Which aspect of your work do you enjoy most and why?
The most fun part of my work is when I take over a complicated case, explore possible solutions and related facts, design a strategy to achieve the client’s goal and eventually see the case moving along the path we expected. It is usually not a straightforward course and may take up to a few years, with various uncertainties. But all efforts and pressure are worthwhile when we repay the client’s valuable trust that they have placed in us and receive positive recognition from them.
How do you see the Chinese IP litigation landscape evolving in the coming years?
Along with rapid economic growth, market players around the world have become increasingly aware of protecting their IP rights. We have been seeing millions of new trademark applications filed annually. With the large number of registered/valid trademarks in the registry, conflicts between brand owners are more likely, as well as more IP rights litigation. Some of this litigation may be straightforward, but there will also be more cross-border litigation that will serve as part of an overall strategy to pursue the business objectives of the clients. Apart from insights from litigation, an overall strategic vision will be important to managing concurrent litigation and non-litigation proceedings to achieve the desired results.
How has your membership of the All-China Lawyers Association & Beijing Bar Association, the International Trademark Association-Unfair Competition Committee and the ABA Section of Intellectual Property Law helped your professional development in your career to date?
Membership of these global professional institutions gives me more opportunities to meet with my outstanding peers in the industry, exchange updated information and brainstorm together. We are also able to look at some topics at a macro level instead of daily individual cases. Additionally, membership enables me to meet with friends as well as make new contacts all over the world, which is an interesting part and privilege of our practice area.
What emerging trends or technologies are having the biggest impact on your clients’ IP strategies?
In the current workplace, technology and new software are replacing manpower in a lot of standard and streamlined work, such as online monitoring and enforcement, renewals, change of ownership or address and so on. This has led to increased efficiency and more clients have undertaken more of the IP work internally. Clients still require good counsel in managing and enforcing their trademark portfolios. Our forward-looking understanding of a client’s business and involvement in the decision-making process allows us to create a valuable alliance with the clients.
Levels of online counterfeiting continue to break records and there is now talk of combatting this by increasing platforms’ liability for sales of fakes on their sites. Do you think such action is likely – and if so, what might the impact be?
This will have a significant impact on the industry and economy, which will be taken into consideration by policymakers and it may take a long time to reach a decision. What we can expect is that, when it comes to online IP rights, the principle of balance of interests and the principle of reasonable precaution should be applied, and the burden of proof on whether acts committed by the platform constitute direct infringement should be reasonably stipulated. This is conducive to further enhancing the protection of IP rights and effectively combating online counterfeiting. In the meantime, many brand owners are developing their online sales channels, both via their official websites and third-party platforms with more credentials, so that authentic products are more easily accessible to customers.
Jimmy Huang is a partner in Zhong Lun’s IP department and founder of the trademark practice of Zhong Lun. He graduated with an LLB from China Youth University for Political Science and with an LLM from University College London. Mr Huang focuses on various aspects of IP matters, including non-contentious and contentious matters in relation to trademarks, copyright, domain names and unfair competition. He also has extensive experience in assisting foreign/ domestic clients in IP matters.