How long have you been with Procter & Gamble?
I have been with the company for 20 years and I have been Brand Equity Counsel for seven of those years. Before becoming Brand Equity Counsel I was with Procter & Gamble’s Commerce Legal team.
How big is your team?
There are less than 20 members in the Asia Brand Equity team, and they are based in China, Singapore and Japan.
The team covers the whole of the Asia-Pacific region, including Southeast Asia and India. We are also responsible for Australia and New Zealand. Our products are sold in many of the biggest markets in the region.
What are your duties as Brand Equity Counsel?
The team is responsible for all types of trademark matters for every brand in Procter & Gamble’s portfolio in Asia. Our responsibilities include trademark clearance, prosecution, as well as litigation. In addition to trademark issues, we are also responsible for other IP matters, such as copyright and design filings related to our products and packaging.
The Brand Equity Counsel’s role is divided according to the company’s lines of business in the region. Each Asian counsel is responsible for matters that arise in that product line or category anywhere within the geographic scope. I am responsible for several categories, including baby care, feminine care, personal health care, oral care and batteries. So if we have to prosecute a trademark in the category within my care, whether it is in Australia or India or China, I would be the one handling it.
Also, for specific issues in Greater China, even it falls outside my categories, I may help out my colleagues who are based outside of China.
Patents are handled separately by the innovation team.
What are some of P&G’s biggest brands?
Procter & Gamble has many big brands. Some of them include: PAMPERS for baby products; VS, H&S, PANTENE, REJOICE and CLAIROL for hair care products; OLAY and SK-II for skin care products; TIDE and ARIEL for laundry products and SAFEGUARD for personal cleansing products. Some of our other brands include GILLETTE, BRAUN, VICKS (cough and cold medicine), and DURACELL batteries, among others.
Are there any countries where P&G faces particular problems?
In the last few years, we have been seeing many infringement and counterfeit cases in China, India and South Korea, especially as regards to our beauty care brands, such as our haircare and skincare products. We also see many infringement and counterfeit cases involving our body care and laundry products.
The new Trademark Law in China will be coming into effect on May 1. Many of the changes are quite substantial. Award of damages is one such change, where the maximum statutory damages are now RMB3,000,000 (US$482,000, €348, 730), six times higher than that under the previous law. This is a very positive development that I believe will help deter infringers.
Another positive change is the harsher punishment for repeat infringers, which is now defined as those who commit multiple acts of infringement more than two times in five years. Under the previous law, dealing with these repeat infringers was very difficult. You could start an enforcement action against them and the counterfeiter gets hit with a small administrative fine. The penalty was small so it was easy for the infringer to start up again within a few months.
A positive change under the new law relates to the confiscation of the infringer’s equipment, which was almost not possible previously. Many of these infringers don’t have a lot of cash on hand, but the equipment that they use to commit the infringing products is very expensive. Now, the equipment mainly used in the manufacture of the infringing goods can be confiscated and even destroyed.
This is also a good change that will cripple the activities of infringers.
The changes in the new Trademark Law are indeed timely and will benefit brand owners.
India is another country where we face brand protection challenges. Unlike China, there is no administrative enforcement so you have to initiate a court action for enforcement. These can take longer which make it tougher to protect our brands.
Is online infringement a challenge for Procter & Gamble?
Online infringement is becoming a bigger and bigger issue. In proportion to traditional forms of counterfeiting, it is a growing issue.
We have a team responsible for monitoring online infringement, and they will deal with these infringers by giving notice of our takedown requests.
Do you work with online marketplaces such as Taobao in China?
Yes, we work with Taobao a lot. Taobao has been paying a lot of attention to the concerns of QBPC members, and they have come to meet with us and explained their takedown procedures. Our online monitoring team issues a lot of takedown requests to Taobao.
Taobao has streamlined their approach to online counterfeiting and infringement. They work with brand owners and are helpful in dealing with counterfeiters and infringers.
What qualities do you look for in outside counsel?
The quality of their work is the most important. Their opinions need to be accurate and I need them to provide practical solutions and a business-savvy approach to the issues.
You are based in nearby Guangzhou; what do you recommend for visitors to Hong Kong for the first time?
I think Hong Kong is a great place for sightseeing and shopping. I recommend that visitors visit Ocean Park if they have time, especially for those coming with their families. For shopping, I enjoy shopping at Times Square and Langham Place, where you can find many different things in one big mall. I also recommend taking the opportunity to try some authentic Cantonese food. I hope everyone has a good time here.
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