Chang Tsi & Partners
What led you to establish Chang Tsi & Partners and what advice would you offer anyone considering setting up their own firm?
From 1993 to 2001 I worked at CCPIT Patent and Trademark Law Office, one of the few IP agencies approved by the Chinese government at that time. In 2000 I was assigned an internship at US law firm Fross Zelnick Lehrman & Zissu (FZLZ), where I was lucky enough to work closely with many lawyers, especially female lawyers, whose passion, dynamics and professionalism impressed me deeply. That experience gave me more vision and was a milestone in my career.
In the late 1990s, China was actively implementing reforms and opening up policy, which ended the monopoly that state-owned agencies had over the IP domestic market. Inspired by my experience at FZLZ, I decided to seize this opportunity and set up my own private law firm to achieve my dream of adventure, freedom and success. With more than eight years’ work experience I was confident about starting a new chapter in my career.
For anyone considering setting up their own firm, my advice is that you need to be fully prepared for hard work in all aspects of the business – from quality control and client care to firm management and finance. It can be especially challenging for female lawyers, particularly when it comes to work-life balance. But beyond all doubt it is the best opportunity to test yourself, your ability, your grit and your wisdom. And the sweet smell of success is certainly a worthwhile goal.
What is the biggest career challenge that you have faced and what can others learn from how you overcame it?
The real challenge stems from the fact that my job is to deal with other peoples’ problems, which could lead to anxiety in my own life. Balancing work and home life is a big challenge for me. Faced with various difficulties and pressures at work, my number one rule is not to bring work problems home. My husband and I have a deal of “no work on the weekend”. Rule number two is to master our time management. If we work, we work efficiently; we cannot afford to waste time. When we have downtime, we make plans in advance so that it is more enjoyable. I have taken up some hobbies to help relieve the pressures of work, including swimming, which keeps me mentally and physically strong. I also love to paint so I seize any opportunity to do so — I hope that painting will become my second career after I retire as a lawyer.
What would you say are the top three requirements for a successful global IP strategy?
First of all, in-depth vision and understanding of the legislation, policy and practices of different jurisdictions. Second, short-term and long-term strategies tailored to different jurisdictions. Third, since local law firms function to enforce IP strategy and the in-house team of a company knows its business better than anyone, building and nurturing a good partnership between local firms and in-house counsel is key to enforcing a global IP strategy.
You have had a number of high-profile successes before US and Chinese courts over the years. What qualities make for an elite-level litigator in the IP field and how can these be honed?
The following qualities are essential:
- in-depth understanding of the client’s litigation or even long-term business goal – if you understand that, you can work out a good litigation strategy;
- ample litigation experience;
- a broad knowledge of legislation, practices, technologies and many other aspects of litigation; and
- excellent communication skills, not only with the client, but also with the judge and even the counterparty to a litigation.
To hone these skills, there is no substitute for practice.
What are the main differences in demands from national and international clients, and how do you adapt to these?
First, cost. Chinese clients are more cost sensitive than international clients. Second, participation. International clients are more likely to participate in a legal project, while Chinese clients will focus on the outcome of the project but are unlikely to be deeply involved in the entire working process. Finally, expectation. International clients have more reasonable expectations on the outcome of a case. Provided that they participate in the entire process, we can work together to manage expectations. This is because we have been on the same page from the beginning. For Chinese domestic clients, focusing on the outcome of a case means that their average expectation could be higher than international clients.
Our function as lawyers is to have sufficient communication with clients, whether they are international or domestic, so as to ensure that we not only are on the same page but also have better control over their budget by working out a feasible, cost-effective solution.
You have represented clients across a range of industries. How do you stay up to date on developments in multiple markets?
Chang Tsi & Partners has a comprehensive method for obtaining and managing market information.
First, we have a marketing department, with most of the members being graduates of economics schools, business schools and law schools of famous universities. With their professional knowledge and sensitivity to the market, they collect valuable market information in various fields.
Second, we have purchased multiple databases, including knowledge databases, which cover numerous types of case information in a range of fields.
Third, we have an information monitoring specialist who is responsible for detecting important developments and information in the field of intellectual property – both in China and abroad – and collecting and summarising these.
From a personal perspective, reading should be the hobby of any IP lawyer, as this helps you to remain sharp.
How have brand enforcement efforts changed over the course of your career?
With China’s ongoing amendments to IP legislation and changes in practice, the brand enforcement landscape has changed a lot in the past 20 years. The issue of enforcement is not only centred around the hot topics of piracy and counterfeiting, but has also spread to many other areas, such as dilution, commercialisation rights, licensing and royalties. Our lawyers need to be vigilant to every aspect, analyse new changes, communicate with clients in a timely manner and adjust the overall brand enforcement strategies that we establish for them.
We are also witnessing increasing awareness of the importance of protecting IP rights among Chinese companies, which are adopting more aggressive attitudes towards infringement and dispute cases. Actually, the total number of litigations that we handle on behalf of foreign clients to defend Chinese companies is increasing. That is a surprising development, as between 1993 and 2013 almost all the cases that I handled involved suing Chinese infringers on behalf of foreign companies.
You have obtained well-known status for brands such as Tiffany & Co and Levi Strauss. What are the biggest obstacles for brand owners seeking well-known status in China and how can these be overcome?
China has a high threshold for evidence requirements in recognising well-known trademarks. It is normally difficult to communicate with clients what is needed to obtain the desired evidence. In addition, some industrial brands may not be that well known in the eyes of examiners, even though they are well known in their corresponding industry. Thus, we have to maintain close communication with examiners so as to better explain the industry background and brand value.
If you could make one change to the Chinese IP environment, what would it be?
I would significantly increase the penalties for piracy and infringement and let copycats and infringers go bankrupt for their misconducts.
How do you envisage recent global events affecting trademark practice in future?
The trade war between China and the United States will significantly affect Chinese legislation and practice in the field of intellectual property. We will need to adjust our clients’ existing overall IP protection strategies in light of such changes. The financial crisis caused by the coronavirus pandemic will also make the international IP market even more challenging. Only those that can provide quality and cost-effective services tailored to clients’ needs will survive. At our firm, we are cooperating with leading robotic process automation (RPA) professionals to introduce RPA and AI to our management processes, in the hope of reducing costs and increasing the accuracy of work management.
Spring Chang – founding partner of Chang Tsi & Partners – is a razor-sharp IP attorney who has represented hundreds of major electronics, consumer, pharmaceutical, apparel and jewellery companies in the Chinese market and overseas. With 26 years’ experience in IP matters, Ms Chang continuously strives to provide one-stop, multi-directional and multi-levelled legal services, specialising in all aspects of IP rights, including trademark, patent, copyright and domain name applications and protection, protection, management and transfer of IP rights, and unfair competition.