Up to 2016, Mr. Zhong has
been engaging in law practice for over fourteen years; he has obtained
litigation experience since 2002 and has been working for Liu, Shen & Associates
since 2003, during which period he has represented a number of multi-national
corporations/clients, such as Realnetworks, BBC Broadcasting, Adobe,
Lego, Elle, Boss, William Grant & Sons, Paws Incorporate, Mentor Graphic,
Pantone, Xilinx, WABCO, WATSON BOWMAN ACME, Suntracker, Shearman Sterling, Fine
Art, BASF, Dow Chemistries, Emerson, Schneider Electric SA, Schneider Electric
Industries SAS, STAUBLI FAVERGES, BigBang (Petzl), Danfoss,
Panasonic, Hitachi, Daikin, Toyo Tire, Japanese Tobacco, JFE Steel Corporation,
Karcher GmbH, Rittal GmbH, Pfister GmbH, Romax, as well as ABB, etc, in intellectual
property disputes and protection in China. He has won the IP
litigation cases so far in China involving trademark infringement, unfair
competition, and copyright infringement, as well as administrative lawsuits
against Trademark Review and Adjudication Board of China (TRAB), etc.
He has been served as authorized attorney ad
litem in around more than 100 IP litigations so far among
which around 80 of them are trademark disputes against the government
authority, Trademark Review and Adjudication Board, and two of them are patent
dispute related. In addition, he has handled more than 500 trademark
opposition/review cases before the Trademark Office and the TRAB.
Mr. Zhong has had litigation
experiences before every level of China courts, from the lowest level, district
court, to the highest, the Supreme Court of China; he also has had experiences
of requesting of raid actions before the government authorities against IP infringements,
and got favorite outcomes for client such as for ABB、Vista、Boss、Switcheasy, etc., and, has had
the experiences of enforcements of the court judgments. Has successfully
negotiated with defendants for settlement during the litigations and acquired
outcome to client’s favor.
To the date of this Biography made, more than twenty of the
litigation cases under his handling are pending.
Before became a practicing
lawyer, Mr. Zhong had achieved one bachelor degree in Chinese Literature and
two Master-of-Law degrees one from China, Law School of Liaoning University,
and the other from Japan, Law School of Toin University of Yokohama both as
Government-financed students due to his excellent academic performance in law
study. Before achieved the two master degrees of laws, Mr. Zhong had obtained
work experience up to seven years in a state-owned corporation, and then went
to the law schools of both China and Japan for law ambitions.
Main cases handled:
- Rittal GmbH v. Tian Jin WeiTu/TRAB. This trademark
administrative litigation had litigated over eight years, and is the first
trademark litigation case of the firm trialed before the Supreme Court of
China. Mr. Zhong represented Rittal GmbH from the first beginning of filing the
trademark opposition, and then represented client going through all available
five level proceedings fighting against the opposed party; despite losing in
the first three proceedings in consecutive, Mr. Zhong never shook his judgment
and confidence and fought stably and constantly until won the litigation firstly
before the Beijing High Court, and then finally won before the Supreme Court of
China. During the eight-year-litigation process, Mr. Zhong had proved not only his
deep understanding of laws, but his professional qualities and personalities such
as persistence, enthusiasm and determination, and his perfect communication
abilities with client, etc, which all contribute to the final result that the
Beijing High Court, overturned all the three-previous-unfavorable administrative
decisions and court judgment. When the opposed party filed Retrial Request with
the China Supreme Court, the client issued special instruction appointing Mr.
Zhong alone as the only authorized attorney ad litem representing them before
the China Supreme Court. Served as the repayment to client’s trusts, Mr. Zhong demonstrated
his capacity and got victory once and for all from the China Supreme Court with
all flying colors. It was a tough case and the Beijing High Court and the China
Supreme Court were reversing the decisions/judgment of the prior three proceedings
and accepted Mr. Zhong’s claims on client’s trade name right to invalidate a
third party’s trademark application. Such decision of only relying on a prior
trade name right not any proof of prior use of a trademark to reject a
trademark application, had been rarely seen in the available court’s precedents
in China. Mr. Zhong’s excellent performance on the litigations not only deeply
impressed the client but also the litigation rival so that two years after the
litigation, the original opposed party went to this firm in person sincerely
requested Mr. Zhong of being their representing attorney and handling other two
trademark litigations for them before the Beijing IP court.
- BASF
CONSTRUCTION SYSTEMS (CHINA) / WATSON BOWMAN ACME v. Hengshui Bao Li (co-authorized attorney with Mr.
Kai Yang by BASF and WATSON BOWMAN). The first unfair competition lawsuit of
the firm. The opposed party made false publicity of business achievements but
argued for innocence because the publicity was made in accordance with the
authorization under an Achievement Sharing Contract signed between the
defendant and an U.S. registered company also titled as WATSON BOWMAN. Effective
proof strategy and arguments formation successfully weakened the defendant’s
plea and shifted the proof burden to the defendant, which resulted in the
winning before the Qingdao Intermediate Court first and then the Shandong High
Court. The defendant was sentenced to pay damages of RMB 200000.00
- Realnetwork v. Beijing Zhong Lian Chuan Dong. Representing
Realnetwork, as defendant, for a lawsuit accusing of infringement to the right
of making available of a video on Internet. Specially appointed as the only
authorized attorney, and successfully forcing the plaintiff withdrew the assucation
against client.
- Uniflex v. Trademark Adjudication Board/Trademark
Office. Litigation concerning an international registration of client extended
to China rejected by the authorities which seems impossible from the face value
for client to win. Mr. Zhong won the case by spotting from the original goods description
in the WIPO the subtle difference from the official records of China due to the
translation made from English to Chinese which was essential to overturn the
TRAB/CTMO’s decision. The court supported the arguments and evidence, and the
authority revised the data achieve approving the extension.
- Dow Chemicals v. TRAB/CTMO. Won before the Beijing
No. 1 Intermediate Court, and then the Beijing High Court. Due to excellent
supplemental evidence collection, the two levels of courts accepted and
supported the arguments, that the reputation of client’s prior marks could be
naturally extended to the relevant applied mark on related goods, and the administrative
authorities should all the way keep consistent examination standards when
determine the registration of trademarks.
- Shearman & Sterling LLP v. TRAB/CTMO. Successfully
won the lawsuits first before Beijing No. 1 Intermediate Court and then appealed
before Beijing High Court; had the client’s trade name registered as a
trademark on law services here in China based on arguments on plenty of use of
the name on law services in China despite that the prior existence of
trademarks incorporating identical single word.
- LEGO v. TRAB/CTMO, successfully winning the litigation
and had the court invalidate the decisions of the authorities that approved the
application for LEDAI on toys. Successfully
convinced the court not to make comparison only between words and letter
formation concerning LEGO and LEDAI, but the visual effect and bad faith and
got court’s recognition that the LEGO had been of high reputation in China
already.
- Trademark infringement litigations representing Xinlinx
Inc. (three litigations respectively at Beijing and Hangzhou) winning and/or
getting outside-court-conciliation with damage payments to the client in client’s
favor.
- Other trademark infringement litigations (combine
with domains and unfair competition) representing such as ABB (winning),
Danfoss(winning before two levels of courts), and FLSMIDTH A/S , FLSmidth Pfister Gmbh(pending), etc.
- Representing LEGO before the two levels of Court,
and requesting the court to recognize the well-known status of LEGO trademark, having
the Beijing High Court ask the TRAB to re-comment with all the supplemental
evidence on the well-known status of LEGO in the new decision.
- Other trademark administrative litigations for DC
SHOES, BOSS, SUNTRACKERS, BOY LONDON, ABB, EMERSON, etc., all with winning
results.
- Representing STAUBLI FAVERGES, BigBang (Petzl), ABB,
etc. to enforce the effective judgments of China courts, specifically on behalf
of Petzl monitoring the destroying of the product moulds on spot of the
infringer’s factory; getting full damage payments from the infringer for
STAUBLI FAVERGES after negotiated with the infringer; enforcing the judgment of
court for ABB and forcing the infringer closing the factory of producing
infringing products, etc.
- Representing Schneider
Industrial SAS to apply for enforcement of a French court’s Judgment in China.
- Others: On behalf of the firm,
attending the Collection of Expert’s Opinions on the revision of the China
Trademark Law hosted by the National People’s Congress of China, and proposing
revising opinion adopted by and prescribed in the newly revised Trademark Law.
Publications
- “Key revisions to the trademark law finally arrive”,
Managing Intellectual Property;
- “How to fight online infringement in China,” INTA
DAILY NEWS;
- “Strategy and Suggestions on TM protection for SMEs
in China”, IP ASIA;