You have chaired a number of national and international IP association committees. Why is active engagement in such organisations important to both professional development and the IP community as a whole?
IP practitioners, especially new lawyers, have so much to gain from active involvement in IP organisations. They can meet, learn from and interact with experienced legal practitioners and policy makers, who use such venues to share and exchange their views and learn the latest trends and best practices across the world.
As for me, having gained much international experience over the past 25 years, participating in these organisations allows me to share my knowledge and experience with other legal professionals, especially young lawyers. It is also through my years of active engagement that I gained the trust of top luxury brand owners, who in turn have entrusted me with their high-profile cases.
You have been consistently ranked as one of the country’s leading IP litigators. How has trademark litigation in China changed over the years and how have you adapted to this?
It has changed for the better in terms of predictability and consistency of judgments; the amount of damages awarded has also increased dramatically in recent years. Previously many foreign brand owners were hesitant to file lawsuits for fear of losing due to lack of transparency and predictability.
These changes have set off a positive chain reaction, boosting the confidence of brand owners to file actions whenever their IP rights are infringed. This in turn has allowed our law firm to handle more trademark litigations all over China, including test cases on hotly debated or unsettled legal issues in order to set precedents, many of which have become milestone cases and contributed to further enhancing the predictability and consistency of judgments of courts across the land.
You have represented numerous prestigious luxury brands. What characteristics do these clients look for in a world-class IP adviser?
Foreign brand owners seek lawyers who are creative problem solvers, understand their clients’ interests, have international exposure and experience, possess good communication skills, and provide high-quality service and regular follow-up. Moreover, they prefer lawyers who, while strictly abiding by compliance regulations, are dedicated to finding strategic solutions and who boldly strike out into uncharted legal territories to resolve unsettled legal issues to provide better and more lasting protection to their clients and brands owners alike.
What are some of the biggest challenges that rights holders currently face in protecting their brands from counterfeiters?
As more lawsuits are filed, counterfeiters have been steadily shifting their operations online, making evidence gathering more difficult. Our firm has nevertheless been innovating effective legal strategies to combat the sale of counterfeit goods online and has scored milestone victories for brand owners in that regard.
Execution of judgment is another concern. Even if a brand owner wins its case and effectively has the infringer’s property attached, satisfaction of the judgment on the attached property may take several years, as various defences can be interposed to prevent or stay execution of the judgment.
As someone who has been instrumental in helping shape the Chinese IP regime, are there any further reforms that would you like to see made in future?
While the amount of compensation awarded has been increasing, it is still insufficient to significantly deter infringers. Policy makers should seriously consider adding punitive damages when laws are further amended.
In addition, although consistency of judgments has dramatically improved, there are still some areas where this is lacking. For instance, in landlord liability actions for trademark infringement, cases involving similar issues can yield different outcomes depending on where they were filed. As a result of this unpredictability, brand owners are hesitant to file petitions for retrial with the Supreme People’s Court. The Supreme People’s Court should consider selecting more guiding cases on important legal issues, as presently it chooses a total of 10 top IP litigation cases and 50 top best practice cases per year. Further, the Supreme People’s Court IP tribunal should consider commenting on each of these cases to provide additional guidance to lower courts.
Finally, courts should be more liberal in issuing investigation orders empowering lawyers to go to the property bureau or the relevant government agency search for the infringer’s personal property, real estate or bank accounts. Further, clear penalties should be imposed on officials and employees of government agencies who violate investigation orders by unreasonably refusing to cooperate with deputised lawyers.
James Luo, managing partner at Lawjay Partners and arbitrator at WIPO and the Chinese European Arbitration Center, has over 25 years of IP experience and ranks among China’s top IP lawyers. He obtained his PhD in intellectual property at Renmin University of China and his LLM in intellectual property at King’s College London. Dr Luo was a visiting scholar at the University of London. An established authority in IP litigation and enforcement, he is counsel of choice for some of the world’s most famous brands.