Our client, a U.S. NGO*, runs summer programs in the U.S. for students from China. An agent in China promoted their programs abroad. But when the NGO wanted to open an office in China, they discovered the agent had already registered their trademark for themselves. LITAO served as their go-between.
*We cannot disclose company names here,
but please ask us if you wish for more details.
The first reaction in such a situation may be an immediate sense of betrayal: the NGO couldn’t even use their own logo as promotion since the trademark had already been taken. It may seem justified to confront the agent in question with accusations, but LITAO encouraged the organization to stay calm. We knew intellectual property rights worked differently in China, and our lawyers confirmed the same. We advised a communication strategy to test the waters, and as it turns out, the agent had registered the trademark for the benefit of the NGO as well as themselves—so other Chinese organizations would not fake their programs, another common occurrence in China.
Trademark battles, if gone wrong, can cost enormous amounts of money, with the Chinese court system favoring the Chinese company that had registered first. But as there was good will on both sides, the agent agreed to transfer the IP rights to the NGO free of charge. The two went on to further cooperation—this would not have happened had the communication strategy been one of blame and accusation.