Dr George Chan

Partner – Head of Beijing Intellectual Property Agency

Beijing IP Agency

T +86 10 8588 4500
george.chan@simmons-simmons.com

General Experience

George has extensive experience in advising clients in relation to all intellectual property matters in China. His practice ranges from preparing trademark registrations, oppositions, cancellations and invalidations to developing licensing strategies for clients. This includes assisting international companies with China domain name matters; guiding foreign associates with patent, trademark, copyright, and contentious matters for China; consulting clients with regards to regulatory approval; and working with clients to develop global filing strategies. Additionally, George has assisted clients in the strategies to monetize the value of their intellectual property by developing R&D and licensing strategies.

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Recent Work
  • served as counsel for a Fortune 50 multinational corporation for management of its pharmaceutical trademark portfolio and trademark enforcement matters
  • securing well-known “trade name” status - cross-class protection for trade names in trademark disputes
  • APAC Regional IP Counsel for the seventh largest global software corporation
  • served as counsel to the New Zealand Government for the protection of New Zealand industry and the “New Zealand” brand in China
  • led the strategic creation, rollout and management of Research In Motion Limited’s Asia and Middle East anti-counterfeiting program.
Background

George joined Simmons & Simmons as a partner in September of 2014 from an international IP firm. He is a qualified Canadian lawyer, having received his Bachelor of Law from the University of Ottawa. He also has a Ph.D. in Experimental Medicine from McGill University.

George is regularly ranked as a top IP lawyer in China including in Asia IP Experts, China IP Star, WTR 1000, and Legal 500.

Publications
  • Prior Rights under China Trademark Law – George Chan, IP Magazine, IN PRESS
  • Using Copyright to Thwart Trademark Squatting in China – George Chan, World Trademark Review, IN PRESS
  • Beijing High Court Issues Guidelines for Recognizing Trademark Rights, George Chan, World Trademark Review – Daily, March 5 2014
  • IP Clinic: How do I deal with parodies of my brand – China Contributor, George Chan, Managing Intellectual Property, March 2014
  • Latest amendments to Trademark Law significantly increase maximum statutory damages, George Chan and Paul Kossof. World Trademark Review – Daily, July 15 2013
  • A Global Strategy on Grey Goods: China – George Chan. Managing IP, 2013, May; Issue: 229
  • SAIC steps up IP enforcement with another campaign – George Chan, Pamela Morey-Nase. World Trademark Review - Daily, April 09 2013
  • OEM and the concept of ‘reasonable use’ of a trademark – George Chan, August Zhang, Chris Bailey. World Trademark Review, April/May 2013, Issue 42
  • Transforming China from a manufacturing power to a brand power – George Chan. World Trademark Review, December /January 2013, Issue 40
  • Global war – Patent battles without frontiers, Terry Ludlow, George Chan, August Zhang, Ari Laakkonen, Michael Lennon. IAM Magazine, July/August 2012, Issue 54.