INTA turns focus to Asia with Singapore annual meeting24 February 2023
The International Trademark Association (INTA) has officially opened registration for the 2023 Annual Meeting Live+.
China: Notable Proposed Amendments to the PRC Trademark Law in 202323 February 2023
On January 13, 2023, the China National Intellectual Property Administration (CNIPA) released draft amendments to the PRC Trademark Law for public comment until February 27, 2023.
Hong Kong lawmakers pass Copyright (Amendment) Bill10 December 2022
Hong Kong lawmakers pass Copyright (Amendment) Bill
BIP Asia: ASEAN supports IP commercialization and technology transfer06 December 2022
In the recently concluded 12th Business of IP Asia Forum held at the Hong Kong Convention and Exhibition Centre on December 1 and 2, Rowel Barba, chair of the ASEAN Working Group on Intellectual Property Cooperation (AWGIPC) and who is also director general of the Intellectual Property Office of the Philippines (IPOPHL) shared that under the current ASEAN IPR Action Plan 2016-2025, ASEAN has several initiatives supporting IP Commercialization and Technology Transfer.
Hong Kong legislators push to remove the Queen from local laws06 December 2022
Hong Kong legislators have called into question why colonial-era laws remain on the city’s books, and why such laws continue to refer to “the Queen”. Hong Kong was “reunified” with mainland China in 1997.
Meta Adds New IP Tools03 November 2022
Meta has launched improvements to its Brand Rights Protection Manager Tool Now, it is adding more functionality to the tool. Will this protect and secure more users and brands?
WIPO-IPOS IP For Innovation Awards 202220 September 2022
Winners were announced during the opening of IP Week @ SG 2022 on September 6, 2022
Goodman opens one of Hong Kong’s largest data centre and technology hubs02 September 2022
Goodman has opened its Goodman Tsuen Wan West precinct. This revitalization project has transformed an old textile factory site into one of Hong Kong’s largest data centre and technology hubs, providing the infrastructure to power Hong Kong ahead in the digital economy.
Hong Kong joins hands with Japan and South Korea to combat IP rights infringement02 June 2022
As Hong Kong witnesses a growing popularity of Japanese and South Korean IP contents, as well as rapid technological developments in recent years, it is crucial to strengthen the mutual cooperation among the organizations protecting IP rights in these jurisdictions. Thus recently Hong Kong Customs has signed a Memorandum of Understanding (MoU) with the Content Overseas Distribution Association (CODA) in Japan and the Copyright Overseas Promotion Association (COA) in South Korea respectively to pledge further collaboration in combating IP rights infringement.
Vink, Tang urge INTA attendees to seek out innovation02 May 2022
Brands are always big business at the International Trademark Association’s Annual Meeting Live+, so it was no surprise when much of the meeting’s open ceremonies were devoted to what brands can do in today’s world.
Cryptocurrency, CBDC need to straddle data privacy and financial compliance, says finance executive25 March 2022
There is a real tension between data privacy and financial compliance.
People and places
While various new forms of copyright works are emerging, especially on the internet as technology advances, Hong Kong’s related laws are often criticized to be too outdated to catch up with such innovations. Fortunately, this might be about to change, as a new amendment to the Copyright Ordinance is expected to be submitted to the Legislative Council in 2022.
In 2021 the Hong Kong government launched a publication consultation on updating the Copyright Ordinance, after two attempts to amend the ordinance in 2011 and 2014, which were rejected at the legislative council due to concern about freedom of creative expression. The latest consultation was based on the content of the 2014 amendment, which is largely related to copyright protection in the digital environment. For example, the amendment introduces a technology-neutral communication right for copyright owners to communicate their copyright work to the public through any mode of electronic transmission, such as streaming. It also includes a safe harbour provision to limit the legal liabilities of online service providers for copyright infringement occurring on their service platforms. On the other hand, the consultation paper also raised the issue of artificial intelligence and copyright.
Another key development in Hong Kong’s IP environment is that the Madrid Protocol is expected to be implemented in Hong Kong in 2022 or 2023. It will allow trademark owners in Hong Kong to register their trademarks worldwide via a single international registration, whereas global trademark owners can also register their trademarks for protection in Hong Kong more easily.
Global law firm Akin Gump Strauss Hauer & Feld is notable in Hong Kong for its work in litigation and arbitration and in international trade. Ing Loong Yang joined the firm in early 2022; he has extensive international arbitration and complex commercial litigation experience in Asia, particularly in relation to cross-border disputes involving parties in greater China. He handles complex, sensitive matters involving shareholder and joint venture disputes, technology and other licensing disputes, commercial criminal defense, FCPA investigations, private equity, as well as compliance and regulatory matters.
Swedish law firm Awapatent operates its Asia units out of AWA Asia in Hong Kong and AWA Asia’s wholly-owned Chinese IP consultancy, AWA IP (Beijing). Ai-Leen Lim serves as the chief executive officer and principal counsel of AWA Asia, and serves mainland Chinese, Hong Kong and international clients with a focus on brand management and social media matters.
Baker McKenzie has offices in Beijing, Shanghai and Hong Kong, and maintains an impressive team of IP specialists backed up by an international network. Isabella Liu is head of the firm’s Asia Pacific IP and technology group, with an expertise in IP matters in the pharmaceuticals sector. The firm was named Asia Pacific trademark firm of the year and Hong Kong patent firm of the year at the 2021 Asia IP Awards.
Barron & Young is an IP specialist located in the Hong Kong Science Park known best for its work in patent and trademark filing and registration, patent specification preparation and for facilitating PCT National Entry to China.
Bird & Bird’s intellectual property group is led by partner Matthew Laight, who is noted for his expertise in both contentious and non-contentious matters in sectors including electronics, pharmaceuticals, communications, IT media, broadcasting and F&B. The firm counts Alison Wong and Christine Yiu among its leading trademark practitioners, Ted Chwu for patent work, and Rieko Michishita for copyright-related matters. The firm was named Asia Pacific patent firm of the year at the 2021 Asia IP Awards.
China Patent Agent (H.K.) Ltd. has a full-service offering incorporating both prosecution and litigation strengths. The firm advises both domestic and overseas clients from its main office in Hong Kong, supported by a network of offices in Beijing, Shenzhen, Shanghai, New York, Tokyo and Munich. Top management includes Jingchao Wang, Shaohui Yuan, Yanfeng Xiong, and Yuhe Wu, who together oversee 560 staff across its network.
Chloe Lee & Co is an IP boutique providing a full-range of IP services covering China, Hong Kong and Macau from the initial identification, protection and registration of IP, through its exploitation and enforcement. It helps both domestic and international clients manage their trademark portfolios by conducting trademark clearance searches and filing or registering their marks in Hong Kong as well as China, Macau and Taiwan. It has also offered advice on IP rights protection and contract needs for clients embarking on NFT and metaverse projects.
Deacons’ IP practice remains one of the best among the city’s firms. It has one of the largest specialist IP teams in Hong Kong, with 11 partners and more than 110 staff in total. The firm has one of the most active trademark registration practices in Hong Kong, being one of the top 3 efilers in Hong Kong for the last 12 years consecutively, as shown by the online rankings of the Hong Kong Intellectual Property Department. It also has a trademark agency in Beijing which allows direct access to the Chinese authorities. The firm was named Hong Kong trademark firm of the year at the 2021 Asia IP Awards.
In November 2015, Dentons became the largest law firm in the world through a merger with Chinese law firm Dacheng, and through other merger deals occurring around the same time. The firm operates 45 offices in China alone. Beijing-based senior partner Mingyue Dun is the key contact for Dentons’ IP and technology practice, having represented clients such as ExxonMobil, Nike and Hennessy & Co. The firm, known by Dentons in Hong Kong and most of the world, is known as 大成 – Dacheng – in China. The firm won Asia Pacific copyright firm of the year at the 2021 Asia IP Awards.
DLA Piper’s intellectual property and technology group encompasses nearly 500 lawyers in over 24 countries, with DLA Beijing managing partner Horace Lam co-heading Intellectual Property and Technology group to provide greater China coverage across Beijing, Shanghai and Hong Kong. The firm has handled all of HSBC’s trademark portfolio management and enforcement work in Hong Kong. Ed Chatterton, who handles IP work with a particular emphasis on matters in Hong Kong and China, is a key contact.
Eagle IP is a specialized patent firm that facilitates the transfer of new technology from the research environment into the market place. The firm boasts a unique combination of U.S. and Chinese patent agents/attorneys who can practice directly before the USPTO and CNIPA. The team covers a full range of technologies such as physics, electronics, computer science, telecommunication, electrical, renewable energies, biomedical and mechanical engineering, material science, life science and chemistry. In addition to Hong Kong, the firm has offices in Macau and Shenzhen.
Long-time Hong Kong lawyer Ella Cheong practices her craft from Hong Kong-based ELLALAN along with managing partner Alan Chiu. The firm, which until June 2020 had been known as Ella Cheong & Alan Chiu, advises on IP enforcement, transactional and commercial IP and internet-related issues, as well as matters concerning entertainment and media, dispute resolution, commercial law and regulatory law. The firm was named Hong Kong copyright firm of the year at the 2021 Asia IP Awards.
The well-respected Cedric Lam runs Eversheds Sutherland’s IP practice in greater China from the firm’s Hong Kong office. Lam, a prominent IP strategist in the region, has more than two decades of experience counselling cross-border, complex, high-stakes intellectual property-related transactions and disputes. Lam is known for his work helping multinational corporations acquire, exploit and enforce their IP rights and trade secrets, as well as implement technology transfer, IP protection, licensing, litigation and anti-counterfeiting strategies. The firm also advises on legal issues affecting advertising, marketing and sponsorship campaigns, including strategy and providing fast copy clearance to ensure advertisements and packaging comply with the relevant advertising codes and regulations, and on data protection laws. It regularly advises on this area of the law, including all data privacy in Hong Kong and Asia, and in relation to cross-border data flows and direct marketing.
The history of Hastings & Co. dates to 1885, when the firm’s founder was admitted as a solicitor in England. The firm itself was formed in 1904. Today, the firm is a forward-looking, full-service firm with a capable intellectual property practice noted for its registration work, opposition work and brand management work, among others. Senior partner Ching Tat Yung primarily deals with IP, banking, corporate, finance and commercial work. Partner Janine Mok heads the firm’s IP department.
Hogan Lovells operates its IP practice out of the Hong Kong, Shanghai and Beijing offices. The firm is the sole Hong Kong member of the Pacific Rim Advisory Council, a strategic alliance of 32 major independent law firms globally. Eugene Low leads the IP practice from Hong Kong and is a key contact for trademark and copyright. Andrew Cobden is a key contact for patent matters.
Located in the Hong Kong Science Park, inCompass IP is well-positioned to draft patent specifications, handle patent and trademark searches, manage portfolios, file applications and to provide a host of other IP services. The firm is led by partners Ewan Bewley, Owen Gee and Yannie Chan. The firm’s lawyers are registered to practice in Europe, the United Kingdom, Australia, New Zealand, mainland China and Hong Kong.
Jones Day maintains strong intellectual property and life sciences practices in Hong Kong, alongside disciplines such as capital markets, dispute resolution, leveraged finance and M&A. Partner Haifeng Huang has extensive experience in courts on and arbitration panels at all levels. He also handles due diligence related to the acquisition of intellectual property assets and negotiates agreements involving the transfer, use, and license of intellectual property. Partner Peter J. Wang leads the firm’s China antitrust and litigation practices and regularly handles complex technology and IP litigation.
While global law firm Kennedys is perhaps best-known for its insurance work, it is also strong in dispute resolution and advisory services. Partner Joanie Ko heads the firm’s APAC Cyber & Data Privacy practice; she also has extensive experience in providing cyber incident response services, advising on data privacy and notification requirements, and the recovery of funds transferred as a result of cyber fraud. She also advises on coverage under cyber policies and cyber policy drafting and enhancements. In May 2022, Nicholas Blackmore was promoted to partner in the firm’s Melbourne office, where his practice covers data privacy, cyber insurance, general commercial and corporate, and technology. He also practices extensively in Hong Kong, where he advises clients on data privacy, cyber risk, technology and intellectual property.
Kwok Yih & Chan is a dynamic Hong Kong-based corporate law firm. Consultant Vivian Poon is key contact for trademark matters; with more than 25 experience in advising multi-national and local clients in brand protection strategies around the world, she is specialized in trademark advisory portfolio work, including auditing and due diligence in commercial transactions. Another key contact for IP is leading practitioner Peggy Cheung, who has more than 30 years of experience on brand protection strategies, complex IP litigation, licensing, franchising, technology transfer, advertising and data privacy laws.
Liu, Shen (Hong Kong) works closely with its Beijing counterpart Liu, Shen & Associates to help clients in obtaining and enforcing their intellectual property rights including patents, trademarks, designs, copyright in China and Asia. Bessie Wong is a key contact focusing on trademark.
As one of the oldest specialist IP practices in Hong Kong, Marks & Clerk continues to be a market leader in the region. The firm is on the go-to list for local and multinationals when it comes to prosecution work. Partner Michael Lin is a key contact for patent issues and Simon Speeks is the firm’s trademark expert. Lin manages the life sciences group of the firm’s Hong Kong and Beijing offices, where he focuses on drafting, prosecution and opinion work.
Mayer Brown was established in 1863 in Hong Kong and has since expanded across Asia with offices in Shanghai and Beijing. Partner and head of the firm’s Asia IP & TMT group Gabriela Kennedy is also co-leader of Mayer Brown’s global IP practice and has extensive experience in technology and data protection issues in China and beyond.
Nixon Peabody CWL was formed from the October 2015 combination between Nixon Peabody and CWL Partners. The firm is now home to more than 40 lawyers who advise on a full spectrum of legal issues for clients throughout the Asia-Pacific region including China, Singapore, Malaysia, Australia, Japan, Korea, Myanmar, Thailand and Vietnam. The Hong Kong office is also associated with JunZeJun Law Offices and leverages JunzeJun’s nine greater China offices and its 300 practicing lawyers, including 50 partners. Veteran IP specialist Henry Wheare is a well-recommended partner at the firm.
Partner Justin Davidson heads the IP team at Norton Rose Fulbright,which in Hong Kong and mainland China has a very efficient, client-focused, and commercial litigation practice. Its practice includes estate litigation for high-net-worth families and individuals, as well as commercial disputes, which frequently involve Chinese manufacturers.
Oldham, Li & Nie has more than 40 partners and lawyers across its Hong Kong and Shanghai offices, providing a full range of legal services including commercial and intellectual property practices. The firm has a small but qualified IP team that deals with Hong Kong and China intellectual property law, and counts Vera Sung, who heads the firm’s IP practice for Hong Kong and China, and Evelyne Yeung among its leading practitioners.
General practice firm P.C. Woo & Co. handles patents and designs, trademarks, IP commercialization and management work. The firm has a strong litigation team which assists clients on enforcement. It is one of the law firms on the panel list of the Fast Action Scheme for trade fairs enforcement in cooperation with the Hong Kong Customs and Excise Department. Sandra Wong, a senior associate who heads the firm’s IP department, and senior associate Lewis Luk are key contacts.
IP boutique Rebecca Lo & Co is a key local player. The firm handles trademark registrations and portfolio management as well as advises on commercial IP matters. Founding partner Rebecca Lo was also a founding member of the Licensing Executive Society China Hong Kong Sub-Chapter.
With over four decades in Hong Kong, Reed Smith Richards Butler is one of the largest and most experienced law firms in the region. The firm has significant experience devising global IP strategies, with clients from key industry sectors including entertainment & media, energy & natural resources, financial services, life sciences, and transportation. Associate Dora Chan is a key contact for IP matters, especially patent.
Reynolds Porter Chamberlain (RPC) was known as Smyth & Co in association with RPC until May 1, 2017, when the firm received approval from the Hong Kong Law Society to operate as a partnership under the RPC name. The firm is a commercial-oriented business law firm with a broad range of expertise across many industry sectors. Managing partner for Asia Antony Sassi is noted for his work handling technology and cyber risk matters, among others.
Local specialist Robin Bridge & John Liu acted for HYX China before the Trade Mark Register and secured the client’s trademarks against a bad faith application. The firm was appointed by the Office of the Privacy Commissioner for Personal Data, Hong Kong, under the Legal Assistance Scheme. The team is headed by managing partner Anthony Tong, who has a substantial IP litigation practice in both Hong Kong and China; Tong also manages local clients’ worldwide trademark portfolios and international clients’ trademark portfolios in greater China. Partners Anthea Loo is also key contact for the IP practice.
Rouse Legal is the Hong Kong office of global IP specialist Rouse. It provides a full range of intellectual property legal services in Hong Kong, including clearance, filing and prosecution, patent agency, civil and criminal litigation and commercial IP services. Director Chris Vale acts as key contact for the Hong Kong, Vietnam and Cambodia offices.
Simmons & Simmons has a robust trademark practice that counts high-caliber US corporations amongst its clients. Partner John Slater and Jingyuan Shi are key IP contacts who have significant experience practicing IP in both Hong Kong and China. Slater is known for his work in prosecution and maintenance of the global trademark portfolios of Cathay Pacific Airlines, together with brand strategy advice and guidance.
Simone Intellectual Property Services, also known as SIPS,is headquartered in Hong Kong with offices in Shanghai and Beijing.With the opening of its China trademark agency in mid-2017, the firm now has over 60 members of staff. The bulk of its work relates to trademark portfolio management (particularly clearance, registration and elimination of pirated registrations) and all types of IP enforcement, with an emphasis on anti-counterfeiting, online enforcement, trade secret protection, copyright, and patents. Key contacts include founder Joe Simone and partners Dan Plane and Helen Tang.
Local commercial firm Sit, Fung, Kwong & Shum offers integrated intellectual property services from drafting, filing, prosecution and registration to commercial exploitation and enforcement. Apart from dealing with China IP work, the firm also acts for local and international companies in the Americas, Asia, Australia and Europe.
Spruson & Ferguson established a significant presence in Hong Kong and China in 2016 by acquiring Ella Cheong (Hong Kong) and its subsidiary Ella Cheong Intellectual Property Agency (Beijing). The highly-recommended Coral Toh, head of trademarks and head of the Greater China practice at the firm, is based in Hong Kong; principal Robert Jackson is a go-to lawyer for chemicals and life sciences matters. Spruson & Ferguson is part of the publicly-listed IPH Limited, the holding company for intellectual property professional services and adjacent businesses operating under different brands across the Asia-Pacific region.
Squire Patton Boggs has had a presence in Hong Kong for more than 15 years. Los Angeles-based consultant Paolo Beconcini heads the firm’s China intellectual property team. He manages the trademark, copyright and design portfolios of European and US clients, conceives and implements IP litigation strategies, regularly appears in Chinese courts and attends IPR administrative and police raids on counterfeiters.
Tiang & Partners is an independent Hong Kong law firm which collaborates closely with PwC. Leading IP lawyer Chiang Ling Li heads its IP practice. Li has more than 25 years’ experience in the field of China IP and pharmaceutical law. The firm’s IP practice complements its digital and technology, international trade and supply chain and other business-focused legal services. Finance lawyer and partner Michelle Taylor is a member of PwC’s global legal leadership team.
Vivien Chan & Co. is an important player in China. Operating from offices in Hong Kong and Beijing, the firm has done work for clients such as G-Star Raw and Yves Saint Laurent. Senior partner Vivien Chan oversees the firm from Hong Kong and has extensive experience in IP and corporate finance matters.
With a history of more 130 years, Wilkinson & Grist is one of the oldest law firms and a leading independent law firm in Hong Kong. Its IP practice group has a headcount of about 100, with over 26 professionals including Hong Kong and PRC legal counsel, PRC patent agents and PRC trademark agents. Since early 2004, the firm has set up its own IP agency in Beijing under the first license ever approved by the State authorities to a foreign party, and has since been directly filing and handling trademark and copyright matters. For many years it has been a top e-filer in Hong Kong for trademarks, with more than 1,000 trademark application filed per year. Andrea Fong is head of the firm’s intellectual property practice group, and has expertise in IP portfolio management and strategy, litigation and commercial IP work. Former head of IP and now consultant to the firm, long-term partner Mena Lo is a key contact for copyright issues and an expert in information technology-related matters.