"You must treat your team members well"
How did you come to choose a career in brand protection and what has been the key to your success?
After graduating, I worked as a trademark attorney for foreign clients at the China Council for the Promotion of International Trade. Focusing on famous global trademarks, I became increasingly fond of trademark legal work. My clients are mostly located on the other side of the world and they often lack knowledge about the Chinese IP system but need strong legal protection for their brands in China. I am their go-to lawyer to achieve and enforce their trademark rights in China. This job is highly challenging but I am never one to back down from a challenge – I am filled with determination and passion, which has been key to my success.
What do you see as the main qualities that leaders of law firm trademark departments should possess?
As a leader of the trademark department of a law firm, I value two important qualities. First, you need to have sufficient experience, a good reputation among clients and a strong sense of responsibility for your work. I handle every email from my important clients and attend every court hearing with my team members if I am available.
Second, you must treat your team members well and handle matters impartially. You must be a good model for your colleagues. I work diligently to ensure the development of my team members – I try to be friends and share my own experiences with them. For example, a young lawyer from my team recently wished to apply for an on-job PhD in intellectual property, but he was uncertain whether I would support him. I encouraged him, stating that I had every confidence in him, and he went on to achieve the highest mark nationwide.
You have represented many world-famous brands and your IP cases are well ranked by the Chinese Supreme Court. What tips can you share on how to ensure that you remain at the forefront of industry developments and continue to offer high-level services to a roster of clients?
There has been an increase in competition in the Chinese trademark legal market. It requires constant innovation in order to maintain client relationships, develop new quality clients and handle influential cases. I research new types of cases, as well as complicated cases, as they develop. For example, as soon as China began to accept non-traditional trademarks, I successfully assisted BMW in registering the first Chinese sound mark for vehicle products in Class 12, which was selected as an outstanding case in the China Trademark Festival 2018. I always try to view and solve issues from the perspective of my clients, in order to create an effective plan for them and their business interests.
You have extensive experience of representing clients across a range of sectors to obtain recognition of well-known marks in China. What are some of the most common challenges for a brand seeking well-known status in China, and how are they best overcome?
I have helped various foreign brand owners – including BMW, Buick, Jeep and Mary Kay – to achieve recognition of well-known trademarks before the courts, the China Trademark Office and the Trademark Review and Adjudication Board. Recently, I assisted Chimelong in obtaining recognition of a well-known trademark in both Classes 41 and 43 in a series of invalidation cases. The most challenging part of this work is having to effectively consolidate evidence that meets the requirements of both the law and the examiners and judges. Some clients do not preserve much evidence and, even if they do, they have no idea how to utilise it. We must take the perspective of the examiners and judges to help clients to collect and prepare the most comprehensive evidence with the most powerful arguments. Moreover, you need to be clear whether the other party’s trademark is a copy or an imitation of your client’s brand and whether it is dilution or defamation in order to protect your client effectively.
The trademark protection environment has been improving rapidly in recent years. If you could make one change to the IP landscape in China, what would it be and why?
I have seen higher statutory damages for civil proceedings being imposed by the law. I would suggest that this should also be introduced to administrative proceedings. Specifically, we need to grant damages to the winning party in oppositions and invalidation cases as this would serve as a greater deterrent to bad-faith applications.
Chumeng (Jessica) Xu
Partner [email protected]
Chumeng (Jessica) Xu 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 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.
Click here to see her WTR 1000 2019 profile.