Frank Liu

Partner, Head of Shanghai Pacific Legal

Frank Liu

+86 21 6086 0199
frank.liu@shanghaipacificlegal.com

With 20 years of experience, Frank Liu is a senior IP lawyer who heads the Intellectual Property practice of Shanghai Pacific Legal.

Frank specializes in offering a full range of services to clients including IPR registration, protection, management, and dealing with infringement issues as well as working with clients on creating an end-to-end IP strategy. His clients include a significant number of Fortune 500 companies, multinational corporates as well as domestic PRC corporations from a wide range of sectors. He has acted for clients in over a hundred litigation and arbitration cases in China, many of which secured favourable awards.

Frank worked in an intermediate level Chinese Court for five years from 1996 prior to his entering private practice in 2002.

Practice

  • Intellectual property

Representative experience

IPR Protection Strategy Design

  • Has advised many MNC on IPR protection strategy design, including but not limited to, the appropriate business pattern for IPR license and franchise issues; combined trademark, copyright, design, domain name, and unfair competition strategy to establish a three-dimensional IPR protection strategy for clients; cooperated with law firms in other countries and districts to provide a one-stop legal service to cater for the needs of international clients.

IP Dispute Resolution

  • As a model case for the enforcement of IPR, acted for a U.S. apparel brand in a trademark license dispute; as one of the few New York arbitral awards to be recognized and enforced in China, eventually the arbitral award was recognized and USD1.5 million was collected for the client. (Reported by Managing Intellectual Property (MIP) and the Global Arbitration Review; the Model Cases by Legal 500);
  • Acted for Kraft Foods Global Brands LLC in a complicated trademark infringement and unfair competition case against a domestic company in Jiangsu Province; through sophisticated evidence collection and two instance trials in Liaoning province and retrial by the Supreme Court, finally we received a favourable Judgment from the Supreme Court which confirmed both the trademark infringement and unfair competition claims and ordered the adverse party to cease the infringement, to compensate the client, and to eliminate the negative influence caused by infringements. (Deal of the Year 2013 by China Business Law Journal);
  • In an unfair competition case in Xiamen, acted for client Best Buy fighting against a Xiamen Local Company since the adverse party used “百思买” (Best Buy in Chinese, Bai-Si-Mai) as its trade name. We finally received a favourable Judgment that ordered the adverse party to change its company name and to compensate for the client’s loss. (Top 10 typical case of Xiamen Intermediate People’s Court in 2011);
  • Represented Lenovo (Beijing) Limited in an administrative litigation against the Trademark Review and Adjudication Board (“TRAB”) decision in opposing a trademark application filed by a third party in the goods of eye glasses; we finally received a favourable decision which overruled the TRAB Decision and recognized the cross-class protection of well-known “联想” (Lenovo in Chinese, Lian-Xiang) trademark;
  • Acted as lead counsel and appeared before the Nanjing Intermediate People’s Court representing the claimant against 43 distributors of a prestigious joint venture beverage company on the issue of utility model infringement. This case lasted for more than 2 years and the team carried out investigations in more than 10 cities to gather evidence. The case finally settled, and the opposition’s settlement fees were over RMB12.5 million (around USD2 million);
  • Acted for a U.S. company as the attorney of the defendant in two related patent infringement cases. We were involved in an already disadvantageous situation where the client had already lost both the first instance civil trial and administrative trial. We designed and led the negotiation with the adverse party. Finally, through our tailored strategy, diligent evidence collection, and detailed and precise analysis, the client reached a satisfactory settlement;
  • Acted for a client in filing an unfair competition lawsuit against an infringer’s business name squatting. After in-depth research on the background and analysis of previous lawsuits, we summarized the major difficult points and made a breakthrough following the large amount of work we had undertaken. The Court finally held that the client had a high market reputation in the catering industry when the defendant was established. Based on this, the Court held that without any reasonable explanation, the defendant’s act of registering a company name similar to the client’s well-known registered trademark was malicious and took advantage of the reputation of the client's well-known "Eleme" trademark, and that this had caused confusion and misunderstanding among relevant public. Based on the aforementioned, the Court has supported our claims and required the defendant to change the name of the company, and to compensate the client for part of the reasonable expenses incurred in defending its rights;
  • Acted for a client in handling a series of copyright infringement lawsuits against the unauthorized use of animations on the defendant’s educational application software. In this case, the infringer published more than two thousand infringing videos in their software. We designed the comprehensive strategy for the client on IPR protection and guided them in notarizing all the infringing contents. According to the client’s budget and demands, we filed lawsuits in batches according to the tailored strategy and received favourable decisions;
  • Acting for a leading domestic textile trading company, which as an OEM manufacturer, was commissioned by a European company to produce clothing products and export them to their client overseas. The batches of clothing in dispute were imported into China by a third-party company, and the domestic trademark squatter had filed several complaints with relevant authorities and also commenced lawsuits against our client and the importer in several locations. The claimed amount of compensation was more than USD3 million. After being entrusted by the client, we conducted detailed legal searches and in-depth analysis, formulated a tailored coping strategy, and assisted the client in collecting a large amount of evidence. Finally, with the effort of all parties, the domestic trademark squatter reached the settlement agreement with the European company, and the result favoured our client;
  • Advised and acted for many other Fortune 500 Companies in trademark, domain name, copyright, and unfair competition cases. Through strategy design, negotiation, Cease & Desist Letters, and effective follow-up, not only were many disputes solved at an early stage, but costs were saved for clients.

Education

  • Lanzhou University, B.A., LL.M.
  • London University, Common Law Training

Awards and recognition

  • China Top 15 IP Lawyers – Asia Legal Business (ALB) China, 2020
  • China IP Experts – Asia IP China, 2020
  • The World’s Leading Trademark Professionals – World Trademark Review (WTR 1000), 2020-2021
  • World’s leading trademark lawyers – Who’s Who Legal, 2017, 2018 and 2020
  • China’s Top100 Lawyers – China Business Law Journal, 2016-2019
  • Leading Lawyers of China on Dispute Resolution, Litigation, and Intellectual Property –AsiaLaw Profiles, 2013-2018
  • Recognised as Leading Lawyer: IP and shortlisted as Rising Star: IP – China Law & Practice, 2014
  • Deals of the Year – China Business Law Journal, 2013
  • Recognised IP lawyer – Legal 500 China, Managing Intellectual Property (MIP) and Global Arbitration Review

Admissions

  • PRC

Publications

  • Writing for the “IP Protection” Column of the China Business Law Journal regarding IP Protection Strategy in China since 2016
  • Navigating the Well-Known Maze in China, INTA Annual Meeting Daily News, May 2015
  • Finding the Connecting Point, Managing Intellectual Property (MIP), April 2015
  • How can Trademark Recoding Affect the Bona Fide Third Party, Asian Legal Business (ALB), August 2014
  • Protecting Your Brand under the New Rules, Managing Intellectual Property (MIP), July 2014
  • Moving Fast under New China’s Trademark Law, INTA Annual Meeting Daily News, May 2014
  • Determination of Joint and Several Liability for Infringement in Trademark Infringement Cases, China Business Law Journal, November 2013
  • Legal Issues Existing in Foreign in Foreign-Related Trademark Licensing, China Business Law Journal, September 2010

Memberships

  • International Trademark Association (INTA)
  • China Britain Law Institute (CBLI)

Languages

  • Chinese
  • English