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 of trademarks, patents and copyrighted works; handling compliance programs and government investigations on unfair competition and antitrust matters; advising on corporate governance, government relation, and crisis management.

Career

Mr. Yao 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 graduating from 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 on a regional level. After finishing his advanced 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 oversaw the most complicated investigation and enforcement against a counterfeit syndicate and worked closely with the management team in creatively consolidating the joint ventures. After the merge of Gillette and 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 chair for various committees and the QBPC Vice Chairman for over 10 years, working with the legislature, the judiciary and government enforcement agencies for the improvement of the legislation and enforcement concerning intellectual property rights protection in China.

In his capacity as an arbitrator at the Shenzhen Court of International Arbitration, Mr. Yao arbitrates cases on IP disputes and commercial contract disputes on a frequent basis. He is also an expert member at the WIPO Arbitration & Mediation Center. Mr. Yao is currently a council member of Beijing Justra IP Center, a leading IP think tank in China. Mr. Yao has been retained by the AmCham South China as a Special Advisor to Chairman for Legal & IP Policy Watch for the year of 2022 and 2023. He also serves on the Board of Directors of INTA Foundation, a charitable organization working to expand educational and professional development opportunities in IP for diverse, under-represented populations around the world.

Professional Memberships

INTA

ACLA

QBPC

Publications

Mr. Yao is a prolific writer. A list of his most recent publications include:

 Supreme Court awards New Balance Rmb30 million in damages in dispute with infringer (WTR, Co-author)

 Navigating China’s social media landscape: issues and best practices for brand protection (WTR)

 Developing a multiplatform approach to counterfeiting (WTR)

 Wenzhou court awards Siemens Rmb1 million in civil suit (IAM, Co-author)

 Uprooting the entire counterfeiting network by chasing online sellers: case study of recent success by US golf anti-counterfeiting group (WTR)

Work Highlights

Mr. Yao has been instrumental in securing favourable results for the firm’s clients in quite a few high-calibre cases, some of which has been selected by the China Supreme People’s Court (SPC) for its legal significance:

Top 10 QBPC IP Protection Cases of 2023 – 2024: Representing New Balance in obtaining a permanent court injunction and landmark damages of RMB 30.04 million (inclusive of reasonable costs) in the second instance of a trademark infringement and unfair competition suit against the infringers using a slavish copycat of the client’s iconic slanting “N” logo and its Chinese trade name, which has acquired certain influence.

Abbreviature of Adjudication of the Intellectual Property Court of the Supreme People's Court (2023): Representing Carlsberg in successfully invalidating the design patent, which infringes on its V8 registered trademark filed in prior to the design at issue. The case went through invalidation action at the CNIPA and two instances of court proceedings. The Supreme People’s Court, which serves as the court of appeal in the administrative proceeding, ruled in favor of Carlsberg.

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.

Exemplary cases of China IP Magazine: 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.

SPC’s 50 Exemplary IP Cases (2020): 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.

Languages Spoken

English & Chinese

Awards

Education