Benjamin Choi is a partner of Mayer Brown JSM's IP & TMT Group. Benjamin focuses on local and foreign trademark prosecution (portfolio management, pre-filing advice on availability and distinctiveness of trademarks for registration, handling of official actions and contentious proceedings including opposition, revocation and invalidation actions, post registration matters including assignment, licence and security interest). Benjamin is experienced in conducting IP due diligence for merger and acquisition projects involving the transaction of IP assets. He also advises on trademark, copyright, design and patent enforcement and passing-off actions in Hong Kong and unfair competition in China, as well as domain name disputes in Hong Kong and China.

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The 13th People’s National Congress (“NPC”) recently approved the State Council’s proposal to restructure China’s State Intellectual Property Office (“SIPO”). The proposal intends to consolidate the administration of trademarks and patents and to streamline the enforcement of IPR in China. Continue Reading China Unveils Plan to Restructure State Intellectual Property Office

On 24 April 2017, the Beijing Intellectual Property Court (“ the Court”) published 18 classic cases concerning trademarks filed in bad faith. One of these cases dealt with a invalidation action filed by Tiffany and company (“Tiffany”), the luxury jeweler.

Tiffany prevailed in the invalidation action brought in 2013 against Chinese trademark registration no. 8009772 for “蒂 凡尼” (pronounced as “Di Fan Ni” in Mandarin) on wallpaper, carpets etc. in Class 27 in the name of Shanghai Zhendi Decoration Materials Co., Ltd. (“Shanghai Zhendi”). After the Trademark Review and Adjudication Board (“TRAB”) rejected the registration, Shanghai Zhendi appealed to the Beijing IP Court. Continue Reading Beijing IP Court Rules in Favour of Tiffany Against “Diffany”

Michael Jordan, the legendary NBA star, has finally established his rights in his Chinese name after 5 years of intensive administrative and appeal proceedings in China.
In China, Michael Jordan is more commonly known and addressed by the Chinese name “乔丹” (pronounced as “Qiao Dan” in Mandarin) which resembles the pronunciation of his last name “Jordan”. The present case is another typical example of a foreign brand owner’s name being hijacked by a local Chinese entity. The hijacker used both “乔丹” and “QIAODAN” as trademarks on shirts, sport shoes and apparel manufactured and sold in China since 2000. Michael Jordan had a long and hard fight to get his name back. He is now half way through recovering his Chinese name “乔丹” trademark, whilst the transliteration of his Chinese name “QIAODAN” is still in the hands of third parties. Continue Reading Michael Jordan: “Qiao Dan” is Me! Michael Jordan’s trademark fight in China over his Name Rights

In a recent decision, the Supreme People’s Court of China ruled that the use of a trademarked sign on goods manufactured in China solely for export purposes does not constitute “use” of a trademark. Consequently, such use could not be considered an infringement of a trademark registered in China. Continue Reading Supreme People’s Court: Goods Manufactured in China for Export Do Not Infringe Chinese Trademarks

In 2013, Moncler S.P.A. (“Moncler”) became aware of the manufacture and sale of down jackets by Beijing Nuoyakate Garment Co., Ltd. (“Nuoyakate”). Nuoyakate used marks and logos confusingly similar to Moncler’s marks on its products and also applied for the registration of several trademarks and domain names confusingly similar to Moncler’s marks in China and other Continue Reading Moncler Awarded Highest Amount of Damages Ever for China Trade Mark Infringement

In April 2015, the Guangdong Intermediate People’s Court delivered a judgment against New Balance, an American footwear manufacturer, for trademark infringement. New Balance was found to have used, knowingly and without prior authorization from the trademark owner, the mark “新百伦” (pronounced Xin Ba Lun, a Chinese transliteration from the English word “New Balance”) in connection with offers for the sale of New Balance shoes on Chinese online platforms. Continue Reading The Uphill Battle for Foreign Brand Owners to Protect Trademarks in China Continues