Hui Huang

Practice Areas

Dr. Huang Hui is a Partner at Wanhuida Intellectual Property and a Member of the firm’s Management Committee. Dr. Huang is a multi-faceted intellectual property counsel with stellar academic credentials on China’s trademark legislation and practice and a veteran lawyer who represents clients in all levels of Chinese courts up to the Supreme People’s Court in a wide variety of intellectual property litigations, some of which have become landmark cases.

Career

Prior to joining the firm, Dr. HUANG served 12 years at the State Administration for Industry and Commerce, where he gained a profound understanding of the lifecycle of trademark proceedings both in theory and in practice. Fascinated by the intellectual property law, he studied international industrial property law and graduated from the Center of International Study of Industrial Property (CEIPI), Robert Schuman University (later known as the University of Strasbourg) in France. He then conducted academic research on the protection of well-known trademarks at the China Academy of Social Sciences ("Legal Protection of Well-Known and Famous Marks") (Law Press, 2001), where he studied under Professor ZHENG Chengsi, the nation’s pioneer intellectual property expert and was finally awarded the first J.D. on trademark Law in China. In 2018, Dr. HUANG was awarded his second doctorate by the University of Strasbourg.

Ever since joining the private practice in 2002, Dr. HUANG has been prosecuting and litigating IP rights, fighting for the clients in their most intricate matters before the nation’s IP administrative agencies and judiciary, protecting and defending client’s interests and helping advancing China’s legal fronts.

On account of his expertise in the Trademark Law, Dr. HUANG has been vigorously involved in the initial drafting and subsequent amendments to China’s major trademark-related laws, regulations, judicial interpretations, as well as regulatory documents. He was also invited to contribute to the formulation of China’s “National Trademark Strategy”.

Professional Memberships

Chair of the Special Committee on Piracy and Counterfeiting of AIPPI Chinese National Group (2015-2016 term)

Chair of the China Trademark Office Subcommittee of the INTA Trademark Office Practices Committee (TOPC) (2014-2015 term)

Expert of the State Intellectual Property Strategy Think Tank

Expert of Beijing High-profile Intellectual Property Talent Pool

Member of the expert panel of Zhongqi Trademark Verification Center

Council member of China Intellectual Property Society

Vice Chairman of Beijing Justra Intellectual Property Center

Arbitrator of Domain Name Dispute Resolution Center of CIETAC

Adjunct professor, IP Law School of Renmin University of China

Guest professor, Center of International Study of Industrial Property (CEIPI) of the University of Strasburg

Guest professor, Law School, Beijing Foreign Studies University

Member of the Expert Panel of the “MOC Helping Center for Protecting Enterprise Intellectual Property Rights Overseas”

Member of the Professional Advisory Board of Beijing People’s Procuratorate No. 1 Branch

Adjunct professor, School of Juris Master, China University of Political Science and Law

Adjunct professor, Yantai University

Professor of Tianjin IPR Institute of Vocational Education

Adjunct researcher, IPR Research Center of Southwest University of Political Science & Law

Contract research fellow of the IPR Research Institute of Shenzhen University

Publications

Dr. HUANG is also a prolific writer. He authors or co-authors a dozen IP-related publications, including “L’IMPACT DE L’USAGE SUR L’ÉTENDUE DE LA PROTECTION DES MARQUES: ÉTUDE DE DROIT COMPARÉ CHINE – UNION EUROPÉENNE” (2010-2018), “Trademark & Unfair Competition Cases in China”, Trademark Chapter of the “Study on Global Intellectual Property Developments” (2019 & 2020 Edition), “Zheng Chengsi IP Anthology - Trademark & Unfair Competition”, “Trademark Law” (Trademark Law textbook used by most Chinese law schools) (1st , 2nd and 3rd Edition), “Legal Protection for Well-known and Famous Marks” (Key project of China Academy of Social Sciences), Trademark Section of “Intellectual Property in European Union” (the first systematic introduction of EU IP legislation in Mainland China) (1st and 2nd Edition), as well as the “Trademark Laws of Twelve Nations”. He translates the “Intellectual Property Code of France” (Legislative Part) (1st and 2nd Edition) and has been the executive editor of “China Trademark Report” since 2003. He is also the co-author of the “Q&A of the WTO Agreement” and the “Trademark Litigation Law Manual”, member of the editorial board of “China Trademark Magazine”, as well as the contract editorial board member of “Judge’s Analysis on Difficult Trademark Cases Handled by Beijing Courts”. He has also authored or co-authored scores of treatise published in Chinese, English and French, including “About Use, Bad faith and Well-known trademarks in the Context of the Fifth Amendment to the Trademark Law”, “Supreme People's Court clarifies conditions for prior trademark use defence” (WTR Daily, 2019), “Fourth revision of China’s Trademark Law” (IAM & WTR, China: Managing the IP Lifecycle 2019/2020), “Tackling OEM infringement in China” (INTA Daily News, 2016) and “Is OEM use trade mark infringement?” (Managing Intellectual Property, China IP Focus, 2015).

Work Highlights

Dr Huang has been instrumental in securing favourable results for the firm’s clients in quite a few high-calibre cases, some of which has been selected by the China Supreme People’s Court (SPC) for its legal significance:

Beijing High Court Top 10 Trademark Cases (2022): Representing the client in successfully revoking the registration of “千页豆腐” (thousand-layer tofu in Chinese) trademark registered by a Chinese food manufacturer in class 29 in 2013. The case went through revocation proceeding, two instances of administrative court proceeding and ended with the affirmation of the Beijing High Court that the trademark has degenerated into a generic name of tofu and tofu varieties when the revocation application was filed. The decision is of empirical significance for clarifying the parameters in assessing the genericide of registered trademarks.

SPC Annual 50 Exemplary Cases (2021): Representing a major player in wedding photograph shooting business in reversing unfavourable CNIPA and court decision invalidating its registered trademark “米兰” (Chinese transliteration of “Milan”) in class 41. The court of appeal found that the trademark had acquired secondary meaning through extensive use and is unlikely to cause confusion, thus ruled to maintain the registration.

Top 10 IP Cases of Shanghai Courts (2021): Representing Fendi in prevailing in the appeal and re-adjudication of a trademark infringement and unfair competition proceeding against an unaffiliated retailer selling grey market Fendi goods and using Fendi trademarks in business operation and on the signage. The re-adjudication decision rejecting the fair use defence is expected to help set a precedent as to how business should be promoted in the context of parallel imports.

SPC Annual 50 Exemplary Cases (2019): Representing United Family Healthcare (UFH) in filing a trademark infringement and unfair competition suit against a copycat, obtaining favourable decisions from the first and second instance courts, which affirmed infringement for defendant’s using of UFH’s Chinese word mark “和睦家” and ordered damages of RMB 300,000. UFH filed for retrial, requesting SPC’s affirmation on trademark infringement and unfair competition for defendant’s using of copycat device mark, seeking court mandated name change of the defendant and damages of RMB 3 million. The SPC upheld all plaintiff’s claims.

SPC Top 10 Cases (2017): Representing the Commercial Press in bringing a trademark infringement and unfair competition action against an infringer that published copycats of the client's best-selling dictionary, obtained a favourable court decision, the recognition of the well-known status of the client's unregistered trademark, an injunction and damages of RMB 3 million.

SPC Annual 50 Exemplary Cases (2017): Representing a major Keemun tea maker in invalidating the registration of Keemun Black Tea certification trademark, which erroneously designated Qimen County as the exclusive growing region of Keemun Black tea. The court of second instance and the re-adjudication court (SPC) found the registrant breached the good faith principle and upheld the invalidation decision.

SPC Gazette Case (2017): Representing China Spider King Group in the opposition review administrative proceeding, obtained favourable court decisions and the Supreme Court’s affirmation that the goodwill built up by a market player may be shifted among or extended to a variety of carriers that may serve as the source identifier of its goods or services, but there is no alternative form of trademark extension other than trademark renewal.

Languages Spoken

French, English & Chinese

Education

Awards