Mr Shuhua (Mark) Zhang > Wanhuida Intellectual Property > Beijing, China > Lawyer Profile

Mr Shuhua (Mark) Zhang

86-10 6894 8030 zhangshuhua@wanhuida.com

Position

Career

Mr. Shuhua (Mark) Zhang is a Partner and an attorney-at-law at Beijing Wanhuida (Shanghai) Law Firm. Mr. Zhang has worked as an IP lawyer since 1998. He has rich experiences in representing foreign clients enforcing various kinds of IP rights in China, particularly for patents and trademarks. He also advises clients on building up and maintaining IP portfolios and developing IP protection strategies.

Over 20 years, Mr. Zhang has worked over thousands of IP enforcement cases for foreign clients, winning many landmark cases and advanced clients’ interests in China.

A select list of Mr. Zhang’s work includes:

• Winning for a Japanese baby care giant a patent infringement suit, obtained injunction and sizable damages, and successfully defending the validity of the client’s patents against rounds of patent invalidation action initiated by the defendant.
• Winning for French client Groupe SEB the UNIFAB Award in the “Best court decision” category for the culmination of years’ joint efforts including exhibition enforcement, customs interception, administrative enforcement and series of civil proceedings to protect one of Groupe SEB’s most disruptive innovations, Actifry fryer in China. The joint action put an end to the infringement of the client’s invention and secured a total of 4 million damages.
• Representing a German garden tool manufacturer in bringing an incidental civil action during criminal proceedings against the counterfeiter before the Court of Yuyao in Zhejiang Province, which adopted all the recommendations made by the Public Prosecutor and pronounced sentences of prison from 2 to 3 years, accompanied by probation periods. The client was awarded RMB 500,000 damages in civil proceeding. The case has been selected as one of the Exemplary IP Cases of Zhejiang Procuratorate in 2021.
• Winning for a French client a patent infringement suit before the Supreme Court. The case concerns an invention patent over the electric hairbrush. By conducting extensive search, citing and analysing precedents, we managed to convince the court that the protection scope of claims shall be ascertained by making reference to description and drawings.
• Winning for a French client in a patent infringement lawsuit before the Guangzhou Intermediate Court and the Guangdong Higher Court. The case was selected by the Supreme Court as one of the 50 typical cases of 2014 for its instructive claim construction of functional claims.
• Representing a foreign client in a patent infringement lawsuit before the Guangzhou Intermediate Court, winning the first case from the Court that awards user fees for exploiting published applications.
• Representing an American client in a patent infringement lawsuit in the Wenzhou Intermediate Court, winning the lawsuit as well as obtaining the first preliminary injunction ever issued by the court.
• Winning for a French client in a patent infringement lawsuit before the Ningbo Intermediate Court and having Ningbo Customs to intercept large quantities of infringing products. The case was selected as QBPC Best Practice Case of 2012.
• Winning a patent infringement lawsuit before the Guangzhou Intermediate Court and the Guangdong Higher Court following a successful administrative enforcement of the patent in the Guangzhou Fair. The case was selected as QBPC Best Practice Case for 2011.
• Winning for a German brand owner a trademark infringement lawsuit, proving repeat infringement and obtaining a large damage award of RMB3.52 million based on liquidated damages undertaken by the repeat infringer.
• Winning a trade dress infringement lawsuit before the Hangzhou Intermediate Court for a German client. The decision was China’s first on color trade dress infringement.
• Winning back for a client a strategic trademark from a trademark squatter and removing the obstacle for the client’s large OEM business in China. The case was significant in its use of prior copyright in resolving trademark disputes.
• Winning for an American brand owner a criminal prosecution of a multinational network of counterfeiting business. The case was listed as significant cases of the year (The Annual Case) by the Ministry of Public Security and by the State Administration of Industry and Commerce, and the case was selected as QBPC Best Practice Case for 2004.
• Representing a foreign SEP patent owner over patent protection matters, including infringement litigation and negotiations;
• Representing an Australian medical device company in defending series patent infringement litigations initiated by a Chinese competitor before Shanghai IP Court, and in filing invalidation proceedings against the related patents.

Mr. Zhang has also published dozens of articles covering a broad spectrum of issues from evidence rules, calculation of damages, conflict of IP rights, construction of patent claims to domain name arbitration.

Mr. Zhang has been rated Leading Lawyer in the practice of intellectual property by premium legal directory “Asialaw Profiles” for the year 2016. He has also entered the list of “Leading Intellectual Property Lawyers” in China for the year 2015 released by “China Law & Practice”. Mr. Zhang is one of the Top 15 IP Lawyers in China rated by “The Asian Legal Business Magazine” and a Recommended Lawyer in the category of Intellectual Property listed in The Legal 500 Asia Pacific 2016 editorial. He has been listed as a recommended individual on the contentious front by IAM since 2020. He was elected Chairman of Anti-piracy and Anti-counterfeiting Committee – AIPPI China Branch for the 2021 – 2023 term.

Languages

Chinese, English

Memberships

ACLA, New York bar

Education