You have represented a range of brand owners in disputes that have been ranked among the top IP litigations, appeal cases and representative cases before Chinese courts. Which of these have stood out to you the most and why?
I represented a leading internet company to file a retrial petition before the Guangdong Higher People’s Court against a second-instance civil judgment rendered by the Guangdong Shenzhen Intermediate People’s Court and turned the tables to obtain a favourable retrial judgment. This was one of the most high-profile and complex cases back then, which drew wide social, as well as academic and judicial, attention. The retrial set a new model and judicial standard and has had a profound influence. Key issues of the case included determination of trademark use, reverse confusion, determination of similar services in different classes, and conflicts of trademark rights and copyright. Fei Cheng Wu Rao is a top five rated TV variety show nationwide, whose advertising income reaches billions. The result of the retrial has had a great impact on the operation of the show as well as millions of TV audiences. The case was recognised as one of the top 10 guiding cases of 2016 by the Supreme People’s Court and the Guangdong Higher Court, and was included in the WIPO Collection of Leading Judgments on Intellectual Property Rights, People’s Republic of China (2011-2018).
You have helped globally renowned names such as BMW, Buick, Jeep and Mary Kay to obtain well-known status in China. What are the top three considerations for foreign IP owners looking to secure well-known status in the country?
To secure well-known status of a trademark in China, the top three considerations would be to:
- collect and organise evidence proving the wide advertisement, use and fame of the claimed well-known mark before the filing date of the disputed mark;
- determine a proper case where the disputed mark is a copy or imitation of the claimed well-known mark on dissimilar but related goods or services, which needs enlarged cross-class protection; and
- instruct an experienced lawyer who can present the most powerful arguments and evidence in depth, with an insight on current trends.
How have client demands changed over the course of your career and how have you adapted to this?
Given the increase in competition in the Chinese trademark legal market, when choosing a lawyer, clients will pay more attention to their ability to provide in-depth legal services and overall strategy, with a forward-looking perspective. I always put my clients first by communicating with them to understand their business needs and remaining updated on the most current trademark legal provisions and judicial cases, in order to render the most comprehensive and cost-effective solutions and suggestions under the Chinese Trademark Law and Chinese practice.
You represent companies in a wide range of industries. What are some of the biggest enforcement challenges facing brand owners in China at the moment?
First, infringer trademark squatting is common in many cases. Before initiating an enforcement action or civil litigation, brand owners must undertake administrative trademark proceedings to invalidate or cancel the infringers’ squatted marks in order to clear the path for parallel enforcement actions. Second, in order to prevent infringers from maliciously transferring property to evade enforcement, prior property preservation is recommended in many civil litigation cases. Third, although pre-litigation injunctions are provided under the Trademark Law, in most cases involving obvious ongoing infringement, in practice, it is still difficult for brand owners to obtain the protection of a pre-litigation injunction.
Finally, what advice would you give any aspiring lawyer considering a career in trademarks?
I pay close attention to the individual growth of young lawyers. I always tell my younger colleagues to be prudent and diligent in every task and to reflect and summarise from time to time. Also, it is important to make studying a habit and to learn both the law and the practice. Finally, I would encourage young lawyers to keep their enthusiasm and passion for work and life: “Stay hungry, stay foolish!”
Chumeng Jessica Xu
Chumeng (Jessica) Xu is a partner at JunHe LLP. She has been an IP lawyer since 1997 and has handled thousands of IP litigations, trademark oppositions, invalidations and appeals. Her cases have been ranked among the top 10 IP litigations of the year by the Chinese Supreme People’s Court and the top 20 appeal cases by the China National IP Administration. She has been recognised as a top IP lawyer by Asian Legal Business and Chambers.