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Charles (Chao) FENGPartner

Personal profile

  • Mr. Feng is a reputable IP and data law expert with substantial experience on intellectual property law, data protection law and anti-trust law with reputable international law firm and Chinese law firms, focusing on IP litigation and enforcement, trademark and patent portfolio management, as well as data protection and cyber security related legal practice. Mr. Feng has represented numerous foreign clients from US, EU and Japan 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. He has also been involved in IP transactional work, including the drafting, negotiation and enforcement of IP assignment or licensing agreements. Besides, he also represented a number of multinationals in dealing with legal matters in relation to cyber security, personal information and data protection. 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, an IP Expert for EU-China IPR Helpdesk as well as a member of American Bar Association, China Bar Association and INTA.

Education background (optional)

  • B.A., China Foreign Affairs University

  • LL.M, China Foreign Affairs University

  • LL.M, Duke University, United States

Work experiences (optional)

  • 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 (optional)

  • EU Chamber of Commerce, Intellectual Property Expert

  • Guiding Case Research Center of Supreme People's Court of China, Consultant Expert

  • China Copyright Society, Standing Director

  • China Intellectual Property Law Association, Standing Committee Member

  • International Trademark Association Trademark Office Practice Committee, Expert

  • Beijing Bar Association, Member of Antitrust and Unfair Competition Law Committee

Honors and evaluations (optional)

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

  • Asia IP, Top 100 China IP Experts (2018-2022)

  • World Trademark Review, Excellent Litigation Lawyer (2020-2022)

  • World Trademark Review, Excellent Non-Litigation Lawyer (2020-2022)

  • LEGALBAND, Excellent Cyber Security and Data Protection Lawyer (2018-2021)

  • LEGALBAND, Top 15 IP Versatile Practitioners (2021)

  • LEGALBAND, Excellent IP litigator (2016-2022)

  • LEGALBAND, Excellent IP non-litigation lawyer (2016-2022)

Representative performance (required: corresponding to selected specialties and industry sectors)

  • Manage trademark and patent registration and enforcement portfolios in China for leading multinationals in media, food and beverage, electronic and home appliance industries.

  • Represented a famous US home appliance brand in its ground breaking case to establish unfair competition against the distribution of unauthorized products at the franchisee store.

  • 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 litigations in multiple courts in China resulted in compensation for more than CNY 11 million.

  • Advise famous manufacturers in home appliance and automobile industry on cyber-security and data protection.

  • Advise a well-known European multinational on criminal prosecution against trade secret misappropriation.

  • Advised and completed an IP transactional deal between a well-known 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 million, the largest amount of statutory damage under 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 action.

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

  • Advised a famous Japanese home appliance manufacturer on its design patent infringement litigation at Chinese court. The case has been reported as Model IP Case in 2011 by Changsha Intermediate Court.

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

  • Advised an American lighter manufacturer against unauthorized decoration on distributed products by clarifying the application of First-sale Doctrine and issue of revival of a trademark right.

  • Advised a famous Japanese publisher on its pre-emptive trademark registration by Chinese pirates, successfully won both the copyright infringement litigation and the trademark cancellation proceedings.

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

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

Main writings (optional: linking to the lawyer's point of view)

  • In English:

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

  • Analysis on Regulation regarding standard contract for outbound cross-border transfer of personal information, EU Commission Official website, July, 2022.

  • 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.

  • 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.

  • In Chinese:

  • Antitrust regulation against IP enforcement, Asial Law and Business, June 2015.

  • 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.

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