Beijing (Photo: ESB Professional/Shutterstock.com) Beijing (Photo: ESB Professional/Shutterstock.com)

 

Kilpatrick Townsend & Stockton has opened an office in Beijing to serve clients’ trademark needs in China, which is rapidly becoming the world’s biggest market for brands.

The office, which launched Jan. 1, builds off Kilpatrick’s marquee trademark law practice, one of the largest among big firms.

“We felt we needed to be on the ground in China,” said Chris Woods, who heads Kilpatrick’s China brands team and is relocating from New York to open the Beijing location.

The Beijing office, located in the city’s central business district of Chaoyang, will predominantly serve U.S. and European clients with Chinese subsidiaries, Woods said, as well as Chinese companies developing their own brands.

“China is probably the most important market in the world,” by size and value, he said. And many decisions that clients make about protecting and promoting their brands in China are now done locally, not from the United States or Europe, he added.

“We’ve always worked very closely with U.S. in-house counsel,” Woods said. “About 18 months ago, we decided we need a parallel practice in China.”

Woods, who opened Kilpatrick’s New York office in 2004, spoke to Law.com’s Atlanta affiliate, the Daily Report, from the airport in New York on the way to Beijing. Shuang Yu, an associate, and Qunfan Chen, a trademark agent, are relocating to Beijing with Woods.

This is not Kilpatrick’s first foray into Asia. The firm opened a Shanghai office in 2012 that is more broadly focused on intellectual property law, including patent protection. It also has a Tokyo office, gained from the 2011 merger of Atlanta-based Kilpatrick Stockton with San Francisco-based Townsend and Townsend and Crews.

But China’s major government agencies, including its trademark registration agency and intellectual property court, are in Beijing, said Kilpatrick’s chair, Henry Walker IV.

“We represent some of the premier brands in the world,” Walker added. “To be able to offer a global solution for clients’ branding issues, we need capability in China.”

China’s trademark registration office has greatly expanded in the past decade as the market has evolved, Woods said. “China is the largest trademark-filing country by far now, so the need to build relationships with the trademark office and the trademark adjudication office is really important.”

Largest Brand Market

InterContinental Hotels Group, a Kilpatrick client, is an example of the firm’s work in China, Woods said. “It is listed in Britain with extensive U.S. assets, and it’s growing fast in China.” IHG owns a multitude of hotel brands, including Holiday Inn, Crowne Plaza and Indigo, he said, and it has developed a stand-alone Chinese brand, Hualuxe, which its website calls “the first upscale international brand designed specifically for Chinese guests.”

Brand protection in China is more complex than registering a trademark and then fending off infringements, Woods said. Local brands are not as developed as Western ones, and there are different rules for registering trademarks and protecting them.

“Chinese companies are good at developing technology but not so good at developing brands—and brands are what sells the product,” Woods said, adding that helping Chinese companies bridge these differences in thinking is part of what Kilpatrick’s trademark team helps to accomplish.

The firm is working on brand strategy and protection for some Chinese companies making products with far more advanced technology than their Western equivalents, Woods said, such as a refrigerator that can track its contents and order more as needed.

Even U.S. companies with established brands must figure out a registrable trademark, as far as logo, design and words, that also works in the Chinese market, he said. China recognizes far broader trademark usages than in the U.S., so there are plenty of opportunities to infringe, he said.

“Many U.S. trademarks are registered very weakly in China, based on what they have in the United States,” Woods said.

China recognizes first-to-file, not first-to-use for marks. As a result, he said, enterprising businesspeople in China have speculatively registered existing trademarks from foreign markets.

“Part of what we do is try and get the mark back,” Woods said, adding that many companies have paid more than $1 million to recapture their marks in China.