Strategic Breakthroughs and Legal Victories: Tracy Shen’s Trademark Defense and Classic Case Insights

Source: IPR Daily

In the fiercely competitive commercial landscape of today, intellectual property (IP) serves as the "lifeblood" of enterprises, embodying core assets and valuable wealth. Within this challenging and opportunity-filled field, Tracy Shen, a partner at Chang Tsi & Partners, is leading the way with her exceptional expertise and fearless courage. Recognized as one of LEGALBAND’s Top 15 Female Lawyers in China for 2025, Tracy Shen’s profound expertise and outstanding contributions in the IP field highly praised by the industry.

With nearly twenty years of practice, Tracy Shen has developed a unique style characterized by "holistic thinking to mitigate risks, precise strategies to break through challenges, and decisive actions to defend rights and interests," assisting numerous domestic and international companies in achieving brand protection and market clearance. Her core philosophy of "driving legal actions through commercial strategy" has led to numerous successes in trademark prosecution, enforcement, and strategic planning.

Case 1: Breaking Through with Litigation, Achieving Multiple Goals of Client through Comprehensive Strategy

Ambiq Micro is a US-based high-tech company producing and selling microcontrollers, with its brand Ambiq Micro having significant recognition and influence in the semiconductor industry. The plaintiff, Ambitmicro Technology Limited, registered in Hong Kong by a domestic individual, had no actual business operations or legitimate business address. After its establishment, the plaintiff immediately applied for the registration of the "Ambitmicro" trademark in Class 9, covering "computer storage devices; computer peripheral devices," and obtained the registration on February 7, 2017. Subsequently, the plaintiff continuously sent C&D letters to the defendant Ambiq Micro and its distributors and investors, even fabricating administrative penalties against one of the defendant's distributors. Tracy and her team representing Ambiq Micro responded to the plaintiff’s C&D letters and administrative complaints, thwarting the plaintiff's intentions to profit through non-litigation means. The plaintiff then filed a trademark infringement lawsuit in the Shanghai Pudong New Area People's Court, demanding the defendant cease infringement and compensate for economic losses totaling RMB 400,000 (USD 55,340).

Upon receiving the client's case request, Tracy led her team to quickly formulate a comprehensive strategy. On one hand, they filed a trademark registration application to pursue trademark registration while initiating invalidation proceedings against the plaintiff's registered trademark to clear registration obstacles and eliminate risks of use. On the other hand, they collected evidence of prior use to establish prior rights. Simultaneously, they actively responded to the plaintiff's challenges by investigating the plaintiff’s company registration and actual operations, collecting evidence of bad-faith in its trademark registration and enforcement, replying to C&D letters, guiding distributors to respond to complaints or warnings, communicating with regulatory authorities, and preparing for potential litigation. With the comprehensive strategy in place, upon the plaintiff's lawsuit, Tracy's team utilized the collected prior use evidence to demonstrate that "Ambitmicro" was used by the defendant in its company name, domain name, and products prior to the plaintiff's registration. The plaintiff, being a shell company with no actual business operations, registered and enforced the trademark out of malice, thus their lawsuit should not be supported. After multiple rounds of evidence presentation and cross-examination, the court ultimately recognized the defendant's prior use right defense and deemed the plaintiff's trademark registration as having improper purposes, dismissing all of the plaintiff's claims. Using the favorable judgment, Tracy's team successfully invalidated the plaintiff's trademark, ultimately securing the client's trademark registration.

Through this comprehensive strategy, Tracy’s team effectively safeguarded the client's commercial interests and brand image, achieving multiple goals of eliminating operational risks and securing protectable rights. This case was selected as one of the "Top Ten IP Judicial Protection Cases of Shanghai Courts in 2019" and "Top Ten Cases of IP Judicial Protection of Pudong New Area People's Court."

Case 2: Defending Through Offense, Resolving Trademark Infringement Challenge in the Early Stage of Litigation

This case exemplifies how Tracy’s team, representing a foreign defendant, forced the plaintiff to withdraw the lawsuit before trial through effective litigation strategies, successfully resolving the client’s trademark infringement challenges.

Upon learning of the trademark infringement lawsuit, the defendant company contacted Chang Tsi & Partners. When Tracy's team took over the case, only a few weeks remained before the trial, making time critical. The team swiftly initiated work, verifying and retrieving case background information and facts, thoroughly analyzing case details, evaluating the legality and legitimacy of the plaintiff's claims, and comprehensively assessing the legality of the alleged infringement.

After a thorough review, Tracy's team summarized the plaintiff's claims, relevant facts, and legal basis, identifying all possible defenses. While formulating the defense strategy, they advised the client to take proactive measures. In addition to non-infringement defenses, they initiated administrative actions to invalidate the plaintiff's trademark and filing counterclaims or separate lawsuits against the plaintiff's trademark squatting and abuse of litigation rights. To ensure the effective implementation of the defense strategy, Tracy's team quickly established effective communication with the presiding judge, thoroughly explaining the background of the dispute, revealing the plaintiff's abuse of litigation rights, and filing a motion to add a third party, successfully securing a postponement of the initial trial, thus gaining more preparation time for the client. Following the team's submission of the third-party addition motion and in-depth communication with the court, the plaintiff chose to withdraw the lawsuit. This case's litigation response strategy was validated, effectively neutralizing the plaintiff's litigation offensive without a substantive trial, thus safeguarding the client's interests.

Case 3: A Combo of Administrative Complaints, Criminal Action, and Civil Lawsuits, Severely Combat Counterfeits

This case involved counterfeit products in the industrial goods sector. Tracy's team employed a combination of administrative complaints, criminal reports, and civil lawsuits to severely combat the infringer's illegal activities and effectively protect the rights holder's interests. The case received high praise from the court, with Leshan Legal News reporting on it, commending it as "a reflection of enhancing the rule of law business environment and upholding fair justice, showcasing the power and authority of the rule of law." The case was widely publicized and featured on official media platforms, including the official WeChat accounts of Leshan Intermediate People's Court and Leshan Legal News, as well as Sichuan Legal Daily.

Administrative Action: In 2020, Illinois Tool Works Inc. (ITW) discovered a large number of counterfeit DEVCON products during a visit to an end user in Sichuan. Tracy's team, entrusted by ITW and its local company, conducted meticulous analysis and planning, formulated an action plan, conducted investigations and evidence collection, and filed complaints with the local AMR. Through close communication and cooperation with the AMR, the source of the counterfeit products was gradually uncovered.

Criminal Action: As the case amount reached the criminal filing standard, Tracy's team pushed the case to be transferred to the public security bureau for criminal investigation. By assisting the police in organizing the case's context and providing legal and factual support, the case was eventually transferred to the procuratorate for prosecution. After court trial, the infringer was convicted of selling counterfeit registered trademark goods, sentenced to one year of imprisonment with one and a half years of probation, fined, and the illegal proceeds were confiscated.

Civil Action: To further investigate and hold accountable the upstream sources of counterfeit products, ITW, following Tracy's team's advice, continued to dig deeper into the case, initiating civil lawsuits against all infringers in the infringement chain. After two trials, in April 2024, Leshan Intermediate People's Court found multiple infringers liable for infringing ITW and Devcon's DEVCON series trademarks, ordering the defendants to cease infringement and compensate the plaintiffs for losses and reasonable expenses totaling RMB 310,000 (USD 42,900).

Case 4: Comprehensive Strategy to Combat Trade Name Infringement and Trademark Squatting

This case is a typical example of Tracy's team addressing trademark infringement and unfair competition involving the registration and use of infringing trade names.

The plaintiff, Tyco, is a global leader in fire protection system equipment manufacturing, with its products entering the Chinese market since 1996, enjoying high recognition. The defendant, Dongguan Tyco Fire Equipment Co., Ltd., established in 2014, has been using, copying, and imitating Tyco's prior registered trademarks and trade names for commercial operations since its inception. The defendant not only registered and used "Tyco" as its trade name but also extensively used "Tyco," "TYKO," "Tyco Yong'an," "Tyco Fire," "Tyco Guangxiao," "Tyco Brand," and other marks on products, business premises, websites, and online stores. Additionally, the defendant falsely claimed on its promotional pages to have "inherited the world’s top 500, industry leader Tyco Security," attempting to mislead the public and cause market confusion.

Upon accepting the commission, Tracy's team formulated a comprehensive strategy. They initiated trademark opposition and invalidation proceedings against the infringer's identical and similar trademark registrations. They conducted thorough investigations and evidence collection against the infringer's infringing trademark and trade name usage. After evidence fixation, they sent C&D letters to the infringer, and after multiple rounds of communication and warnings were ineffective, they represented the Tyco in filing a civil lawsuit with the Dongguan First People's Court. To ensure smooth execution and litigation effectiveness, they applied for property preservation, successfully freezing nearly RMB 2 million (USD 276,700) of the defendants.

Through those legal actions, the infringer's trademarks "TYKO," "Tyco Guangxiao," "Tyco Yong'an," and others were either opposed or invalidated. The court ultimately ordered the defendant to compensate the plaintiff RMB 1.5 million (USD 207,525) and recognized the high reputation of the plaintiff's "Tyco" and "TYCO" trademarks. This case effectively stopped the infringement, protected the client's brand rights, and provided significant support for subsequent rights protection through trademark prosecution, property preservation, evidence collection, and civil litigation.

Case 5: Multi-Pronged Approach, Comprehensive Governance

This case is a typical example of Tracy's team representing the client in trademark rights protection on the Pinduoduo platform, securing punitive damages of nearly RMB 2.6 million (USD 360,000).

The client, O2 PARTNERS, LLC, is a globally renowned supplier of shoe insoles. During the long-term rights protection service for the client, Tracy's team noticed a large number of counterfeit ORTHOLITE products being sold on online platforms like Pinduoduo, with product quality and prices significantly lower than the client's products, severely impacting the client's brand reputation and market share. After thorough investigation and analysis, Tracy's team decided to lock onto the defendant in this case and persuaded the client to initiate this lawsuit. The defendant not only applied for trademarks highly similar to the client's but also used multiple identical and similar trademarks to promote and sell counterfeit shoe insoles.

Upon accepting the commission, Tracy's team swiftly conducted fact investigation and evidence collection, and through trademark invalidation proceedings, civil litigation, and out-of-court negotiations, provided a comprehensive litigation strategy from both offensive and defensive aspects. To mitigate further damage caused by the defendant's ongoing infringement, they promptly stopped the defendant's infringement actions during the litigation through measures such as defendant entity selection and property preservation application. To prevent the defendant's defense of "use of registered trademark," they initiated invalidation proceedings against the defendant's OROTHERS trademark before the lawsuit and invalidated the defendant's trademarks in the subclass of shoe insole during litigation. Regarding damage compensation claims, Tracy's team conducted extensive information collection and detailed calculation models, establishing a solid foundation for punitive damages.

Shanghai Xuhui District People's Court issued a first-instance judgment, fully supporting the plaintiff's claims, recognizing the high recognition of the "ORTHOLITE" trademark in the shoe and shoe material fields, and determining that the defendant's use of multiple trademarks constituted trademark infringement. The court applied one-time punitive damages, awarding the client nearly RMB 2.6 million (USD 360,000) in economic losses. After the first-instance judgment, the defendant did not appeal, and the case has now entered the execution stage.

Protecting Innovation with Professional Excellence

In the battlefield of trademark rights, Tracy Shen consistently employs the foresight of a strategist with the decisiveness of a practitioner, building dual protective walls of law and commerce for enterprises. From multinational giants to emerging tech companies, she has proven through numerous classic cases that true trademark strategy begins before risks arise and culminates in decisive courtroom victories.

Tracy Shen
Chang Tsi & Partners
Partner | Deputy Director of the Management Committee
tracyshen@changtsi.com
+86 10 88369999

As a partner and Deputy Director of the Management Committee, Tracy Shen directly manages all foreign-domestic IP business and project teams. Tracy Shen graduated from Renmin University of China and pursued further studies at Emory University School of Law. With nearly 20 years of deep expertise in intellectual property (IP) law, her practice spans the entire spectrum of IP rights prosecution, enforcement, and dispute resolution. She is particularly skilled in providing comprehensive trademark protection strategies, infringement investigations and evidence collection, civil litigation, non-litigation IP dispute resolution, trademark criminal enforcement, and a wide range of specialized dispute resolution services.

Clients served by Tracy span various industries, including industrial manufacturing, software & internet technology, apparel, building intelligence and security, banking and finance, commercial wholesale and retail, automotive and chemical, building products and design, sports & entertainment, and medical devices. Her profound professional knowledge and exceptional work ethic have not only earned the trust and praise of numerous domestic and international clients but also garnered high regard from colleagues and peers in the legal community.

Source: IPR Daily