With the advancement of economic globalization and the enhancement of China's economic strength, especially under the promotion of the "Belt and Road” initiative, the global influence of Chinese brands is gradually expanding. There is also an increasing demand for Chinese enterprises to ‘go global’. But during this process, inevitably, many problems were encountered. In addition to the most common external factors such as squatting and infringement of overseas trademarks, Chinese companies often regret to miss the appropriate time of brand layout for lack of knowledge about international rules and overseas trademark layout strategies.

In order to discuss the hot and difficult issues in trademark protection at home and abroad for Chinese companies, thus provide them with suggestions to seize the opportunity in the vast overseas market and plan for the trademark layout, the 10th China IP International Annual Forum & 2020 Annual Conference of In-House IP Managers in China specially set up a Panel Discussion with the theme of "Enterprises’ Difficulties and Layout Strategies of Trademark Protection in China and Overseas”, and invited many prestigious guests from the field of judicial trials, academic institutions, enterprises, and intellectual property service agencies to exchange ideas. The Panel was chaired by Du Ying, Professor at the School of Law, Central University of Finance and Economics.

In the opening speech of the Panel, Professor Du summarized various trademark issues currently encountered by Chinese enterprises overseas, stressing the importance of familiarizing with international rules and mastering trademark layout strategies for Chinese enterprises to expand overseas markets. She also gave an introduction to the purpose of setting up the Panel, it’s main topics and agenda.

Guo Chenhui, Director of Intellectual Property of Suning.com Co., Ltd, gave a speech focusing on "The Practical Experience of Chinese Enterprises’ Trademark Management and Rights Protection at Home and Abroad", with the examples of strategic layout and practical experience of Suning.com Co., Ltd. Regarding the current trademark infringement and abnormal trademark applications in the field of trademarks at home and abroad, Guo emphasized on the analysis of characteristics of malicious or illegal acts in the current stage from five aspects: malicious registration or squatting, passing-off of luxury brands, fake stores/websites, collecting personal information through WeChat Scan and false investment of counterfeit trademarks, followed with targeted countermeasures. Subsequently, from the perspective of trademark management, Guo explained how to deal with trademark infringement through trademark monitoring, bringing up with opposition and invalidation, protective registration, filing complaints about abnormal registration, timely interaction between trademarks and brands, internal resource utilization, and comprehensive measures. Guo also brought up with some judicial suggestions to deal with trademark infringement, such as strengthening the protection of well-known trademarks, expanding the disposal autonomy right to the company’s own trademark, clarifying the burden of proof, processing procedures and remedies for abnormal applications, strictly controlling the requirements for ‘use of trademarks’.

Li Ye, the Senior Partner of Advance China IP Law Office (ACIP), took a number of civil trademark infringement cases that the Supreme People's Court had re-sentenced in recent years as examples and made a speech on "Discussing the Difficult Points of Civil Infringement Cases". Through in-depth analysis of each cases’ circumstance, the focus of the dispute, the trial ideas, and relevant legal provisions and principles, Li expressed his own opinions on some difficult problems and legal disputes in China's judicial practice from aspects such as the criteria for determining the fair use of trademarks, the descriptive use of trademarks, and the indicative use of trademarks. Li pointed out in his speech that the distinctiveness and popularity of various trademarks might lead to considerable differences in their protection, which is not included in current Patent Law and Copyright Law despite the fundamental guiding role it plays in trademark trial practice.

Yao Bingbing, President of Nanjing Intellectual Property Court, gave a keynote speech themed as "Principles of Handling for Malicious Trademark-Cybersquatters to Prosecute Prior Rights Holders for Infringement",  in which he, combined real judicial trial cases, analyzed the basic principles that the court should pay attention to when faced with the above-mentioned issues. After explaining the causes, categories, nature and corresponding legal bases of malicious cybersquatting, Yao explained in depth the judging criteria for judicial concepts such as "malicious" and "improper means," and respectively explained the regulating methods for squatting others' trademarks for the purpose of using or not. Later, beginning with the judgment of relative concepts such as common consumer confusion, prior rights and geographical scope, OEM processing, etc., Yao explained the territoriality and independence of intellectual property reflected in the malicious trademark squatting cases. Next, Yao extended the discussion on the application of the good faith clause, the division of civil rights, the path to resolve the conflict of rights, the determination of fault liability, the judgment of the purpose of the right, and the nature of the conflict of rights, analyzing the differences and applications of concepts such as security and legitimacy. He concluded that the perfect rights system and legal system were just fantasy of law persons. Conflicts of rights are institutional contradictions that cannot be eliminated and need to be resolved by judges in specific cases. The legal regulation of malicious squatting should be resolved from the origin, i.e. trademark registration. While for the historical problems of registered trademarks can only be limited to specific commodities on the basis of respect for objective reality.

A hot topics discussion session was followed by the above keynote speeches. Zheng Jianwen, VIPKID Intellectual Property Director, shared his own practical experience in trademark layout and rights protection through the two cases experienced during VIPKID's growth process and explained the importance of intellectual property work for the development of enterprises. Zheng Lu, Partner of Advance China IP Law Office (ACIP), analyzed from the legal and regulatory process of malicious trademark-squatting and trademark infringement outside China and explained the vital role of intellectual property service agencies in helping enterprises cope with such issues. President Yao Bingbing concluded that the regulation of the malicious registration of trademarks required the court to take a more positive attitude, but in the end, it still needed to exert the power of the market.

The Panel Discussion has successfully concluded and has obtained the unanimous affirmation from guest speakers and audiences. What has been under discussion provides many useful lessons for Chinese companies to solve difficult problems in trademark protection both at home and abroad in the future, to properly carry out trademark layout, and to realize healthy business development.