New Balance Trading (China) Co, Ltd
How did you come to choose a career in brand protection and what has been the key to your success?
I have always been a big fan of famous brands and it is fascinating to think about working for some of those brands as an ambassador and protector. I had no hesitation in applying to Shanghai University when I learnt that it had a specialised IP school, which was the first IP school in China established in 1994 when China was preparing to enter the World Trade Organisation. After graduating, I was lucky enough to serve in the IP departments of a few multinationals and gained invaluable experience within the organisations. As much of my career has been spent focusing on intellectual property, my personal experience shows that focusing on just one thing and concentrating on what needs to be done right then and there is the key to success. At the same time, maintaining high levels of enthusiasm and energy under any circumstances leads to happiness in a career.
What is the biggest career challenge that you have faced, and what can others learn from how you overcame it?
The biggest challenge that I have faced at New Balance has been a lawsuit with a trademark squatter who registered the Chinese version of NEW BALANCE in China and sued us for trademark infringement. The trial court ruled against New Balance and imposed damages at Rmb98 million ($15 million). New Balance appealed the decision and the high court found the trial court to be mistaken in the damages award, which it lowered to Rmb5 million ($750,000). We are still in the process of retrial and hopefully the Supreme Court will overrule the decision. The lessons that we have learnt from this case are to:
- register both English and Chinese character marks at the earliest opportunity before launching business in China;
- continue to aggressively oppose bad-faith filings; and
- lobby the China National IP Administration (CNIPA) for stricter examination, as this has become a common problem for almost every famous brand selling products in China.
What are the key lessons that you have learnt about enforcement efforts in China while at New Balance?
First, form a coordinated strategy that deals with infringement aggressively and systematically to secure the core brand identity with a full overview of the market.
Second, reinforce administrative action, criminal prosecution and civil litigation to deter and disrupt the manufacturing, distribution and sale of counterfeit and infringing products.
Third, create an action plan that can be allocated to all service providers to ensure that they are working under the same coordinated strategy and towards the same objectives.
The company has been proactive in talking about its successes, particularly around high-profile wins in China. What are the benefits of highlighting enforcement successes both in China and internationally?
New Balance has won several victories when defending its IP rights before the Chinese courts. Each win has given us the confidence to continue our proactive brand protection strategy in China. It has also sent a strong deterring signal to trademark infringers that New Balance’s brand properties are non-negotiable and infringement of any kind will not be tolerated. Proactively delivering positive messages to the public promotes mutual trust with our business partners and can help to influence consumer attitudes and behaviour. In addition, proper media coverage can motivate local government authorities to increase efforts towards the protection of foreign brands’ IP rights.
Finally, if you could make one change to the Chinese IP environment, what would it be and why?
The issue of bad-faith trademark applications is a perennial problem for brand owners operating in China. Due to the prevalence of trademark squatting, it is not uncommon for brand owners to pay exorbitant sums to secure rights to trademarks that have been misappropriated by a squatter. The amendment of the Chinese Trademark Law is a positive one for authentic brand owners. Bad-faith applications that are filed with no intention for use should be rejected by the CNIPA. Applicants of bad-faith filings should face administrative penalties, such as warnings or fines. Statutory damages have been increased from Rmb3 million to Rmb5 million. If this recent change to the Trademark Law can be implemented appropriately and strictly, I believe that the IP environment in China will improve significantly.