What inspired you to pursue a career in intellectual property?
The field of intellectual property is dynamic and ever-changing. It presents stimulating opportunities for lawyers to engage in intricate legal work while also helping innovative companies and individuals succeed. My motivation for pursuing a career in intellectual property stems from my passion for safeguarding creative and groundbreaking ideas and products. With the increasing importance of IP law in the global economy, the demand for proficient IP lawyers is on the rise, and I am thrilled to be a part of this expanding industry.
What has been your biggest professional challenge in the last 12 months, and how did you overcome it?
For me, the biggest professional challenge has been adapting to the changes brought about by the pandemic. Like many other professionals, I had to transition into remote work, which presented large hurdles in terms of communication, collaboration, coordination and productivity. Additionally, the pandemic created unprecedented disruption and uncertainties in many aspects of our work, particularly when handling cases that require in-person meetings, field investigations and court appearances. To overcome these challenges, our IT department has been upgrading our cloud-based office management system. I have also arranged many training and routine work-reporting sessions for our clients, all online, making it possible for us to work with flexibility and efficiency.
You told us previously that you believe young lawyers are the future of intellectual property. What opportunities do you offer internally to retain and educate talent?
We value the growth of our young lawyers at Chang Tsi & Partners, calling them “the future of our firm”. In addition to offering competitive compensation and benefits packages, we make diversity and inclusion a priority by creating a harmonious working culture for young lawyers to quickly fit into our firm. We have detailed standard operating procedures and routine training courses to navigate them in a professional direction, providing them with a clear path for career advancement and growth. We also have a solid mentoring system in place, which puts every young lawyer under the guidance of senior lawyers so that they can learn from the first day they enter our firm. Finally, we are creating more opportunities for young lawyers to take on more responsibilities and lead projects.
You have won acclaim for your wealth of experience in IP law. How do you keep abreast of the latest developments in the Chinese market?
In the past 30 years, our clients and I have been growing up together. I am always involved in the firm’s most important cases. Together with my team, we analyse clients’ legal needs and case objectives. We research laws and cases. We brainstorm, and we work together to create the best strategy. With such deep involvement, I am not easily left behind. On the other hand, if there are important amendments to Chinese IP laws, guidelines or judicial interpretations (there have been many in the past five years), I have primarily been in charge of coordinating a comprehensive project aiming to share these developments with our clients and set up new strategies to address them. This work keeps me busy, but fortunately it means that I am actively pushed to stay abreast of the latest developments in the Chinese market.
What are your top recommendations for rights holders looking to use the interplay between different rights (eg, trademarks and design rights) to protect their brands?
Important brands need comprehensive protection from different angles. Using trademark and design rights as an example, they complement each other all the time. From an IP rights prosecution perspective, a trademark only provides protection to the distinctive part of the package or trade dress, which is insufficient. Design rights can offer better protection, covering indistinctive parts or even the entire trade dress. The China Patent Law was amended in 2020 to provide better protection for design patents, including a longer protection period and partial design protection. From an enforcement perspective, trademark rights infringements are decreasing – they are simply becoming more hidden. Imitating packages and trade dress is safer for infringers because there is no criminal liability, and the infringement cannot be easily found. In that context, the protection of design is crucial. If a design loses its novelty or expires, the rights owners may consider copyright as a replacement. The only difference is that when establishing an infringement case based on prior copyright, the threshold is higher. If the products are not qualified to enjoy copyright protection, it might be worth considering protection as trade dress, based on the Chinese Anti-Unfair Competition Law.
The Supreme People’s Court and the China National Intellectual Property Administration (CNIPA) are cracking down on infringement with new guidelines this year. What impact is this having on your practice?
It will take time to see effective measures to curb infringements in the long run. In the least, these guidelines have created a more convenient environment for enforcement. They – and the Supreme Court’s judicial interpretations – do provide clearer criteria than before. In practice, many enforcement authorities are more active and friendly in giving support as per the IP owners’ request in enforcement cases. We are also witnessing more powerful protection for our clients’ well-known trademarks in China, both in administrative raid actions and litigations. We believe that infringers should pay a high price for their behaviour so that future infringements can, eventually, be largely curbed.
Which recent decisions or legislative developments have had the biggest impact on IP strategy in China in the past few years?
China’s Trademark Law was amended for the fourth time in 2019, and the corresponding trademark examination criteria were issued in 2022. The highlights include the definition of bad faith and a long list of specific situations where it can arise (eg, bad-faith applications and litigations), as well as the punishments against them. In the past 10 years, at least half of our conflict cases dealt with bad-faith applications and litigations on behalf of our clients. We did not feel that the laws were clear and strong enough for us to fight against bad-faith infringements, but with the new regulations and implementing rules, we have a solid basis upon which to take action. We have less of a burden of proof and higher chances of success. We have also noticed that the China IP Office is taking more initiative to refuse applications obviously filed in bad faith and is even issuing punishments to the applicants and their trademark agencies, which, in our opinion, is a good sign for IP rights owners.
As a highly celebrated litigator, what are your top tips for taking counterfeiters to court – and what makes for an effective strategy?
First, the fundamental thing is always to have thorough conversations with clients to fully understand their objectives. Some clients simply want to stop an infringement as soon as possible, while some wish to gain the highest possible compensation. Others hope to build an ‘example case’ to send a warning signal to other infringers and thus curb the broad scope of infringements. Every client could be cost sensitive. It is, therefore, critical to clearly grasp clients’ objectives before starting the case; otherwise, even if you win, you could lose the client. Second, it is vital to evaluate the stability of your clients’ existing rights. We do not want to win a litigation but lose our trademark and patent registrations and allow them to be attacked by the counterparty. To mitigate this, you could choose to claim unfair competition based on the right to trade dress against a design patent infringement if your design patent is weak. Alternatively, you could arrange to put your client’s trademark into urgent use or refile the trademark application as back up before filing litigation to avoid a possible non-use cancellation. Last, evidence collection and preservation are tricky but crucial. Because infringements are becoming increasingly hidden, one must establish a separate strategy to collect solid infringing evidence. In order to best enforce our own strategy, Chang Tsi & Partners built a professional investigation team with more than 20 professional investigators 15 years ago. Our in-house investigators give us strong support to dig out infringing evidence and perform routine checks in the market to find counterfeit clues.
Last year, you delivered a keynote speech at Lotus about the metaverse, NFTs and IP protection. Twelve months on, how has the conversation on these topics shifted?
I have been involved in many events addressing this topic because it is rapidly gaining public attention, and major tech companies are investing in creating metaverse platforms and experiences. The issue of digital assets and corresponding IP ownership has been raised in new ways as a result. NFTs, which are increasingly being used for digital art, music and other creative works, have kept the news cycle active – thanks to high-profile sales and debate over their environmental impact. In China, there are still many uncertainties with regard to their legal standing and how to fit them into established IP frameworks. In the past 12 months, I witnessed more and more trademark applications filed in Classes 9 and 38 before China’s IP office to protect virtual products and services. In particular, the first case in China involved copyright infringement in the metaverse of an NFT called “Fat Tiger Vaccinated”. The Hangzhou Internet Court decided on the case in April 2022 and, for the first time, gave many valuable interpretations on the legal issues concerned.
In terms of the current conversations we are having with our clients, we are discussing processes to audit and update their current IP portfolios to add necessary protection in the metaverse. On the patent side, our focus is still training and patent mining so as to assist the in-house counsel in adjusting their patent protection strategy. In order to be fully prepared for imminent changes, Chang Tsi & Partners has hired more patent agents with relevant technology backgrounds and experiences.
Which aspects of your work do you enjoy most and why?
As a lawyer, I communicate with my clients a lot. I enjoy the conversations so much; they always give me an opportunity to better understand their business models, which greatly broadens my horizons. As a matter of fact, many companies have unique and creative business models that lead them to success, and there is a lot for me to learn from this. I benefit from our conversations because they enrich my life experience, give me inspiration to better manage our firm and provide our team with valuable opportunities to build IP strategies tailored to their needs.
As a vigorous person, I also enjoy handling cases on behalf of my clients, and I am never tired of my work. Every case is a new challenge with a unique story. When I start a new day, I have new challenges to face. I need to utilise my knowledge, expertise and ability to organise my team to deal with these challenges and pursue the best possible work results. I am never bored!
Founding partner of Chang Tsi & Partners Spring Chang has advised and represented numerous world-leading firms in a wide array of business sectors such as electronics, pharmaceuticals, food and beverage, apparel and jewellery. Thanks to her creative approach and high efficiency in over 30 years of practice, Ms Chang has earned a stellar international reputation. Many publications appreciate her “great judgement” and “wealth of experience in serving well-known multinationals”.