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About the Course
Introduction
This CLE webinar will guide IP counsel on the new Chinese Trademark Amendments and other recent changes. The panel will address key changes proposed by the Chinese authorities and discuss how they impact legal, as well as business approaches. The panel will discuss considerations when advising about protecting trademark rights in China and will offer best practices for the protection of brands in China and Asia generally.
Description
Many of the brand owners in the U.S. and Western world fall into two main categories: (1) companies that are currently manufacturing/sourcing or advertising/selling to China (or both); (2) companies that are actively thinking and planning to either manufacture or advertise--or both--in China in the near future.
Squatters are rampant within the trademark system in China and cause significant challenges when attempting to obtain and enforce a trademark in China. This behavior impacts not only the brand owner's ability to secure trademark registrations, but also the ability of the enterprise to continue business as usual. A U.S. trademark registration has no legal authority in the People's Republic of China, which makes a trademark registration with the China National Intellectual Property Administration (CNIPA) a prerequisite for conducting any business in China. What can a brand owner do if its trademark is already registered by squatters?
On top of these longstanding issues, in January 2023, the CNIPA released a draft that formally kicked off the fifth amendment to the Trademark Law. With 101 articles (including 74 new/revised ), it is an ambitious draft for the public's consideration. Exactly what are the key changes that brand owners must be aware of and how would these changes impact legal strategies when it comes to trademark protection in China?
During the same month, the Supreme People's Court released its Draft Interpretation of Several Issues Concerning the Application of Law in Handling Criminal Cases of Intellectual Property Infringement. This interpretation from China's highest court will guide the lower courts on criminal IP cases. What is the key message by the Supreme Court and what's the new trend in China IP protection?
The 12th edition of Nice Classification became effective on Jan. 1, 2023, and many newly added terms provide specific coverage for Web3 goods and services. What will be China's reaction and should we expect new descriptions and even subclasses when it comes to NFTs, crypto assets, blockchain, and the metaverse space?
Listen as our panel examines the key changes proposed by the Chinese authorities and discusses how they impact legal, as well as business approaches.
Presented By
Ms. Chicoski is an attorney advisor in the United States Patent and Trademark Office (USPTO) Office of Policy and International Affairs (OPIA) working toward improvements to the international intellectual property infrastructure. She focuses on Trademarks and Geographical Indications, and serves on the Latin American and China Teams of OPIA. Ms. Chicoski's responsibilities include development and direction of guidance on international and domestic trademark policy, providing technical advice and guidance and supporting trade and treaty related activities of the U.S. government. In addition to training and supporting bilateral, multilateral and international meetings, and she consults on a variety of substantive trademark prosecution, maintenance and operations issues.
Ms. Hsiao advises companies on trademark, copyright, and cross-border commercial matters throughout Asia — including China, Taiwan, Hong Kong, Japan, Korea, and Southeast Asia — as well as in key enforcement regions from South America to the UAE and beyond. Her practice spans portfolio strategy, market entry planning, online brand protection, high-stakes disputes, and coordinated multinational enforcement, anticounterfeiting program and fraud/criminal actions. Ms. Hsiao has pursued matters through every level of China’s system, securing more than 1000 opposition, invalidation, and nonuse wins, and works closely with U.S. and European authorities on counterfeit seizures, arbitration, and product recalls. A dedicated advocate against counterfeits, she has participated in numerous raids across Mainland China, Asia, Europe, Middle East and beyond. In 2022, she was appointed by the U.S. Secretary of Commerce to the USPTO Trademark Public Advisory Committee (TPAC), and in 2025 she was selected to serve as Chair, advising on policy and strategic direction for the U.S. trademark system. Additionally, Ms. Hsiao was chosen by the former Deputy Secretary-General of the China Trademark Association as the only Western attorney to contribute to China’s first trademark textbook for international audiences.
Ms. Hsiao advises companies on trademark, copyright, and cross-border commercial matters throughout Asia — including China, Taiwan, Hong Kong, Japan, Korea, and Southeast Asia — as well as in key enforcement regions from South America to the UAE and beyond. Her practice spans portfolio strategy, market entry planning, online brand protection, high-stakes disputes, and coordinated multinational enforcement, anticounterfeiting program and fraud/criminal actions. Ms. Hsiao has pursued matters through every level of China’s system, securing more than 1000 opposition, invalidation, and nonuse wins, and works closely with U.S. and European authorities on counterfeit seizures, arbitration, and product recalls. A dedicated advocate against counterfeits, she has participated in numerous raids across Mainland China, Asia, Europe, Middle East and beyond. In 2022, she was appointed by the U.S. Secretary of Commerce to the USPTO Trademark Public Advisory Committee (TPAC), and in 2025 she was selected to serve as Chair, advising on policy and strategic direction for the U.S. trademark system. Additionally, Ms. Hsiao was chosen by the former Deputy Secretary-General of the China Trademark Association as the only Western attorney to contribute to China’s first trademark textbook for international audiences.
Mr. Shen concentrates his practice in IP strategy counseling, foreign-related IP litigation and administrative enforcement. He has 30 years of experience in representing many famous domestic and foreign companies in lawsuits and arbitrations with respect to patent, trademark, copyright and unfair competition disputes. Mr. Shen also has been invited to attend International IP Symposiums many times to deliver speeches in respect of China IP Protection and has been establishing extensive connections with foreign IP attorneys. Mr. Shen has been qualified to practice law in both China and New York State since 2000 and 2005 respectively.
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Live Online
On Demand
Date + Time
- event
Thursday, June 29, 2023
- schedule
1:00 p.m. ET./10:00 a.m. PT
- Key system differences between trademark laws in China and the U.S. that lead to practical impacts on business operations
- Considerations for a brand owner before manufacturing and advertising in Asia
- Considerations when advising about protecting trademark rights in China through the International Registration of the Madrid Protocol or nationally-filed application with CNIPA
- Key changes proposed by the Chinese authorities and their impact on trademark practice in China
- Tips, trends, and suggestions when it comes to trademark litigation, criminal enforcement, and metaverse protection
- Best practices for the protection of one's brand in China and Asia in general
The panel will review these and other key issues:
- Key system differences between trademark laws in China and the U.S. that lead to practical impacts on business operations
- Considerations for a brand owner before manufacturing and advertising in Asia
- Considerations when advising about protecting trademark rights in China through the Madrid Protocol or nationally-filed application with CNIPA
- Key changes proposed by the Chinese authorities and their impact on trademark practice in China
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