Partner |Attorney at Law
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.
- “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;
All-China Lawyers Association (ACLA)
LICENSING EXECUTIVES SOCIETY CHINA
Ms. Zhu joined Liu, Shen & Associates in 1994 and became a qualified patent attorney in 1998. She specializes in patent preliminary examination procedure, all kinds of change prosecutions, Assignment of patent right, change of patent agency, monitor all kinds of time limit.
Ms. Zhu had a bachelor's degree from Mechanical Engineering Institute of Beijing Union University in 1992. Before joining this firm, Ms. Zhu worked as an engineering at Beijing Switch Factory for two years.
Mechanical Engineering,Material Science,Chemical Engineering
Ms. Zhu joined Liu, Shen & Associates in June 2015. She specializes in patent application drafting, patent invalidation, and client counseling with a focus on chemical engineering, materials science, mechanical engineering, display technology.
Ms. Zhu graduated from Wuhan Institute of Technology with a Bachelor's degree in chemical engineering and technology in June, 2012 and received her Master's degree in chemical engineering and technology from Beijing University of Chemical Technology in June 2015.
Medical Devices,Bio & Pharmaceutical,Chemical Engineering
Dr. Zou assists clients in matters involving all types of intellectual property: patents, copyrights, trade secrets, and unfair competition. He focuses mainly on preparation and prosecution of patent applications, and on patent administrative and judicial litigation before various administrative offices and people’s courts across the country. Dr. Zou also does significant work in preparation of patent infringement, validity, and freedom-to-operate opinions, patent portfolio management, due diligence and in counseling clients in various matters relating to intellectual property.
The wide variety of technical areas in which Dr. Zou has obtained and enforced patent protection for clients include pharmacy, chemistry, and biotechnologies, as well as mechanical systems and medical devices. In particular, Dr. Zou has been entrusted by multinational pharmaceutical companies to handle their patent and regulatory matters in China. Given his in-depth understanding of Chinese IP laws and practices, Dr. Zou has been invited frequently as a speaker in many international IP conferences.
Dr. Zou started his IP career with Liu Shen in 2003. Prior to his legal profession, Dr. Zou was engaged in research and development in pharmaceutical basic research and diagnostic methods development, he is very familiar with the technical areas of drug design & synthesis, nucleic acid chemistry, pesticide, macromolecule modification, biochip and molecular diagnostics.
Dr. Zou obtained his Ph.D. in pharmaceutical chemistry at the Chinese Academy of Military Medical Science (China, 2000), and his Master of Laws in Intellectual Property Law from John Marshall Law School (the U.S., 2010).
Representative cases that Dr. Zou has led or participated include
- Defending titropium bromide patent portfolio for Boehringer Ingelheim (German) in the invalidation proceedings and in court procedures (5 patents involved, 2006-2012);
- Defending Candesartan Cilexetil patent portfolio for Takeda (Japan) in the invalidation proceedings and in court procedures ( 2 patents involved, 2007-2012);
- Representing Albis in Albis (Germany) vs. FTP China, invalidation & infringement cases (settled, 2012-2014);
- Representing Grundfos in Grundfos (Denmark) vs. Zhejiang Qianyuan (China), infringement case, the Beijing High Court (infringement found and damage awarded, 2013-2014);
- Representing Shanghai Cathay Biotech in Shanghai Cathay Biotech vs. Hilead Biotech (2013-2014) and won three administrative cases;
- Representing Xiamen Hongfa in Xiamen Hongfa (China) vs. Dou Xiuzhi (2013-2014) and winning two invalidation cases;
- Representing SEB in SEB (France) vs. Wenzhou Household electrical (2013-2014) and winning the invalidation case;
- Representing Shenzhen MINDRAY in Shenzhen MINDRAY vs. Edan (2013-2014) and winning in invalidation & administrative litigation;
- Representing Hongkong PolyU in Hongkong PolyU vs. Ritter machinery (2014) and winning the invalidation case.
Publications & Presentations
- Claim definitions Undergoing Change, China IP Focus 2014, Managing Intellectual Property, 2014 [Co-author]
- How to determine novelty-conferring features for a medical use claim, China IP Focus 2015, Managing Intellectual Property, 2015 [Co-author]
- Disclosure requirements undergoing change, IAM Life Science (2015) [Co-author]
- Overview of IP Enforcement in China, 2012 Summit on Global IP Strategy for Corporate Counsel, New York, USA, December 2012
- Astrazeneca case, Prometheus case and Myriad case in a Chinese patent attorney’s perspective, MIP, London, UK, April 2013
- Chinese Patent practice in Pharmaceutical field, MIP, Beijing, China, June 2013
- Update on case development in life science field, IP in Asia Forum, Silicon Valley & Seattle, USA, May 2014
- Second medical use protection in China, the 5th China IP Symposium (Chengdu) 2015, Chengdu, China, November 2015
All-China Patent Agents Association (ACPAA)
Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI)