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Professionals

Charles (Chao) FENGPartner

Personal profile

  • Mr. Feng graduated from Duke Law in the US and China Foreign Affairs University with LLM degrees. Mr. Feng is the Director of International Business Department and a Senior Partner of Tahota (Beijing) Law Firm, Head of Digital Economy Law Center of Tahota. Mr. Feng is a reputable IP and Data Law expert with substantial experience on intellectual property law, data law and anti-trust law with well-known international law firm and Chinese law firms, focusing on IP litigation, prosecution and enforcement, trademark and patent portfolio managements, as well as cyber and data law related legal matters. Mr. Feng has represented numerous foreign clients from US, EU, Japan, UK, Korea and ASEAN countries at various levels of courts as well as administrative organs in China. Mr. Feng is particularly experienced in addressing clients' commercial needs in the areas of IP litigation, arbitration and prosecution, including patent, copyright, trademark, and domain names, unfair competition, trade secrets. In addition to his work in the courtrooms, he has been involved in IP transactional work, including the drafting, negotiation and enforcement of IP assignment or licensing agreements. Besides, Mr. Feng and his team also represented a number of multinationals in dealing with their legal matters in relation to cyber security, privacy and data protection. One of cases handled by Mr. Feng was ranked as one of 50 Model IP Cases by Supreme People’s Court of China in 2013. In 2019, a case handled by Mr. Feng acquire the first preliminary injunction on basis of trademark infringement and unfair competition from Shijingshan District Court in Beijing.

  • As a highly regarded expert at home and abroad, Mr. Feng is currently serving as the Consultant Expert to Guiding Case Research Center of Supreme People’s Court of China, Vice Director of Copyright Society of China, Standing Committee Member of China Intellectual Property Law Association, Committee Member of TOPC (Trademark Office Practice Committee) of INTA. Committee Member of Unfair Competition and Antitrust Committee of Beijing Bar Association, an IP Expert for EU-China IPR Helpdesk as well as a member of American Bar Association, China Bar Association and INTA.

  • His professional experience includes working with the nonprofit Japanese government organization Japan External Trade Organization (JETRO), and top international and domestic law firms in China, Baker & McKenzie LLP, King & Wood Mallesons, Wan Hui Da Law Firm and East Concord Partners, which gave him valuable insights into the industry.

  • Mr. Feng actively participate events in IP society internationally and domestically. He is an influential IP expert in China. Mr. Feng is currently serving as the Consultant Expert to Guiding Case Research Center of Supreme People’s Court of China; Vice Director of Copyright Society of China, a Standing Committee Member of China Intellectual Property Law Association, an IP Expert for EU-China IPR Helpdesk, a Trademark Office Practice Committee Head of INTA as well as a Committee Member of Unfair Competition and Anti-trust Committee of China Bar Association and a Member of Legal Committee of AmCham and American Bar Association.

  • The team led by Charles Feng consists of experienced lawyers and patent attorneys who are able to provide IP, Data Protection, Foreign investment and Dispute resolution related legal services in Chinese, English, Japanese and French.

Education background

  • B.A., China Foreign Affairs University

  • LL.M, China Foreign Affairs University

  • LL.M, Duke University, North Carolina, United States

Work experiences

  • 2002-2004 Japan External Trade Organization, IP Counsel

  • 2004-2008 Baker &McKenzie LLP, Associate

  • 2008-2011 King and Wood Mallesons, Senior IP litigator

  • 2011-2015 Wan Hui Da Law Firm, Partner

  • 2015-2022.8 East Concord Partners, Senior Partner

  • 2022.9- present Tahota (Beijing) Law Firm, Senior Partner, Head of International Business Division

Social positions and memberships

  • EU Chamber of Commerce SME Helpdesk Intellectual Property Expert

  • US Chamber of Commerce IP Expert

  • China Copyright Society Standing Director

  • Director China Trademark Committee, INTA

  • Member of International IPRs Committee, Section of International Law, American

  • Bar Association (ABA)

  • Committee Member, Competition Law Committee, Beijing Bar Association

  • Standing Committee Member China Intellectual Property Law Association

  • Member American Bar Association

  • Member China Bar Association

Honors and evaluations

  • Mr. Feng and his team are highly acclaimed in the Chinese IP and Cyber law practice.

  • Chambers and Partners Listed Top IP Lawyer (2024)

  • Managing IP, IP Stars (2022-2024)

  • Asia IP, Top 100 China IP Law expert. (2020-2024)

  • World Trademark Review, Top trademark litigation lawyer (Silver) (2020-2024)

  • World Trademark Review, Top trademark non-litigation lawyer (Bronze) (2020-2024)

  • Legal 500, Listed IP and TMT lawyer (2022-2024)

  • Legal 500, Listed TMT lawyer (2023-2024)

  • LEGALBAND, Excellent Video Game and Esports Lawyer (2023-2024)

  • Asia Business Law, A-List Lawyer (2024)

  • EXTERRO, Top 20 Data & Privacy Lawyer (2022)

  • LEGALBAND, Excellent Cyber Security and Data Protection lawyer (2018 -2024)

  • LEGALBAND, Excellent IP litigation lawyer and Excellent IP Non-Litigation Lawyer, (2020-2024)

  • Asian Legal Business, Top 15 China IP Lawyer (2015)

  • LEGALBAND, Top 15 IP Versatile Practitioners (2021)

  • China IP Forum, Top Antitrust Lawyer (2019)

Representative performance

  • Manage trademark and patent registration and enforcement portfolios in China for leading multinationals in food and beverage, fashion and garments, publication and advertisement, oil and lubricant, environmental preservation, lighter, stationary and home appliance industries.

  • Represented a famous US home appliance brand in its ground breaking cases to establish the finding of unfair competition against the distribution of unauthorized non-franchising brand products at the franchisee store at 20 different intermediate and high courts in China.

  • Represented one of the largest fashion magazine publishers in the world in its ground-breaking civil lawsuit by successfully finding the use of a 20 years old uncontestable maliciously registered mark as copyright-infringing and constituting unfair competition at Beijing IP Court and acquiring the injunction against the use.

  • Conduct cybersecurity and data protection compliance check, prepare and establish the system regarding storage and cross-border transfer of data for a top multinational in air-conditioner industry.

  • Conduct cybersecurity and data protection compliance check, prepare and establish legal documents and framework for a European manufacturer to facilitate its establishment of online distribution channel with the largest online distribution platform in China

  • Represented a well-known US software manufacturer in copyright infringement litigation in Wuhan Intermediate Court in 2014 and won a record-high damage of CNY 5.8 million by well-tailored litigation strategy and successful evidence preservation action.

  • Represented a US and EU software manufacturer in copyright infringement litigation in multiple courts in China resulted in compensation for more than CNY 11 million.

  • Represented a European health medical machine manufacturer in its arbitration regarding distribution contract at CIETAC Shanghai

  • Represented one of the largest ASEAN country-based food and beverage manufacturer in its contract dispute with its Chinese distributor at a court in Beijing, the case resulted in complete rejection of the claim filed by the Chinese company amounting to CNY 3 million.

  • Advised a well-known European multinational on criminal and administrative prosecution against trade secret misappropriation

  • Advised and completed an IP transactional deal between a well-known US lighter manufacturer and world largest internet platform provider which amounts to CNY 5 million

  • Represented the largest Japanese Oil manufacturer in its trademark administrative and civil litigation by successfully invalidated seven different pre-emptive registrations of a trademark squatter via trademark prosecution and administrative litigation as well as succeeded in the following civil action by acquiring the first preliminary injunction by a Chinese district court and winning a compensation of CNY 3.4 million, the largest amount of statutory damage under then PRC Trademark Law.

  • Advised a well-known US software manufacturer in copyright infringement litigation in Wuhan Intermediate Court in 2014 and won a record-high damage of CNY 5.8 million by well-tailored litigation strategy and successful evidence preservation.

  • Advised Panasonic, one of the largest Japanese home appliance manufacturers on its design patent infringement litigation at Chinese court. The case has been reported as Model IP Case in 2011 by Changsha Intermediate Court.

  • Represented an American lighter manufacturer to register its 3D mark in China.

  • Represented a well-known American lighter manufacturer against unauthorized decoration on products in the civil lawsuit in Guangzhou Intermediate Court by clarifying the application of First-sale Doctrine and issue of revival of a trademark right.

  • Conducted administrative and civil action for one of the largest European engineering groups against trade secret misappropriation.

  • Represented a well-known Japanese publisher and the name of its carton figure over its pre-emptive trademark registration by Chinese pirates, succeeded in both the copyright infringement litigation and the trademark cancellation proceedings which attracted huge attention from Japanese and Chinese IP societies and media.

  • Advised a famous French cosmetic manufacturer concerning its trademark and unfair competition litigations and enforcement actions.

  • Successfully defended the first antitrust action based on IP misuse brought into China

  • Advised multiple European stationary manufacturers concerning their customs protection and enforcement actions against infringing retailors in China.

Main writings

  • Publications In English:

  • 2024 American Business in China White Paper, Amcham Co-drafter (May 2024)

  • Criteria for determining validity of trademark coexistence agreements in China (MIP, March 11, 2024)

  • China issued its guidelines for security assessments of outbound data transfers ( MIP, June 12, 2023)

  • For meta or worse: China warms to trademark protection in NFTs, January, 2023

  • Brief Analysis on Measures for the Standard Contract for Outbound Transfer of Personal Information (europa.eu) EU Commission Official website, April, 2023

  • From Muji to Manolo, the unpicking of China’s first to file system, Managing IP, August 2022

  • Insights into China’s Network Data Security Risk Assessment Implementation Guidance(MIP, December 22, 2023)

  • Brief analysis on revision of PRC Anti-Monopoly Law and its implication, EU Commission Official website, June, 2022.

  • Employee Inventions in China Chambers and Partners, November 2016, Chambers and Partners

  • The Application And Limits Of First-Sale Doctrine Against The Distribution Of Unauthorized Alteration Of Products mondaq February 2016

  • Final draft of proposed PRC Copyright Law amendment released by NCAC, North Carolina Bar Association Periodical, May, 2014

  • Better and Quicker Enforcement of Copyright in China, Managing Intellectual Property, March 2, 2013

  • Light at the end of the tunnel: Zippo recognized as a well-known trademark, Lexology, April 11, 2013

  • MAYBE Not: use of registered mark outside scope of protection is infringing, International Law Office , June 2012

  • Setting Precedents in IP Law, China Law and Practice, June, 2012

  • Case illustrates Application of Article 41(1) of PRC Trademark Law, World Trademark Review, March 7, 2012

  • Publications In Japanese:

  • The Interpretation of Chinese IP Law and its Practice, Book, published by Omusha, Tokyo, April 2022

  • The Shape of Commodity is Protectable under Anti-Unfair Competition Law of PRC,PATENT Journal, published by Japan Patent Attorneys Association, May 2011

  • Trademark Infringement Liability for ISP, PATENT Journal, published by Japan Patent Attorneys Association June 2013

  • Publications In Chinese:

  • Legal Liability of Commercial Platform Provider Concerning On-line Transaction of Infringing Products, Electronics Intellectual Property, September 2012

  • Analysis and Verification of OEM Trademark Infringement Issue, Electronics Intellectual Property, June 2013

  • Speeches In English:

  • Speaker, “Secondary Liability of platform on IP infringement”UK IPO Webinar, Beijing, October 14,2022

  • Speaker, “Best Practice under Personal Information Protection Law of China”Italian Chamber of Commerce Webinar, Beijing, October 8,2022

  • Speaker, “Revision of Trademark Examination Guideline of CNIPA”INTA Webinar, Beijing, June 2,2022

  • Speaker, “Revisions of the Copyright Law and the Patent Law as well as Enterprises’ Countermeasures” EU Chamber of Commerce, German Chamber of Commerce in China, Webinar, Beijing, June, 2021

  • Speaker, “How to Increase IP Protection through Customs Registration and Enforcement” EU Chamber of Commerce, Italian Chamber of Commerce in China, Webinar, Beijing, May, 2022

  • Speaker, “2019 PRC Trademark Law Revision and it Impact” at EU- China IP Summit of IP Key

  • Speaker, “2019 PRC Trademark Law Revision and it Impact on Protection of House Mark in China”, FICPI, Vienna, Austria, October 2019

  • Speaker, “ Trade mark protection in China: What Australian attorneys need to know - YouTube” Webinar, IP Australia, Australian Embassy to China, Beijing , June 2019

  • Speaker, “Use at Trademark Sense- A Magic Word or A concrete Rule ”.

  • INTA Annual Conference, Barcelona, Spain, May 2017

  • Speaker, “New Development of Preliminary Injunction in China” USPTO, Loyola Entertainment Law Forum, Los Angele, USA November 2016

  • Speaker, “IP Protection in Sports industry” EU Chamber of Commerce, SME Helpdesk, Beijing China, October 2016

  • Speaker, “Who should be liable? - New development of secondary liability for trademark infringement in post-Silk era” INTA Regional Workshop, Beijing, China, September 2016

  • Speaker, “Patent and Trademark Protection in China” EU Chamber of Commerce, Tianjin, China March, 2016

  • Speaker, “Legal Liability of Commercial Platform for Transaction of Infringing products, International Trademark Association Conference at Washington D.C., May 2012

  • Speaker, Trademark Infringement Liability for OEM Manufacture, International Trademark Association Conference at Dallas, May 2013

  • Speeches In Japanese

  • Speaker, “Patent litigation in China”, Intellectual Property Group Seminar, JETRO Beijing, March 2011.

  • Speaker, “Defending tactics in patent infringement litigation in China”, Intellectual Property Group Seminar, JETRO, September 2010.

  • Speeches In Chinese

  • Speaker, “IP Protection at Internet Era”, Asia Law and Business

  • Speaker, “New gTLD, chances and challenges”, China Trademark Festival, June 2013, Dalian, China

  • Interview (English)

  • Interviewed by Financial Times regarding “Antitrust Probe against Meituan in China” in April 2021

  • Interviewed by New York Times regarding Trump family related Pre-emptive trademark registration issue in May 2018

  • Interviewed by New York Times regarding New Balance case in April, 2017

  • Interviewed by South China Morning Post in HK on Trump trademark issue

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