Trademark
Providing trademarks related legal services is an important part of JunHe’s intellectual property (IP) business. JunHe supports its clients to maximize their brand value by providing full-process professional legal services on trademarks, assisting clients with the registration, use and protection of their trademarks. JunHe’s IP team can provide all-round legal services in commercial law. The trademark team independently provides professional and high-quality services on trademarks and relevant issues for domestic and foreign companies, but also offers efficient support for other teams at JunHe whenever they come across legal issues regarding trademarks and other IP related issues.
Our Team
JunHe’s trademark team has outstanding knowledge in the IP area with directly relevant expertise. It consists of five partners and counsel and more than 20 intellectual property lawyers who have graduated from top-tier domestic and international law schools. All the partners have many years of work experience in the IP field and a number of the team members have served on the People’s Court Intellectual Property Tribunal, the Trademark Review and Adjudication Board, the Trademark Office as well as other relevant government offices.
JunHe’s award winning IP team and its partners are all highly regarded in the industry. For years JunHe has been widely recognised as a “leading law firm” with many leading litigation and non-litigation lawyers. These awards have come from a variety of globally renowned commercial rating institutions such as Chambers Asia Pacific, Asia Pacific Legal 500, Asia Legal Business (“ALB”), World Trademark Review (WTR), Managing Intellectual Property (“MIP”), Benchmark Litigation China and Asialaw Profiles.
Core Areas of Practice
Centred on trademark right affirmation and protection as well as IP litigation, JunHe’s trademark business also covers copyright, unfair competition, domain name and other IP-related legal issues. JunHe serves clients throughout a variety of industries, including the internet, biotechnology, healthcare and pharmaceuticals, energy, automobiles, food, cosmetics, luxury, apparel, material science, chemistry, clean technology, nanotechnology, communication electronics, e-commerce, media and entertainment, hotels and tourism and education.
PRC Trademark Registration and Protection: Assisting clients at home and abroad in all aspects of trademark registration with the CNIPA including, but not limited to, the filing of all types of trademark applications, responding to office actions, appealing rejections, defending and prosecuting oppositions and invalidations.
Dispute Resolution Services of IP rights including trademarks: Representing clients in civil and criminal litigation actions concerning trademark infringement, anti-unfair competition, copyright, domain name registration and disputes, customs protection and other relevant IP cases.
PRC Trademark Enforcement Services: Assisting clients at home and abroad protect their valuable trademarks in all possible manners including, but not limited to, the effective prosecution of cease-and-desist letters, internet take-down actions, investigation oversight, and the prosecution of all manner of enforcement actions, including administrative raids, civil and criminal litigation.
Trademark Compliance and Strategic Services: Assisting clients in conducting trademark due diligence, developing brand strategies, building management systems, carrying out compliance reviews and designing trademark licensing management, participating in trademark transaction negotiations, and preparing relevant commercial documents.
Overseas Trademark Registration and Protection: Representing Chinese clients in obtaining international trademark registration via the Madrid System, or coordinating with foreign law firms in performing overseas trademark searches, risk analysis and strategic planning, and obtaining overseas registrations. Also assisting domestic and foreign clients in solving their various overseas disputes regarding trademark rights.
Trademark Training and Research: Providing professional training and studies on the topic of trademark administration, registration, protection, domain name protection, border protection and other relevant topics as clients require.
Professional and Pragmatic Legal Services on Trademarks
Through many years of legal practice, JunHe’s trademark team has accumulated extensive professional experience in administrative affirmation procedures, trademark protection and judicial procedures, winning a high reputation among domestic and foreign clients. The trademark team has established unimpeded communications with the Trademark Office of the State Council, the Trademark Review and Adjudication Board and other governing authorities, as well as the IPR Tribunal of the People’s Court in Beijing, Shanghai and other major Chinese cities. Its deep understanding of domestic and foreign legislation regarding trademarks, coupled with a strong grasp of legislative developments enable JunHe to transfer its best market practice and cutting-edge professional knowledge into unmatched legal services for clients to solve practical problems.
Recent Representative Cases
1.We represented the German company BMW AG in its entire trademark process in China, effectively fighting against trademark registrations in bad faith and trademark infringements. Many cases have successfully obtained the identification of well-known trademarks from the former Trademark Office, the former Trademark Review and Adjudication Board, the CNIPA and courts at all levels. We helped the client successfully register "BMW Sound Melody" as a trademark, which was the first ever sound trademark registration case in the automobile industry. The case was named the “2017-2018 Excellent Trademark Case” Award by the China Trademark Association and the “Outstanding Foreign Related Legal Precedents” Award by the All China Lawyers Association.
2.We represented BMW AG in a trademark and unfair competition action brought against Shanghai Chuangjia Clothing Co., Ltd., Dema Group (INT'L) Holding Limited and Zhou Leqin, and ultimately won the case. This case was recognized by Shanghai Intellectual Property Court as one of its landmark cases of 2016.
3.We represented the Italian company Ferrero in a wide-ranging case concerning trademark and unfair competition, managing to identify “Ferrero” as a well-known trademark and to register two 3D trademarks including ROCHER golden ball and KINDER JOY egg for Ferrero. Many of the cases have since been ranked in the “Guiding Cases issued by the Supreme People’s Court”, as “Top 10 Cases Involving Foreign Interest in Beijing Court”, “Annual Typical Trademark Infringement and Abuse Cases Issued by the Administration for Industry and Commerce”, “Top 5 Appeal Case rated by China National Intellectual Property Administration”, and included in Outstanding Foreign Related Legal Precedents by the Beijing Lawyers Association in 2021.
4.We represented ChimeLong Group Co., Ltd. in a series of cases concerning trademark invalidation disputes, managing to identify “CHIMELONG” as a well-known trademark in both Class 41 and Class 43. This case was recognized as the “2018-2019 Excellent Trademark Case" by the China Trademark Association.
5.We represented Zhenai.com in the retrial of an infringement dispute with Jin Ahuan over the trademark “非诚勿扰” and ultimately won the case (which was selected third in the top ten intellectual property cases in 2016 by the Supreme Court). The case was recognized as first of the top ten intellectual property cases of the year by the Guangdong High Court and listed as a typical WIPO intellectual property case.
6.We represented the American basketball superstar Michael Jordan in a lawsuit against Qiaodan Sports Co., Ltd. concerning name right infringement. The court rendered a favourable first-instance judgment, ordering the defendant to stop using the trade name that it had registered and used for many years, to stop using the disputed trademark, and to add distinguishing marks. The case was included in Outstanding Foreign Related Legal Precedents by Beijing Lawyers Association in 2021.
7.We represented SICIS, an Italian company, in a copyright infringement lawsuit over mosaic artworks and ultimately won the case. This case was included in the Beijing Lawyers Association list of Outstanding Foreign Related Legal Precedents in 2021.
8.We represented Stokke AS, a Norwegian manufacturer, in an invalidation against Trademark No. 10938322 “思道阁”. The former Appeal Board held that the trademark in dispute constituted rush registration of “思道阁” (STOKKE in Chinese) which was in prior use with certain influence, shall be invalidated and the case was recognized among the “Top 20 Landmark Trademark Cases of Appeal Board in 2016”.
