Second, international rights holders should be confident and take more proactive actions, as the Chinese government is cracking down heavily on infringement. Third, taking into account the pros and cons of various measures, rights holders should create a suitable protection strategy, which could include bringing actions before the court, administrative authorities or customs.
As a senior partner at Unitalen, what steps is your firm taking to improve its hiring process to increase DEI in the workplace?
We never judge a person based merely on their current competence. We like to offer job opportunities to various applicants with unique abilities, talent, experience and academic backgrounds. Everyone is encouraged to achieve their full potential and is assigned work that complements their personal traits. Moreover, we intentionally include foreign employees to bring new cultural elements and different perspectives to the firm.
There has been a renewed focus on GIs since the 2021 EU agreement. What advice do you have for rights holders looking to protect their brands using this right?
In addition to protecting the GI’s original name, foreign rights holders usually ignore the importance of protecting the corresponding Chinese translation, especially transliteration. Local expressions of foreign GIs are equally vital because Chinese consumers rely heavily on Chinese names for foreign products. By leaving this protection gap open to malicious trademark applicants, the interests of both consumers and right holders risk being impaired. Rights holders have to spend more energy and time in related disputes when this occurs, which is what happened to the right holder of French GI “COGNAC”, for example. As they failed to register the Chinese transliteration in advance, the name was pre-emptively registered by a Chinese company in 2015. It took 18 months for the owner to revoke this mark.
The Trademark Office of China often invites you to assist with its revisions of the country’s Trademark Law. How has your participation influenced your view of the country’s IP industry?
The Chinese government has put a lot of effort into improving IP rights protection in China and has made huge progress in the last 40 years. In contrast, western countries have worked on this for over a century. Therefore, we are confident and optimistic about the future of China’s IP industry.
Which aspects of your work do you enjoy most and why?
The answer has changed often throughout my career. At first, I enjoyed helping clients solve their problems in IP protection and their long-lasting, personal trust in me. Currently, after having worked in this field for nearly 20 years, I really enjoy using my experience to help more young lawyers grow and contribute to the Chinese IP industry by participating in revisions of IP laws and showcasing the country’s progress around the world. The world needs to hear more voices from Chinese lawyers.
Ray Lei Zhao
Ray Lei Zhao joined Unitalen in 2002 to practise IP rights prosecution and protection, and has over 20 years of experience in the IP field. As a senior partner, he served as director of the legal department and international trademark department. During that time, Mr Zhao personally handled or guided other lawyers to handle a large number of IP cases and accumulated profound theoretical knowledge and practical experience.