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Yan ZHANG

  • Trademark Team - Partner
  • Senior Lawyer
  • The China Trademark Office Subcommittee of the Trademark Office Practices Committee at INTA
  • Trademark Department

Ms. Zhang obtained her Juris Master degree from China University of Political Science and Law, and joined the firm in 2006. Ms. Zhang co-leads the trademark team.

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  • Areas of Practice

    Trademark
    Copyright
    Anti-unfair competition
    Domain Name
    Customs recordation

  • Highlights

    Won court appeals against the TRAB representing Freudenberg before the Beijing IP Court, the Beijing High Court and the China Supreme Court. These cases mainly involve the issue of determination of similarity of goods.

    Successfully defended in a court appeal for Freddie Mac before the Beijing First Intermediate Court, the Beijing High Court and the China Supreme Court. This case involves the issue of determination of similarity between English mark and Chinese equivalent.

    Won court appeals representing Maerz before the Beijing IP Court, the Beijing High Court and the China Supreme Court, obtaining favorable judgments affirming similarity between English and Chinese marks.

    Won a court appeal against the TRAB representing Adobe before the Beijing High Court. The Beijing High Court (second instance court) revoked the decision held by both the first instance court and the TRAB, and recognized the PHOTOSHOP mark on computer programs as well-known in China. This case covers the dilution of well-known mark, and grants the protection of the PHOTOSHOP mark to cosmetics.

    Won court appeals against TRAB for Facebook before the Beijing First Intermediate Court, the Beijing IP Court and the Beijing High Court, resulting in disapproval of various FACEBOOK marks for unrelated goods that were obtained by bad faith filings.

    Won a court appeal against the TRAB for Lonely Planet before the Beijing First Intermediate Court and the Beijing High Court. The Courts affirmed the high reputation of Lonely Planet’s trade name and granted cross-class protection. Further, won the victory in the second instance appeal for a series of trademark invalidations against the marks “GU DU XING QIU in Chinese” and “LONELY PLANET and GU DU XING XING in Chinese.”

    Won appeals against the TRAB for Instagram before the Beijing IP Court and the Beijing High Court, resulting in revocation of certain trademark registrations that were obtained by bad faith filing. This case illustrates the fact that the transfer of the trademark in dispute and whether the assignee is in good faith does not affect the determination of the bad faith of the original registrant.

    Won court appeals representing McDonald's before the Beijing IP Court and the Beijing High Court and obtained well-known trademark protection for McDonald's mark "McFlurry in Chinese" before the Beijing IP Court.

    Won a court appeal against the TRAB representing Cisco before the Beijing IP Court. The Beijing IP Court recognized the CISCO in Chinese mark on network communication equipment as well-known in China, and granted the protection to the goods of electric cooking utensils.

    Won four trademark infringement, copyright infringement and unfair competition lawsuits for American Petroleum Institute (API) before the Shunde Court and the Foshan Intermediate Court, which was selected as the Top 10 IP Cases handled by the Shunde Court in Guangdong Province.

    Won two trademark infringement and unfair competition lawsuits representing a NASDAQ listed U.S. online travel information provider before the Beijing First Intermediate Court and the Beijing High Court. The Courts ordered the defendant to cease the trademark infringement and pay damages. This case involves online trademark infringement and conflict between domain name and trademark.

    Successfully settled a trademark infringement and unfair competition lawsuit representing a famous U.S. hotel company before the Fuzhou Intermediate Court. The defendant ceased infringement and changed the trade name with local AIC. This case involves the hotly debated issue of conflicts between trade name and trademark registration.

    Successfully defended in a dispute of domain name transfer agreement representing a famous U.S. social network company before the Shenzhen Intermediate Court. The Court affirmed the validity of domain name transfer agreement and dismissed all claims of the plaintiff.

    Successfully defended in a trademark infringement lawsuit representing one of the world’s largest hard drive manufacturers before the Guangdong High Court. The Court affirmed no infringement and dismissed all re-trial requests of the plaintiff.

    Successfully settled a trademark infringement lawsuit representing a global lifestyle and accessory products retailer before the Shanghai IP Court, resulting in withdrawal of lawsuit by the plaintiff.

    Won various trademark oppositions, opposition appeals, rejection appeals, and dispute cancellations before the CTMO and the TRAB, representing hundreds of clients in various industries. These cases cover various issues like celebrity name protection, prior copyright, well-known mark recognition, cross-Class protection, bad faith filing, similarity between marks and goods/services, and distinctiveness of marks.

    Won dozens of complaints under UDRP policy and CNDRP policy in the .com and .cn domain name disputes, representing the world leading companies in various industries.

  • Experience

    Beijing East IP since 2006

  • Admissions

    PRC Attorney-At-Law

  • Education

    Juris Master degree, China University of Political Science and Law
    Bachelor degree in English literature, Hebei Normal University