As a highly revered litigation lawyer, what essential skills do you need to succeed in the courtroom and how have you honed these?
For complex trademark litigation cases, lawyers must have:
- keen judgment and a grasp of the core issues, including whether the rights are solid, infringement evidence is sufficient and the opponent has statutory defences – litigators should comprehensively review such issues well before the formal hearing, present arguments and submit the relevant opinions in a timely manner;
- insight into each piece of evidence to prove the close relationship between the facts and the claims; and
- in-depth knowledge of all applicable laws, judicial documents and guiding precedents – before the formal trial, a good litigator should summarise all core issues expected to be found by the court.
You have been involved in a number of monumental trademark cases, including securing recognition of the long-term well-known status of BMW marks. What advice do you have for other brand owners looking to obtain well-known status in China?
In the BMW case, reviewed in 2009, the Hunan High Court recognised BMW’s three core marks – the word mark BMW, the Chinese version ‘宝马’ and the BMW logo – as well known. In 2016 the Shanghai IP Court determined that these marks had been well known for more than 10 years. The Supreme People’s Court selected the former as a top 10 IP case of 2009 and published the latter in its Gazette. Such cases prove the Chinese courts’ attitudes towards equal protection of foreign brands and the factual status of well-known marks. Brand owners should therefore:
- resolutely request recognition and protection of well-known trademarks in cases of cross-class infringement;
- carefully prepare the well-known evidence package, demonstrating the reputation of the trademarks in China, including through library reports, industry awards, audit reports and protection records; and
- provide an in-depth demonstration of the harm to brand distinctiveness and image caused by the infringement, including weakening of distinctiveness, depreciating popularity or dilution, so as to persuade the judge that only by recognising the mark as well known can the plaintiff’s rights be protected.
You are a member of a number of IP associations. How can these organisations help with the professional development of IP practitioners, as well as the advancement of IP practices in general?
Participation in IP events can expand the knowledge of lawyers and enable them to study issues in depth. I participated in the Intellectual Property Owners’ annual meeting in 2012 and in the panel speech on the protection of shape marks. I hosted the Regional Development Seminar, China Trademark Law at the 2014 INTA Annual Meeting introducing the revision dynamics of China’s Trademark Law. In 2019 I joined the Overseas Protection of Chinese Brand Owners project undertaken by the International Association for the Protection of Intellectual Property, China. Participation in these activities has helped to broaden my horizons and increase client trust. These organisations strengthen communications between IP owners and lawyers, and allow IP lawyers to update their professional knowledge on a regular basis.
What are some of the biggest enforcement challenges facing brand owners in Asia-Pacific?
Although the Chinese authorities have amended legislations and enacted new regulations to cope with bad-faith applications, there are still new types of malicious filings (eg, squatting on several trademarks of the same brand owner or squatting on similar marks in advance to prevent the rights holder from registering them). Some counterfeiters are also trying new strategies to conduct illegal business, such as importing grey market products into China and mixing counterfeits into these parallel imports. Finally, new types of counterfeiting have appeared on platforms such as TikTok and Pinduoduo, which have caused significant difficulties for brand owners.
How do you envisage the Chinese IP regime developing over the next few years and are there any changes that you would particularly like to see?
The National People’s Congress of China recently passed the Civil Code, which is due to take effect on 1 January 2021 and has various provisions on IP rights. Further, the Supreme People’s Court, the Beijing Higher People’s Court and the Chinese National IP Administration, among others, have issued various judicial interpretations and regulations on IP rights, such as review guidelines for trademark approval and prosecution, and infringement judgment standards. These interpretations are expected to improve China’s IP protection system in the coming years.
Qiang Ma is a partner in Haiwen & Partners’ IP department. He graduated with an LLB and a JSD from Renmin University, an LLM from Peking University and an LLM from George Washington Law School. He deals with a full range of trademark, copyright and unfair competition cases in China. Having worked in the industry for nearly two decades, he has accumulated rich experience, is skilled in handling complex brand protection cases and has successfully obtained well-known status for the trademarks of domestic and foreign clients.
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