As someone who has founded their own firm, what does law firm leadership look like to you?
Leadership means I need to work hard as a role model to set a good example to others at the firm. It also implies a full range of abilities, from client care and marketing to management, as well as a broad expertise in the IP field. Since IP legislation and practice keep changing in China and the rest of the world, it also means a strong ability to learn and improve so as not to be left behind. In essence, it means a lot of effort and hard work.
What advice do you have for someone considering a career in trademark law?
As my boss told me 30 years ago, “you have to be physically and mentally strong enough to join this industry”. I think this is very true. Looking back at my career over the past three decades, I would say that you need to embrace the challenges and that you should never give up. As a lawyer, other people’s troubles are your daily work. You also need a strong ability to research, analyse, coordinate and work as a team. If you do not have those skills, it is not recommended to become a trademark lawyer. Finally, never stop learning - this is key for a trademark lawyer as you need to advise clients by using your own expertise.
You are renowned as a litigator – what has been your most memorable case and why?
My most memorable case was when one of my clients, a pharmaceutical company, initiated litigation to establish its trademark as well known. As part of the overall strategy, the objective of the litigation was to resolve the issue of dilution - the problem was so pronounced that the client could not enforce its rights against rampant infringers. I led my team to research the boundaries of dilution and the concept of ‘well-known marks’ and built a successful case. This case also required a comprehensive mobilisation strategy, which involved requesting online dictionaries to change the generic definition of the client’s trademark, finding a good candidate case in an appropriate forum, and putting a lot of efforts in collecting evidence and communicating with the client. It was memorable not only because the litigation was successful but also because it was a major project from an anti-dilution perspective.
Late last year, China’s State Administration for Market Regulation threatened to revoke the operating licences of platforms that fail to take proper action against counterfeiters on their sites. What impact – if any – do you expect this to have on levels of counterfeiting in China?
This will definitely curb online infringement and improve the protection of IP rights. I think operators should take more responsibility when it comes to stopping infringement on their platforms. They should be more active, and the State Administration for Market Regulation made a good push in this respect.
Now that we are (hopefully) emerging from the pandemic, what covid-prompted changes and restrictions are you looking forward to seeing the back of, and which developments are here to stay?
The pandemic has represented a big challenge for the legal industry. Many small law firms and agencies have gone bankrupt due to poorer management and a smaller clientele. Competition among the big firms has become fiercer than ever. The pandemic has also triggered more reforms to the administrative and judicial systems. We now see more electronic filings and cloud evidence preservation, and the Internet Courts are accepting more cases. We have also become closer to our associated law firms and clients internationally - over the past couple of years we have organised more Zoom conferences, which have gradually become part of our daily work.
You have won acclaim for your strategic approach to IP matters – how has this broadened your understanding of the different forms that a ‘win’ can take?
A ‘win’ does not merely mean victory in a specific case. It is of course important for us to win cases before the courts, but our overall objective is to support the business needs of our clients in both the short term and the long term. This is why we strive to provide comprehensive, multi-level IP solutions - including, but not limited to, litigation - to maximise our clients’ interests.
How is diversity & inclusion promoted at Chang Tsi & Partners and why is it important to the firm?
As the China Employer of Choice (as recognised by Asia Legal Business and Legalband), Chang Tsi & Partners and its management team pledge to create a diverse and inclusive working environment, where every employee feels included and valued. Diversity and inclusion are priorities to achieve a harmonious firm culture, and the differences among members of our team undoubtedly contribute to our creativity. As a female lawyer from a minority ethnic group, I am acutely aware of the difficulties of entering the legal industry. Statistically, over half of the firm’s partners and over two-thirds of employees are women. In addition, many of my colleagues come from minority groups or have a disability. From the day we established the firm, we have ensured that everyone is treated equally, regardless of race, gender, nationality, ethnicity or any other status. This allows us to work together as a strong team, regardless of who we are and where we come from.
What three changes would you like to see to trademark litigation in China – and how likely are they to happen?
I would like to see more of the following things: more convenience, more professionality and more judges with a broader vision. We have 24 IP tribunals and four IP courts in China. We need more IP tribunals and more professional judges – this would be more efficient and result in better expertise. Another suggestion would be for judges to be involved in more international communications in order to develop a broader vision. In May, I attended a bilateral meeting between the Beijing Intellectual Property Court and the International Trademark Association, during which I delivered a speech about letters of consent. I suggested that more bilateral or multilateral meetings involving juristic institutions could be arranged for a better mutual understanding and better cooperation in the future.
How have client demands changed over the course of your career?
Clients have become more demanding. Nowadays, client demands are not only about successful registrations or litigations: clients expect an overall strategy for China. We need to audit existing portfolios to be more proactive and crack down on infringers at the root. We must communicate closely with our clients’ local branches to better understand their business. Personally, knowing the relevant laws used to be my priority - now it is understanding the clients’ business needs.
What are your top tips for a watertight international domain name policy?
As a basic approach, we recommend that our clients:
- register their domain names at different levels;
- actively fight cybersquatting by utilising the various domain name resolution systems; and
- attend conferences to keep up with new developments.
Named the “world’s leading IP lawyer” by Chambers & Partners, founding partner Spring Chang is a razor-sharp IP attorney who has advised and represented hundreds of major electronics, consumer, pharmaceutical, apparel and jewellery companies on the Chinese market, as well as Chinese companies overseas. Ms Chang is well known for representing Best Buy in a precedentsetting trademark case that prompted China’s Supreme Court to re-evaluate the kinds of evidence to consider in IP decisions.