Australasian Lawyer: A Federal Court case led this mdp Law associate to understand why the devil is in the details

Jian Hui Gu believes that lawyers are “like artists, designers, and creators”

Trademark prosecution specialist Jian Hui Gu got her first taste of IP law as a university
student while interning with a law firm acting for a fashion house involved in a trademark counterfeiting case. The idea of working with recognisable brand names drew her to the field, and today, Jian is so aware of designs and brands, she can even tell when a logo’s font has been changed.


Jian believes that in an environment where tech organisations have so much value, IP
needs to be protected more effectively than ever as they generate excellent opportunities for growth. While working on a recent trademark enforcement dispute litigation that went to Federal Court, she came to see how a single clause in a trademark registration can impact an entire business.

In this interview, Jian talks about the challenge of starting with a new firm in the midst of the pandemic, the benefits of working in a boutique firm like mdp Law and developing
memorable, robust and creative solutions for clients.

What made you choose a career in law?
I was first exposed to intellectual property law while interning at a law firm that
represented a fashion house in a trademark counterfeiting case during my second year of university. I like the fact that trademarks are so recognisable, and the work involves
names that are so familiar to us. I have become much more aware of how a particular design or brand looks, even down to a minute change such as the logo’s font. Being an intellectual property lawyer gives me first insight into inventions and novel designs. I previously handled the designs portfolio of a renowned Australian furniture company. Reviewing their drawing plans and figuring out how each part of furniture fits was fascinating.
What’s your favourite part of the job?
I learn something new every day, not only about the law itself but also about business,
society, and the world. The most interesting aspect of working in law is the people – from the creative artist who has just gotten his first project with a big brand to a startup owner expanding his business overseas and the trillion-dollar company’s counsel requiring strategic enforcement plans. Working in law, I get remarkable insights into human nature, learn to read and understand people, and can better support their business as a result.
What is the most memorable case you’ve taken on/been involved in?
Because I specialise in trademark prosecution, there is no one “case”; however, the
achievement I am most proud of thus far is managing the portfolios of some of the most
valuable and reputable brands in the world and taking on the logistical and technical
challenges of their global presence.
I was recently involved in a Federal Court trademark enforcement dispute litigation case where a single clause appearing on a trademark registration could have determined the future of the parties’ business. As a result, I truly learned the significance of the phrase “the devil is in the details.”
What is going on at the firm? Are there any new programs and initiatives that you’re particularly interested in?
We are currently reviewing our existing IP and technology law practice to evaluate how we can pivot to prepare the practice for future expansion and business development. I am delighted to be part of that.

What has been your proudest accomplishment in the last year or so? Thankfully, navigating remote working is not new for me, as I worked remotely for my
previous firm in Singapore while undertaking cross-qualifying studies in Australia.
However, I started my new job at mdp Law amid a pandemic and was nervous about what to expect. Working remotely does require extra effort to build relationships with
colleagues.
There were times when I felt that training or learning certain aspects of the job would
have been easier or faster if we were meeting face to face. I did not meet most of my
colleagues in person until after six months or so, and while we had been communicating
through Microsoft Teams or emails, I feel I know them much better after meeting them in person. I enjoyed collaborating with my colleagues on an article about the artist Banksy and his recent copyright challenge, and assisting clients such as MaxiTRANS, Loreto and CAPI with their IP matters.
What should the profession and law firms focus more on?
I find working in a boutique firm to be more rewarding, personally. Working in a smaller,
personable environment fosters the ability to have close working relationships with all
staff, not just those in my immediate team. In addition, the opportunity to have greater
involvement in key decisions, such as business development, and working on a wider
variety of matters creates more engagement which is beneficial for lawyers and their
clients.
What are the challenges you expect in your practice, and in the business of law in general, going forward?
There is a need for lawyers to look for innovative ways to assist clients in protecting their businesses, beyond the traditional applications of IP law. In the current environment where tech companies are now the most valuable enterprises in the world, the importance of protecting IP presents fantastic growth opportunities. It has also become increasingly important for lawyers to keep updated with best practices, legal and industry trends.
The law is not black and white, and I enjoy navigating the in-betweens to find the best
possible balance in a situation. In some ways, lawyers are like artists, designers, and
creators. Someone once told me that if I can think out of the box and come up with a
robust, creative solution for the client, one that surprises them, they will always
remember and come back to me.
What are you looking forward to the most in the coming year?
Since joining mdp Law in May 2021, I have taken on a wider array of work, including
writing opinion articles, commercial contracts, planning law, technology law and IP
litigation. I am especially interested in IP litigation and technology law, as they are closely linked to creativity, art, and innovation, which is where my passion lies.