King & Wood Mallesons
Firm overview:
King & Wood Mallesons is widely regarded as a top-tier firm in China; a home-grown champion with its roots in Beijing, where King & Wood was founded in 1993. However, the firm is a unique hybrid thanks to its 2012 merger with ‘Big Six’ Australian firm Mallesons Stephen Jaques, which combined King & Wood’s PRC expertise with Mallesons’ cross-border capabilities in Asia and Australia.
As a result, KWM is licensed to practice PRC law with full rights of audience, and pitches itself as a “new breed of global law firm”— backed up by the numbers, with over 3,700 lawyers in 26 offices. Clients in China and beyond appreciate the firm’s multifaceted strengths and incisive counsel drawn from both Western and Eastern perspectives. This gives rise to a debate on the impact of the firm’s international heritage on its status as a ‘PRC’ ranking and ongoing debate at WIPR on the continuing validity of the International/PRC firm distinction.
This debate aside, the full-service firm is widely recognised as among the best in the market for both non-contentious and contentious trademark work. KWM represents leading household-name brands, technology and life sciences companies across the full scope of IP matters, bringing together experts in multiple offices and departments to handle cross-border transactions and protect and enforce IP rights in multiple jurisdictions.
KWM specialises in high-value, complex litigation with a multijurisdictional dimension, and has significant expertise in international arbitration. The team has secured landmark victories in trademark cases, including obtaining what was, at the time, the highest ever damages award in Chinese IP litigation for Guangzhou Pharmaceuticals in 2018.
Team overview:
With a career spanning over three decades, Ding Xianjie is elevated to Hall of Fame status for his outstanding contribution to the IP profession. Now serving as of counsel at the firm, Ding has deep expertise across trademark acquisition, maintenance, usage and dispute resolution. He has advised large corporations from industries including e-commerce and retail, automotive, chemical, and manufacturing on IP strategy and portfolio management.
Stand-out lawyers at the firm include Lin Jiuchu, whose practice is strong across non-contentious and contentious trademark matters. Lin is adept at handling applications, due diligence, strategic planning and licensing, and represents clients in trademark oppositions, invalidations and cancellations in which he has a high success rate.
He Fang co-leads the IP litigation group from KWM’s Shanghai office, and has worked on a number of landmark IP cases including the first declaration for non-infringement of a trademark in China (known as the ‘Peter Rabbit’ case). He is particularly skilled in the areas of trademark, trade dress and copyright.
Another key litigator at the firm, Shi Yusheng’s practice spans over 30 years and covers IP infringement cases as well as administrative lawsuits. Shi has represented many leading global brands in a diverse range of industries, and is regarded as one of China’s top lawyers in IP dispute resolution.
Xu Jing also specialises in IP litigation, and has acted in numerous disputes selected as ‘representative cases’ by China’s courts. These include Christian Louboutin v The Trademark Review and Adjudication Board, an administrative court appeal against a refusal decision on an international application for registering the ‘Red Sole’.
Qu Miao (Mia) handles disputes pertaining to patents, trademarks, trade secrets, copyright, domain names, and more. A popular choice among in-house counsel, Qu has handled a number of high-profile cases with complex legal intricacies and also sits as an arbitrator at the Shanghai International Arbitration Center.
Key matters:
- Non-infringement win for OEM in trademark case
KWM secured a victory for an original equipment manufacturer (OEM) in a protracted trademark dispute, which served as a reference on the evolving jurisprudence on trademark disputes involving OEMs.
Led by He Fang, the team’s work involved protecting the interests of a foreign trademark owner and its Chinese OEM partner, over three years of litigation across three judicial levels.
