James Luo | Global Brand Review


What was one of your biggest accomplishments of the past year?

Last year was really tough. As the pandemic swept the world, many international clients froze their budgets for intellectual property enforcement. Still, it’s heartwarming to know that, against all odds, everyone in the firm worked closely together. I made sure that no one was made redundant, that everyone continued to receive the same salary as before, and that all employees and their families were safe. Ensuring the stability of our team members has been, I believe, one of our best accomplishments of the past year.

How has your IP practice changed in response to the pandemic?

Our firm is well known for owner liability claims for trademark infringement, an area in which we have specialized for over 15 years. Covid-19 changed all that as physical stores were generally closed during the pandemic. And even as life in China begins to return to normal, the pandemic has indelibly altered consumption patterns. Due to the lockdowns and health fears, Chinese consumers have become more accustomed than ever to buying products online. Counterfeiters have also moved their operations online, posing new legal challenges of their own.

In response, our firm is vigilantly taking the lead in combating online counterfeiting and protecting the rights of brand owners as part of the “new normal”. Some international luxury brands have hired us to take legal action against online counterfeiters on a full or partial emergency basis. This approach is a win-win for both the brand owner and our business.

What are the top three skills you need to be successful in the courtroom?

First of all, you need to know and analyze the latest decisions of the Supreme People’s Court and provincial courts in similar cases, in order to cite them as precedents to support your arguments.

Second, know your judge. By this I mean that you should familiarize yourself with how the court you are appearing before has ruled on similar cases in the past. For example, try to determine whether the judge is likely to pay attention to the intricate details of the case or just focus on the main points of your argument, and write your pleadings and arguments accordingly.

Finally, always approach legal issues directly, rather than skirting them, while presenting your arguments in a concise and logical manner. If the opposing party makes a false or misleading statement, you must act immediately to clarify it.

The Chinese authorities have clearly indicated their intention to continue to strengthen intellectual property protection in the region. How is the intellectual property regime improving?

A major improvement has been the introduction of punitive damages for intellectual property infringement in recent amendments to the Trademark Law and the newly enacted Civil Code, which courts have started to impose. Trademark owners are therefore encouraged to collect evidence of bad faith or malicious intent to commit an intellectual property violation (for example, being a repeat offender or a criminal record) to trigger the application of punitive damages.

Which emerging trends / technologies have the most impact on your clients’ brand protection strategies?

With the rapid acceleration of the digital economy, further accelerated by the pandemic, thousands of counterfeiters have taken to various Chinese e-commerce platforms. Brand owners should hire specialists to remove links to infringing websites and remove them. For larger targets, they should take civil and criminal action. Whether the e-commerce platform cooperates with the brand owner will be the key to success. Chinese authorities or owners of e-commerce platforms may be lax with violators, believing “stability of society” is more important during the pandemic.

Even when legal action is taken, the damages awarded may not be as great as expected. Although punitive damages are prescribed by law, in reality, judges will often seek to balance the interests of the parties and temper the application of the law according to the times. So while, on the one hand, trademark owners should seek the imposition of punitive damages against violators, on the other hand, they should not be too severe if the infringer seeks to settle. As to the amount of damages to be claimed, we will probably have to be more flexible given the circumstances. It is better to set targets for compensation: the first is to get the court to impose punitive damages; the second is to make a deal, in which case the brand owner will have to be a little more flexible.


About Author

Leave A Reply