Shawn Tao

Attorney at Law

Shawn has accumulated rich practical experience in the administrative protection and litigation dispute resolution of intellectual property rights such as trademarks, business names, copyrights, and domain names, as well as intellectual property protection in e-commerce and franchising. He provides legal services for many Fortune 500 global companies and well-known domestic companies with a rigorous and serious working attitude and high-quality professional services. The business fields of his clients contains industry, information technology, e-commerce, electronic products, home improvement and construction products and services, smart buildings, building automation, HVAC, security and fire protection products, etc.

Shawn based in our Shanghai office. He leads the team there and manage the training of legal assistant and provide guidance to them for the daily business. He was awarded as the "Outstanding Employee at ChangTsi & Partners" in 2017 & 2019.

litigation5@changtsi.com

+86 10 88369999

Trademark Prosecution / Copyright & Domain Name / Litigation & Dispute Resolution

Shanghai

Practice Focus

Years with IP Matters

2015 until now

Professional Experience

Chang Tsi & Partners, Attorney at Law

Representative Cases

Represented DFJ DragonFund (Shanghai) Equity Investment Management Co., Ltd. filed the trademark infringement and unfair competition lawsuit against 6 defendants. In 2019, Beijing IP Court rendered the favorable judgment to DFJ and order the defendants to stop trademark infringement and unfair competition, publish the clarification statement to eliminate the effects, change their enterprise names, and compensate DFJ DragonFund damages of CNY 3 Million and reasonable cost around CNY 470,000 jointly.
In the trademark refusal case, win a favorable judgment for the client IFIXIT. The applied mark and the cited mark are similar, and our negotiation for the letter of consent with the owner of the cited mark went not smooth. Through careful searches, Shawn located that the owner has been canceled its AIC registration, with the new findings and related case laws searches, Shawn successfully convinced the judge to believe the registration of the applied mark will not bring confusion among the public with the cited mark. In the end, the judge approved the applied mark's registration.
Win 2 trademark invalidation cases for client ITW. Successfully convinced the court to hold that ITW's prior use of Buildex on fastener(nails) has certain fame in the fields and ITW's registration for Buildex in Class 7 are similar to Hangzhou Chuangyi's forestalled registrations for "Buildex and Design" and "Builder and Design" in Class 6. Clean up the obstacles for ITW's application for BUILDEX on fastener(nails), the goods of ITW's core interest.

Selected Awards

Outstanding Employee at ChangTsi & Partners

Publications

How to Examine the Evidence of Use in Trademark Non-use Cancellation –http://www.changtsi.com/zh/news, June, 2020;
Practice of Trademark Enforcement: Evidence of notarized online purchase accepted by AMR to render decision of punishment – http://www.iprdaily.cn/article_27061.html, Feb. 15, 2021;

Education

MUC, L.L.M (2015)
Northwest University of Politics and Law, Bachelor of Laws (2013)

Bar Admission

China Bar (2017)

Languages

Mandarin Chinese
English

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