Yong Zhang - Professionals

Christopher (Yong) Zhang is a senior partner in Dentons Shenzhen office and a board member of Chinese Intellectual Property and Technology group. He has over 16 years of experience in fields of trademark, copyright, patent, trade secret and e-commerce law, including litigation and counselling. Chris has now established a professional intellectual property team comprised of more than seven lawyers.

In the area of trademark law, Chris has extensive experience in litigating trademark matters before courts and arbitration forums, including trademark prosecution and defending trademark infringement, counterfeiting, anti-dilution, unfair competition, false advertising, as well as ex parte and inter partes proceeding before the China Intellectual Property Administration (CIPA). Chris advises clients on trademark portfolio management, filing strategies, clearance work, prosecution, licensing, due diligence and negotiations, and works closely with Dentons offices and preferred agent throughout the world to secure trademark further afield. His prosecution work covers a broad variety of industries including retail, entertainment, software and internet, food and catering, manufacturing, hotel and leisure and e-commerce merchant. He also works closely with the members of other Dentons’ practice groups including corporate, finance, capital market, real estate, litigation and criminal matters.

In the field of copyright law, Chris has a significant experience in litigating copyright disputes including motion picture, TV show, online game, music, written work, live broadcasts and photography. He also advises clients concerning the creation, maintenance and protection of copyright interests.

In the area of patent law, Chris’s team also covers all aspects of patent law practices, including patent prosecution, litigation, validity and infringement opinions, licensing, technology transfer, patent acquisitions and settlement negotiations.

Chris’s experience also covers litigation of trade secret misappropriation, trade secret protection, and the drafting and negotiation of employment agreements including non-compete covenants.

Additionally, Chris has experience in online intellectual property protection including online trademark infringement, online copyright infringement, online patent infringement and online false advertising.

Chris team was identified by Alibaba.UC as the “Best Service Team” in 2017. Chris was recognized by Guangdong Lawyers Association as the “lawyer who is competent for international and transnational intellectual property matters” in 2017.

Experience

Creative Impact Inc. v. E-SCENERY, Northern District Court of Illinois: The plaintiff Creative Impact Inc. (“CII”) sued multiple defendants including our client E-SCENERY for trademark infringement, claiming that E-SCENERY’s toy products sold on Amazon.com infringed CII’s trademark rights. After careful legal research, Chris’s team found that CII’s infringement claim against E-SCENERY was not valid. In order to save our client’s time and economic costs, Chris settled the case with the plaintiff under the client’s authorization. The settlement amount was greatly reduced, and the plaintiff withdrew its claims against E-SCENERY.
Ideavillage v. Livoty, Southern District Court of New York: Plaintiff Ideavillage sued multiple defendants including our client Livoty for trademark infringement, claiming that Livoty’s toy products sold on Amazon.com infringed Ideavillage’s trademark rights. Chris pushed the plaintiff to settle the case with Livoty, and the plaintiff withdrew its claims against Livoty.
Shenzhen Xinhangdao Supply Chain Co., Ltd. v. Hai Lin, People’s Court of Luohu District, Shenzhen: The plaintiff sued the defendant for liquidated damage on the ground of a breach of the duty of confidentiality in the labour contract. However, reaching an agreement on liquidated damages for breaching duty of confidentiality in labour contracts other than the non-compete agreement violates the Labour Contract Law. Accordingly, Chris provided an effective defense based on this rational. Finally, the court dismissed the plaintiff’s claims.
Shanghai Chu Ling Culture Communication Co., Ltd. v. Shenzhen Bat Rabbit Education Technology Co., Ltd. & Shenzhen Penguin Father Technology Co., Ltd.: Chris represented the plaintiff and alleged that the defendant infringed the plaintiff’s trademark by manufacturing, offering for sale and selling the infringing products, and he claimed that such infringement also constituted unfair competition.
Shenzhen Tencent Computer Technology Co., Ltd v. Guangzhou 9Game Information Technology Co., Ltd. (8 cases in total), People’s Court of Nanshan District, Shenzhen: Representing the defendant 9Game. The Plaintiff Tencent alleged that the defendant 9Game participated as online platform in operations of serial games, which infringed Tencent’s trademark right on Tencent’s own games, and constituted unfair competition. Chris provided valid defenses that the uses of serial games’ name constituted fair use, and the platform was not liable for its bone fide third-party status. Such defenses pushed Tencent to settle the case.
Foshan Nanhai Canmei Lighting Company v. Guangzhou Canmei Lighting Co., Ltd. & Zhejiang Tmall Technology Co., Ltd., People’s Court of Shunde District, Foshan: Representing Tmall. The plaintiff, the Foshan company registered “Canmei” trademark. The defendant, the Guangzhou company registered “Canmeijia” (Canmei’s family) trademark in the same class, and sold related products on the co-defendant, Tmall’s online sales platform. Chris invoked safe harbor rule and received holding of non-infringement.
Shenzhen Xunlei Network Technology Co., Ltd. v. Sichuan Telecom Co., People’s Court of Nanshan District, Shenzhen: Representing Xunlei. The plaintiff Xunlei, an online video platform, sued the defendant for infringement of online public performance, requesting enjoinment of its infringing activity as well as damages. The defendant stopped infringement and settled the case before trial.
Shenzhen Xunlei Network Technology Co., Ltd. v. Hunan Happy Sunshine Interactive Entertainment Media Co., Ltd. (60 cases in total), People’s Court of Nanshan District, Shenzhen: Representing Xunlei. Both parties were online video platforms, and they all had broadcast video works that the opposing party held public performance rights. Chris represented Xunlei and reached settlements in favor of the plaintiff. Both parties dismissed the sues.
Taobao (China) Software Co., Ltd. v. Shenzhen Tencent Computer System Co., Ltd. (over 1,000 cases in total): Representing Taobao who brought a suit against Tencent for public performance infringements on online music works. Both parties were giant internet companies in China, as well as from the aspect of online music streaming markets. Chris represented Taobao to sue Tencent for copyright infringement and the court held that the defendant Tencent was liable, ordering Tencent to pay high amount damages as well as partial reasonable attorney fees. Afterwards, both parties reached settlement and agreed to cross license their works to each other.
Guangzhou Kugoo Computer Co. Ltd. v. LETV Mobile Intelligent Information (Beijing) Co. Ltd., People’s Court of Tianhe District, Guangzhou: Representing LETV. Chris represented LETV and provided valid defense that the defendant LETV was a bone fide third-party platform, not the direct infringer who provided infringing music works, and thus shall not be liable. Such defense pushed the plaintiff to dismiss the case.
Beijing Haidie Co. v. Huawei Technologies Co. Ltd., People’s Court of Nanshan District, Shenzhen: Representing Huawei in defense of alleged infringement of online public performance on music streaming. After deep analysis of the evidence, Chris found defects in the plaintiff’s authentication, which led to plaintiff’s dismissal.
Shenzhen Tencent Computer System Co., Ltd. v. Shenzhen Gionee Communication Equipment Co., Ltd. People’s Court of Tianhe District, Guangzhou: Representing Gionee. Chris represented Goinee and provided valid defense that defendant, Gionee, was a bone fide third-party platform, not the direct infringer who provided infringing music works, and thus shall not be liable. Such defense pushed the plaintiff to dismiss the case.
Guangzhou Shenma Literature Co. v. Shenzhen Tencent Computer Co., Ltd., People’s Court of Nanshan District, Shenzhen: Representing the plaintiff Shenma to bring a copyright infringement against Tencent. The case was settled.
IMAGEMORE (Shanghai) Ltd. v. COFCO Food Marketing Co., Ltd., People’s Court of Futian District, Shenzhen: Representing COFCO. While the infringement was found solid, Chris lowered the damage to the minimum amount by providing defenses of low profit of infringement.
Beijing Youtujiashi Co. Ltd. v. Shenzhen Tencent Computer Co., Ltd., People’s Court of Nanshan District, Shenzhen: Representing the plaintiff Youtujiashi to bring an image copyright infringement claim against Tencent. The case was settled in favor of the plaintiff.
Wulina v. Shenzhen Pingshan New Area Huachuang Electronics Factory, Shenzhen Pingshan Administration of Market Regulation, CNIPA, Intermediate People’s Court of Shenzhen: Representing Huachuang for three businesses: First, on the behalf of Huachuang, answered the administrative complaint Wu brought for patent infringement; Second, within the above proceeding, filed an application to CNIPA on behalf of Huachuang for invalidity of Wu’s patent, and successfully forced Wu to withdraw her administrative complaint; Third, defended Huachuang in the following patent litigation brought by Wu, provided valid defenses including prior use and technical differences between the actual technology and those in the claims, which pushed Wu to dismiss the entire case.
Turtletech Design, Inc. v. Dongguan Nuotabi Electronic Technology Co. Ltd., Intermediate People’s Court of Shenzhen: Representing Turletech in suing a former employee for trade secret misappropriation and patent infringement. The parties settled the case and the defendant surrendered all products and in-process inventories, promised permanently stopping such manufacturing and paid the damage.
Channel Enterprises (HK) Limited v. Shenzhen Mingyangxingye Technology Co. Ltd., Zhejiang Tmall Network Co., Ltd., Intermediate People’s Court of Shenzhen: Representing Tmall in the litigation and participated in the mediation. Pushed the plaintiff to dismiss the case.
Multiple Plaintiffs v. Zhejiang Tmall/Taobao Networks Co., Limited (hundred cases in total): Representing Tmail/Taobao in answering multiple litigations on trademark, patent and copyright infringement matters. In some cases, Chris pushed the parties to settlements or pushed the opposing parties to dismiss the cases. In some other cases, Tmail/Taobao received holdings of non-infringement.
Foxconn v. BYD, Intermediate People’s Court of Shenzhen: Represented BYD as the defendant. The plaintiff alleged that its former employee and BYD misappropriated Foxconn’s trade secrets, and thus they constituted unfair-competition. Chris represented BYD for trade secret misappropriation matters and found defects in evidence provided by the plaintiff, and made the plaintiff dismiss the case.

Recognition

Reported by US National Jurist titled “Chinese Attorney Leads IP Team While Earning LLM”, while studying as LLM student in Chicago-Kent College of Law, April 4, 2018
Awarded Gold Award of Shenzhen Copyright Protection (the Sixth), jointly held by Shenzhen Copyright Association, Shenzhen Newspaper Group, and Shenzhen Media Group, January 17, 2018
Identified by Alibaba.UC as “the Best Service Team” in 2017, January 10, 2018
Awarded as a lawyer who is competent for international and transnational intellectual property case and elected into the Guangdong International and Transnational Lawyer Talent Pool by canton bar association, August 24, 2017
Awarded the Top Ten Exemplary IP Cases of Shenzhen Lawyer of Year 2016, by Shenzhen Bar Association
Alibaba Group 2016 Best Service Case Award, jointly held by Alibaba Group and Shanghai Bestone Information Technology Co., Ltd., March 25, 2017
Outstanding Trainees of the First Young Lawyers' Seminar, jointly organized by Shenzhen Municipal Bureau of Justice and Shenzhen Lawyers Association, June 16, 2011

Insights

Co-author, “Interpretation of Intellectual Property Sections of China-US 1^st Phase Economic and Trade Agreement,” Dentons’ Official WeChat Account, January 24, 2020
Co-author, “Notice and Takedown Rules of Online Infringement,” 81^th issue of Guangdong LED magazine, June 2017, P58-60
Co-author, “Analysis of Legal Issues in Image Copyright,” 79^th issue of Guangdong LED magazine, April, 2017, P48-50
Co-author, “Basic Rules of Trademark Licensing,” 78^th issue of Guangdong LED magazine, March 2017, P52-55
Co-author, “Legal Analysis of Cars v. The Autobots,” 77^th issue of Guangdong LED magazine, January 2017, P66-68
Co-author, “Legal Analysis of Michale Jordan v. Qiaodan Sports Corp. Ltd.: Trademark Infringements,” 76^th issue of Guangdong LED magazine, December 2016, P64-67
Co-author, “Analysis on the Qualitative of Deep Link Behaviour from Tencent v. E-link Way Case,” 75^th issue of Guangdong LED magazine, November 2016, P56-59
Co-author, “Understanding Pre-suit Preservations in IP cases: The Voice of China case,” 73^rd issue of Guangdong LED magazine, September 2016, P57-59
Co-author, “Discussion of New Balance Trademark Case,” 72^nd issue of Guangdong LED magazine, August 2016, P59-61
Co-author, “Legal Analysis of Tencent v. Guangdong WeChat,” 71^st issue of Guangdong LED magazine, July 2016, P64-65
Co-author, “iPhone ost Its Trademark: Battles on the Claims,” 70^th issue of Guangdong LED magazine, June 2016, P64-65
Co-author, “Standards of Gaming Trademark Infringement,” 80^th issue of Guangdong LED magazine, May, 2016, P70-73
Co-author, “Failure of CCTV’s Animation ‘Big Head Son’, High Damages Instead of Injunctive Relief,” 68^th issue of Guangdong LED magazine, April 2016, P68-69
Author, “Defending Strategies of Using Other’s Photography in Copyright Infringement itigations,” 67^th issue of Guangdong LED magazine, March 2016, P64-65
Author, “Whether the Use of Others' Trademarks as a Business Name is Infringing or Not,” 58^th issue of Guangdong LED magazine, May 2015, P77-78

Activities and Affiliations

Community Involvement and Pro Bono

Practicing mentor, Xi'an Polytechnic University School of Humanities and Social Sciences, June 2019-present
Shenzhen Arbitration Committee for Labor Disputes, 2016-2018
Arbitrator, Huizhou Arbitration Committee, 2014-2017
Completion of the second seminar on intellectual property entertainment law in Peking University, hosted by Peking University Law School, June 2017
Completion of Training of Intellectual Property Management Standards in Enterprises, organized by Guangdong Intellectual Property Office, January 2016
Completion of Law Firm Management International Project, hosted by the Chicago-Kent College of Law, June 2015
Completion of Senior Management Training for Listed Companies, organized by Shenzhen Stock Exchange, August 2010

Presentations

Speaker, Interpretation of IP Sections of China-US 1^st Phase Economic and Trade Agreement, Dentons’ Online Network Lecture, February 13, 2020
Speaker and organizer, Conflict & Balance, Trademark, Trade Names and Right of Publicity, Dentons Shenzhen office IP Department, Shenzhen, December 18, 2019
Speaker, Punitive Damages in IPRs: Inspirations from US Patent Law, Dentons Shenzhen office & HK Des Voeux Chambers, Shenzhen, December 10, 2019
Speaker, IPR Exhaustion of Trademark Rights in Parallel Import, Dentons Greater-Bay-Area Forum, Shenzhen, November 22, 2019
Speaker, US in the Eyes of a Chinese Lawyer, Dentons Shenzhen office, Shenzhen, July 25, 2019
Speaker, Sharing Experiences of Patent Litigation, Dentons Shenzhen office IP Department, Shenzhen, June 6, 2019
Speaker, Application of Law and Technology, Team Management, Chicago-Kent College of Law, China Law Association, Chicago, April 10, 2019
Speaker, Developing Trend of China’s IPR Protections, Chicago-Kent College of Law, China Law Association, Chicago, April 19, 2018
Speaker and organizer, Exploring Copyright Protection Issues Arising from the Game Business Disputes, Shenzhen Game and Digital Creative Industry Intellectual Property Forum, July 17, 2017
Speaker, Trademark Law Overview and Corporate Trademark Strategy Building, special legal training in Shenzhen Medica Technology Development Co. Ltd., June 30, 2017
Guest speaker, Importance of Communicating with Parties Involved in the Case of Intellectual Property Rights, Xixi Forum Cooperation Lawyers Exchange Conference jointly organized by Alibaba and Bestone, March 15, 2017
Guest speaker, Legal Challenges Faced by E-commerce, the Fourth Session of Guangdong Provincial Intellectual Law Practice Forum, October 15, 2016

Memberships

Member of China Trademark Association, since May 2019
Member of International Trademark Association, since March 2018
Member of the All China Law Association since December 2007
Member of the Guangdong Provincial Law Association since December 2007
Member of Shenzhen Law Association since December 2007

Prior and Present Employment

Senior partner, Dentons, 2009-present
Legal intern, Flener IP & Business law office, June 2018-May 2019
Legal manager, BYD Co., Ltd., 2006-2008
Paralegal, Beijing Guoda Law Office, 2004-2005