"I knew then that intellectual property would play a major role in China"
How did you choose a career in brand-related IP law and what has been the key to your success?
I attribute my success to sound career decisions and diligent hard work. When I began studying IP law 30 years ago, I knew then that intellectual property would play a major role in China and that a career in the field held the best promise for me. Having a good command of English opened the door to further opportunities for advanced studies abroad; I was sent by the Ministry of Justice to London for advanced studies in law and, thereafter, by the Ministry of Education to the University of London as a visiting scholar. This paved the way for my admission into Baker & McKenzie, Motorola and Bird & Bird. With experience working at top international firms and multinationals, I was able to deal with foreign brands, including members of the Quality Brands Protection Committee (QBPC). Through the QBPC I have gained the trust of top luxury brand owners, who in turn have entrusted me with their high-profile cases. Finally, by providing high-quality services, my client base has grown exponentially, as satisfied clients introduce new ones.
What do you see as the main qualities that leaders and managers in the law firm sector should possess?
They need to be good lawyers who are reputable and influential in their respective practice area or industry. In advocating their client’s cause, just as in running their firm, they must always prioritise legal compliance. They should also have a clear understanding of the global economic environment and the needs of foreign and domestic clients, and possess good communication skills to deal with clients and partners properly. Finally, they need to be kind to their firm’s associates and nurture their development, while remaining strict with quality of service.
Which of your previous trademark cases gives you the most satisfaction and why?
Among the many landmark cases that I have handled, my recent favourite involved US cosmetics brand Too Faced. Unsuccessful in their attempts to cancel a trademark squatter’s pre-emptive registration of their TOO FACED mark, the makers of Too Faced cosmetics finally engaged our firm to handle their case. Among other things, we proved that our client had owned the copyright over the prominent logo forming part of the pirated device mark for many years before the registration of the disputed mark, thereby vesting our client a prior right over it. Ruling in our favour, the Supreme Court laid down the doctrine that an applied-for mark should be rejected if it contains a work that infringes the copyright of another. Such precedent scored a major victory not just for our client, but also for brand owners.
You have represented many world-famous brands and continue to innovate in your litigation strategies. What tips can you share on how to ensure that you remain at the forefront of industry developments and can continue to offer high levels of service to a roster of clients?
I strive to keep abreast of developments in IP law, including best practices, top-ranked cases, precedents and the latest decisions of the Supreme Court and high-level courts. Equally, I work closely with clients and encourage them to test hotly debated legal issues in order to set a new precedent. I also follow developments in foreign IP law, particularly in the United States and Europe, as we can cite them as reference in Chinese cases, thereby providing the bench a fresh perspective that can guide it in adjudicating the matter. Having a team of high-calibre, highly efficient lawyers enables my firm to consistently deliver high-quality services. Moreover, I continue to build and nurture close relationships with clients, getting their feedback on how to improve our services further.
Finally, if you were to give one piece of advice to someone starting out in a career in IP law in China, what would it be?
For young lawyers who have a good command of English, I strongly recommend that they start their career working in a foreign law firm. Foreign lawyers are often very creative and enjoy imparting their knowledge. Junior lawyers can likewise gain invaluable experience from dealing with foreign clients. Moreover, working in a mostly English-speaking environment will dramatically enhance their professional working proficiency in English – an invaluable skill in the globalised age.
Managing Partner [email protected]
James Luo, managing partner at Lawjay Partners, ranks among the top 10 IP lawyers in Beijing. 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 is a former IP partner at Bird & Bird and senior consultant at Baker McKenzie. An established authority in IP litigation and enforcement, he is counsel of choice for the world’s most famous brands.
Click here to see his WTR 1000 2019 profile.