We are at the leading edge of litigations. Each year, our one hundred or so IP litigators litigate hundreds of cases, accumulating abundant experiences with the dynamic practices of courts across China. We are at the forefront of frequently litigated issues, such as procedure, jurisdiction, enforcement, evidence admission, burden of proof, and interim reliefs. We litigate both civil and administrative cases before administrative agencies and at all levels of courts, with a concentration in more developed areas, such as Beijing, Shanghai, Guangdong, Shenzhen, Jiangsu, and Zhejiang. Our experience also extends to litigating criminal trade secret cases and arbitration matters.
Many of our cases are recognized as ground-breaking, not only creatively protect the interests of our clients but also help advancing the IP legal frontier. We have 30+ cases reported in the Supreme People's Court ("SPC") Gazette or selected by SPC for its annual 10/50 exemplary cases. Some of our cases involve parallel litigations in China as well as in other jurisdictions.
SPC IP Report Cases: Representing Mr. Manolo Blahnik in successfully invalidating through retrial proceeding the registration of trademark "MANOLO&BLAHNIK 马诺罗•贝丽嘉" filed by a Chinese squatter in class 25 in 1999, based on the designer's name right and bad faith of the registrant. The client went through opposition, review of opposition, invalidation and the ensuing administrative suits, but to no avail. The retrial decision turned the table for the client in a decades-long battle against the copycat mark.
SPC Top 50 Cases: Representing a major player in wedding photograph shooting business in reversing unfavourable CNIPA and court decision invalidating its registered trademark "米兰" (Chinese transliteration of "Milan") in class 41. The court of appeal found that the trademark had acquired secondary meaning through extensive use and is unlikely to cause confusion, thus ruled to maintain the registration.
SPC Top 50 Cases: Representing Lacoste in the invalidation proceeding and subsequent administrative litigation initiated by CARTELO CROCODILE PTE LTD against Lacoste's registered trademark "
" in Class 25. The SPC, in a re-adjudication procedure, finally decided to maintain the validity of the trademark.
SPC Top 50 Cases: Representing a major Keemun tea maker in invalidating the registration of Keemun Black Tea certification trademark, which erroneously designated Qimen County as the exclusive growing region of Keemun Black tea. The court of appeal and the re-adjudication court (SPC) found the registrant breached the good faith principle and upheld the invalidation decision.
SPC Gazette Cases: Representing China Spider King Group in the opposition review administrative proceeding, obtained favorable court decisions and the SPC's affirmation that the goodwill built up by a market player may be shifted among or extended to a variety of carriers that may serve as the source identifier of its goods or services, but there is no alternative form of trademark extension other than trademark renewal.
SPC Top 50 Cases: Representing Michelin in winning the civil suit against Shanghai Mi Zhi Lian Catering Management Ltd. et al., which used the Chinese transliteration of the Cantonese pronunciation of Michelin in business operation and as registered trade name. The Wuhan Intermediate court and the Hubei High Court affirmed trademark infringement and unfair competition, ordered cessation and awarded damages of RMB 10 million.
Suzhou Intermediate Court Top 10 Cases: Representing BNIC, the French National Bureau of Cognac Industry in prevailing in the unfair competition suit launched against Ford. Both the first and second instance courts found that Ford China exploited the reputation of 'Cognac', a protected GI to elevate its own brand, thereby gaining an unfair competitive edge. The courts thus ordered cessation and awarded damages of RMB 2 million.
QBPC Top 10 Cases: Representing New Balance in obtaining a permanent court injunction and landmark damages of RMB 30.04 million (inclusive of reasonable costs) in the second instance of a trademark infringement and unfair competition suit against the infringers using a slavish copycat of the client’s iconic slanting "N" logo and its Chinese trade name, which has acquired certain influence.
QBPC Top 10 Cases: Representing Lacoste in obtaining favourable court decision in a trademark infringement lawsuit against Nanji E-Commerce, owner of Cartelo brand. The courts at both instances affirmed trademark infringement, ordered cessation and awarded damages of RMB 15 million.
Beijing High Court Top 10 Trademark Cases: Obtaining for the client the revocation of "千页豆腐" (thousand-layer tofu) trademark registered by a Chinese food producer in class 29 in 2013. The court of appeal affirmed that the trademark has degenerated into a generic name of tofu and tofu varieties when the revocation application was filed.
SPC Top 10 Cases: Representing Wyeth in securing a favorable decision in a civil appeal proceeding against a long-term infringer Guangzhou Wyeth Baby Products Ltd. et al. The Zhejiang High Court upheld the decision rendered by the Hangzhou Intermediate Court, which found trademark infringement and unfair competition, ordered cessation, and granted punitive damages of RMB 30 million and reasonable legal expense of RMB 550,000.
SPC Top 10 Cases: Representing the Commercial Press in bringing a trademark infringement and unfair competition action against an infringer that published copycats of the client's best-selling dictionary, obtained a favorable court decision, the recognition of the well-known status of the client's unregistered trademark, an injunction and damages of RMB 3 million.
SPC Top 50 Cases: Representing Michelin in a trademark infringement suit against a Chinese infringer exhibiting and promoting toys using the "Tire man device", obtained favorable re-adjudication decision, cessation and damages of RMB 100,000. The re-adjudication court ascertains that using a figurative trademark as a three-dimensional object constitutes trade- mark infringement.
SPC Top 50 Cases: Representing Michelin in a trademark infringement and unfair competition suit against the prominent use of its trade name and registered trademark by an acoustic equipment manufacturer, winning the suit and the judicial recognition of Michelin's super well-known trademark status.
SPC Top 50 Cases: Representing United Family Healthcare in a re-adjudication proceeding against a copycat, in which the SPC affirmed trademark infringement and unfair competition, ordered the cessation of the infringing acts and name change and awarded RMB 3 million for damages and costs.
SPC Top 50 Cases: Representing 3M in obtaining damages of RMB 3.5 million (exceeding the statutory limit in the Trademark Law) against a Chinese infringer, a decision upheld by the court of second instance and by the SPC.
SPC Top 50 Cases: Representing Pierre Fabre Dermo Cosmetique in obtaining an unfair competition decision against an online seller of genuine Avène products that promotes business in a misleading way.
SPC Top 50 Cases: Representing ABB in bringing a private criminal prosecution against a counterfeit seller before a primary court in Wuhu, which found exporter Teaton and its owner Zhang guilty of selling goods bearing counterfeit registered trademarks, sentencing Zhang to 3.5-year imprisonment and imposing RMB 800,000 fines to Zhang and RMB 850,000 fines to Teaton. Both defendants appealed to the Wuhu Intermediate Court, which upheld the decision of the court of first instance.
SPC Top 50 Cases: Representing L'Oréal in coordinating Shanghai PSB and the PSB authorities in 4 provinces to launch a coordinated raid operation against 16 targets. The action led to the apprehension of 13 suspects and seizure of substantial amounts of counterfeits. The case was later prosecuted before the Shanghai courts, which led to the conviction, imprisonment and fines of 10 culprits.
SPC Exemplary Anti-monopoly and Unfair Competition Cases: Successfully defending the legitimacy pertaining to the patentee's implementation of a valid chemical compound invention in a high-stake anti-monopoly appeal proceeding. The China Supreme People's Court overturned the unfavourable first instance court decision, which ordered the client to pay hefty damages of RMB 90 million.
SPC Top 50 Cases: Representing the patentee in successfully defending the validity of the client's medical use patents and obtaining favorable court decisions, cessation and damages of RMB 800,000 in the patent civil suits. This is the first parallel administrative and civil proceedings involving chiral drug medical use patents before the SPC.
SPC Top 50 Cases: Representing Bayer in a patent administrative enforcement action against two Chinese infringers offering for sale the client's patented drug rivaroxaban, obtaining favorable decisions from the Nanjing IP Office. The infringers appealed all the way to the SPC but to no avail. The SPC used this case to clarify whether the Bolar exemption applies to the act of offering for sale.
CBLJ Deals of the Year: Representing the client in successfully revoking an unfavourable administrative decision made by a local AMR authority by leveraging the findings of the distinguishing design features in the CNIPA decision to contradict the Patentee's arguments in the infringement proceeding as it breaches the estoppel principle. The approach finally led to the non-infringement finding of the court of appeal. This is SPC's first administrative decision concerning infringement assessment of GUI design patent.
SPC Top 50 Cases: Representing SEB, the world's leading small household appliance supplier, in defeating a patent infringer in two instances of court proceedings, obtaining a court injunction and damages of RMB 300,000. The case was selected by the SPC for its clarification on how to define the protection scope of functional claims.
SPC Top 50 Cases: Representing MAPED in patent infringement lawsuit against the manufacturer and distributor of infringing scissors through first and second instance as well as re-adjudication, obtaining the SPC's confirmation that "extra design" element has no material impact on the determination of patent infringement.
Fending off Unreasonable Patent Assertion: Advising P&G in fending off the unreasonable patent infringement suit initiated by a Chinese patentee, which claimed whopping damages as high as RMB 100 million before the Shanghai IP Court by having the patentee's invention invalidated.
Fending off Large Damages Claim: Obtaining a favorable court judgment in defending a client in an infringement suit in which the plaintiff asserted a chemical process patent and claimed damages in the amount of RMB 12.9772 million.
Representing SEB in defending a dozen rounds of invalidation requests against its patent portfolio for the strategic product Actifry dry fryer in China. Given that the dry fryer has accumulated sales volume of 1.17 billion euros worldwide, and infringing products are all sourced from China, maintaining the validity of the core patent portfolio in China is instrumental in containing the infringing products worldwide.
SPC IP Report Cases: Representing Guangzhou New GEP in a retrial of patent infringement suit, in which the SPC supported the argument that in construction of a claim, if the parties have different understanding of the wordings, one may refer to the specification and the drawings to interpret the claim.
Tier 1 PRC firm in both "Intellectual Property Contentious" and "Intellectual Property Non-contentious", 2012 - 2024
Tier 1 PRC firm (domestic) in both "Trademark Prosecution" and "Trademark Contentious",
2011 - 2023
Gold-band PRC firm (domestic) for both "Prosecution and Strategy" and "Enforcement and Litigation", 2011 - 2024
Silver-band PRC firm (domestic) for patent litigation and prosecution, 2020 - 2023
China Business Law Awards Winner in the category of intellectual property (Trademark & Patent), 2023
Outstanding firm (top tier) in intellectual property in China, 2016 - 2023
China Domestic Trademarks / Copyright Law Firm Tier 1, Patent Law Firm Tier 2, 2021 - 2023
Intellectual Property: Litigation & Non-litigation (PRC Firms) in China, Band 2, 2019 - 2024
Top 10 Patent Firms in China, 2020 – 2023
Managing IP APAC Awards Firm of the Year: China Trademark Prosecution Firm of the Year and China Trademark Disputes Firm of the Year, 2023
The Global IP Awards jointed presented by IAM and WTR, China: Trademark Litigation Firm of the Year, 2021 – 2022
Legal Protection for Well-known and Famous Marks
Trademark Law (1st, 2nd & 3rd Edition)
China Trademark Report (Vol. I – XII)
Trademark Laws of Twelve Nations
Legislative Part of Intellectual Property Code of France (1st & 2nd Edition)
Trademark Section of "Intellectual Property in European Union" (1st & 2nd Edition)
Zheng Chengsi IP Anthology – Trademark & Unfair Competition
China Trademark 1978 - 2018
Trademark & Unfair Competition Cases in China
Impact of Use on the Protection Scope of Trademark: A Comparative Law Study of China and European Union
Trademark Chapter of Study on Global Intellectual Property Developments (2019 & 2020 Edition)
China Patent Report
Copyright Law
Copyright Laws of Twelve Nations
Comparative Study Between the Civil Procedures of France, Germany and China