Yan Zhang

Head of East IP Law Firm
Trademark & Copyright

Primary office

Beijing

Practice focus

Litigation & Dispute Resolution

Trademark

Unfair Competition

Domain Name

Customs Protection

Copyright

Experience

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.

Ms. Zhang’s practice focuses on trademark prosecution, enforcement and litigation, copyright protection, anti-unfair competition, customs IP matters, licensing and domain name disputes, particularly in developing brand protection strategies for clients and handling trademark administrative litigation. Ms. Zhang has led and participated in more than 400 litigation cases, always providing clients with comprehensive and practical solutions for Fortune 500 companies. She is also experienced in alternative dispute resolution, risk management, negotiation and well-known trademark recognition.

With many years of practice in this field of law, Ms. Zhang has successfully obtained well-known mark recognitions for Ritz-Carlton, Yahoo!, Adobe (PHOTOSHOP), Cisco, and NOK, among others, before the CNIPA, the Beijing IP Court, the Beijing High Court and the Shanghai High Court in administrative and civil cases.

Work Highlights

  • Won court appeals representing Freudenberg before the Beijing IP Court, the Beijing High Court and the China Supreme Court. These cases centered around 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 involved the issue of determination of similarity between an English mark and its 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 court appeals for Facebook before the Beijing First Intermediate Court, the Beijing IP Court and the Beijing High Court, resulting in cancellation of various FACEBOOK marks for unrelated goods that were obtained by bad faith filings.
  • Won a court appeal 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.
  • Won appeals 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 regardless of whether the assignee purchased in good faith does not affect the determination of the bad faith of the original registrant.
  • Won a trademark infringement and unfair competition lawsuit representing NOK before the Shanghai High Court. The Court recognized NOK’s “NOK” mark as a well-known mark on oil seal goods and held that the defendants’ acts constituted trademark infringement and unfair competition.
  • Won four trademark infringement, copyright infringement and unfair competition lawsuits for American Petroleum Institute (API) before the Shunde Court and the Foshan Intermediate Court. The case was selected as one of 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.
  • 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.
  • Successfully defense for client in a dispute relating to a domain name transfer agreement.  In this case Ms. Zhang represented a famous U.S. social network company before the Shenzhen Intermediate Court. The Court affirmed the validity of the domain name transfer agreement and dismissed all claims of the plaintiff.
  • Successfully defended client in a trademark infringement lawsuit representing one of the world’s largest hard drive manufacturers before the Guangdong High Court. The Court affirmed that there was 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 the withdrawal of lawsuit by the plaintiff.
  • Won numerous cases under UDRP policy and CNDRP policy in .com and .cn domain name disputes, representing world leading companies in various industries.

Publications

  • Opposition Trends in China Reveal CNIPA Crackdown on Trademark Squatting (2024)
  • China’s New Punitive Damages System Bolsters Protection Against Trademark Infringement (2023)
  • A Brief Look into NFTs in China (2022)
  • Key Considerations When Protecting Chinese Language Marks (2022)
  • WeChat Domain Name Case: Why Does Tencent Prefer Hong Kong Arbitration? (2016)
  • Analysis From Typical Cases: Corresponding Relationship Between Chinese Marks and English Marks (2015)
  • Protection of the Chinese Equivalent for its English Trademark (2015)
  • Analysis From 32 Cases: Trademark Protection Practice in Real Estate Field (2015)
  • Determination of Similarity of Goods and Services related to Real Estate (2015)
  • Analysis From 13 Cases: How to Protect Your Trademark by Applying Prior Copyright (2015)
  • Protection for Prior Copyright in Trademark Disputes (2014)
  • Admissibility Of New Evidence During Trademark Administrative Trials (2014)
  • Determination of Infringement and Use of Trademark In OEM Business (2014)
  • Key Amendments of New Chinese Trademark Law 2013

Presentations

  • Session entitled “The Hungry Caterpillar: Colin V. Cuthbert and a Look at How to Best Protect Cutting Edge Marks Inside and Outside the Trademark Arena” at INTA’s Annual Meeting (2022)
  • Strafford Live Video Webinar “Trademark Doctrine of Foreign Equivalents” (2021)
  • Seminar entitled “Protecting Your IP in China-Early-Stage IP Strategy Planning and Litigation” Hosted by the US-China Business Council (USCBC) (2021)

Education

  • Juris Master Degree, China University of Political Science and Law
  • Bachelor Degree, Hebei Normal University

Admissions

  • PRC Attorney-At-Law

Languages

  • Mandarin Chinese (native)
  • English (fluent)

Recent Insights

A recent judgment issued by the Shanghai IP Court (“SIPC”) clarifies how the PRC Anti-Unfair Competition Law (“AUCL”) can be applied to parties that...
The revised law will enter into effect on October 15, 2025. While the new law introduces a number of changes impacting a wide range...
Recently, the China National IP Administration (CNIPA), the parent organization to the Trademark Office (TMO), began introducing new policies and procedures relating to non-use...