Jason Yao

Practice Areas

Jason Yao is a Partner at Wanhuida Intellectual Property and a Member of the firm’s Management Committee. He is also the managing partner of the firm’s Shenzhen Office and Hong Kong Office. Mr. Yao's practice covers a wide range of intellectual property matters, including litigations on disputes over trademarks, patents, copyrights and trade secrets, investigation and enforcement against trademark counterfeiting, patent infringement and piracy through administrative and criminal actions, licensing, transferring and acquiring trademarks, patents and copyrighted works; handling compliance programs and government investigations on unfair competition and antitrust matters; providing advices on corporate governance, government relation, and crisis management.

Career

He has been highly regarded by clients for his profound knowledge of intellectual property issues, his sense of urgency and responsibility, and his comprehensive approach in dealing with complex legal issues.

Mr. Yao has a unique combination of in-house and outside counsel experience in managing intellectual property portfolios and corporate legal matters for both multinational and Chinese companies. Mr. Yao joined Proctor & Gamble Company as an in-house legal counsel after law school in 1996. He led the brand protection team in China and handled more than a thousand cases in 7 years, some of which were the very first such type of intellectual property cases in some local cities and provinces. After finished his advance education in intellectual property law at Boston University School of Law, Mr. Yao joined Gillette Company as the general counsel for the Greater China region, where he handled the most complicated investigation and enforcement against a counterfeit syndicate and worked closely with the management team in consolidating the joint ventures creatively. After Gillette merged into Procter & Gamble Company, Mr. Yao joined Acushnet Company, the world’s largest golf product manufacturer, where he served as the leading counsel for both intellectual property and general legal matters in the Asia/Pacific region. He successfully coordinated the major US golf manufacturers and put together a comprehensive program for fighting cooperatively and collectively against counterfeit and pirated products in the region and achieved significant results.

Mr. Yao served in the Quality Brands Protection Committee (“QBPC”) of China Association of Enterprises with Foreign Investment as the various committee vice chairman, the Legal Committee Chairman and the QBPC Vice Chairman for over 10 years and had worked with the legislative authorities, the judicial departments and government enforcement agencies for the improvement of the legislation and enforcement concerning intellectual property rights protection in China.

Mr. Yao is a frequent speaker in many international and domestic conferences and seminars on intellectual property issues, corporate governance and other various legal topics. He is also committed in building connection with law schools and having regular communications with the law students regarding intellectual property protection and legal profession.

In 2023, Mr. Yao is included in the List of Neutrals of the WIPO Arbitration and Mediation Center.

Professional Memberships

INTA

ACLA

QBPC

Publications

In 2022, Mr YAO authored a few articles including "Wenzhou court awards Siemens Rmb1 million in civil suit", "Developing a multiplatform approach to counterfeiting", "Uprooting the entire counterfeiting network by chasing online sellers: case study of recent success by US golf anti-counterfeiting group", among others.

In 2021, Mr YAO adds to his list of publications “Court sentences defendants to a total of 42 years in prison following largest-ever raid against online counterfeit golf products sellers” and “ABB wins rare private criminal prosecution and puts counterfeiter in jail for three-and-a-half years”.

Languages Spoken

English & Chinese

Awards

Work Highlights

SPC’s 50 Exemplary IP Cases: Representing ABB in bringing a private criminal prosecution against a counterfeit seller before a primary court in Wuhu, which found exporter Teaton and its owner Zhang guilty of selling goods bearing counterfeit registered trademarks, sentencing Zhang to 3.5-year imprisonment and imposing RMB 800,000 fines to Zhang and RMB 850,000 fines to Teaton. Both defendants appealed to the Wuhu Intermediate Court, which upheld the decision of the court of first instance.

Representing New Balance in winning a civil infringement suit against a slavish copycat of its iconic slanting “N” logo and peculiar trade dress. The first instance court ruled in favor of the client, granting an injunction, damages of RMB 18.2 million and a public apology.

Representing New Balance in the re-adjudication proceeding before the Supreme People's Court, which led to the successful invalidation of two trademarks in class 25 that imitated its iconic “N” logo. The SPC rulings may serve as precedents for similar cases where bad faith demonstrated in the way a registered trademark is used may have an impact on the determination of the similarity.

Representing New Balance in prevailing in the first instance, second instance and retrial of a trademark infringement and unfair competition suit against an infringer that intentionally altered its registered trademark in actual use to mimic the peculiar “N” packaging and registered trademark of the client. The trial court and court of appeal granted the client an injunction and awarded damages of RMB 3.3 million. The re-adjudication court Zhejiang High Court dismissed the retrial application of the infringer.

Representing Hong Kong jeweler Luk Fook in winning a trademark infringement and unfair competition lawsuit against an infringer, obtaining a court injunction and damages of RMB 6 million. The case has been selected as one of the exemplary cases of China IP Magazine.