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We are a premier and top ranked IP practice. We help manage and enforce the IP portfolios of multinational corporations in Greater China (most of which are Fortune 500 companies), who are owners of the world’s household name brands.

In 1985, we were consulted by the CTMO on the drafting of the first Trade Mark laws in the PRC. We recognise the inconsistent and often ineffective enforcement of IP rights in the PRC. The nature of a developing legal framework may give rise to sometimes contradictory interpretation and application of its laws and implementation regulations. We see Greater China IP management as a strategic issue. We have garnered seasoned experience in adopting a cost effective and result orientated approach to delivering practical solutions.

We are licensed to file direct in China and therefore represent a one stop service. There is no need to subcontract our work to outside agents. We do all aspects of work ourselves. We clear obstacles in registration and enforcement directly with the regulators. Our advice is based on over 30 years of experience in the law, practice and culture, targeted at practical and expeditious resolution of problems.

We portfolio manage, including acquisition, protecting, enforcing and help their exploiting of the intellectual property rights, as well as stewardship of their franchise and licensing programs.

How we can help

Greater China overall IP portfolio asset management
  • Brand protection strategies, brand enforcement, brand development search and clearance
  • Comparative advertising
  • Counseling on establishing, protecting, and capitalising on non-registrable IPR
  • Development of Chinese-language trademarks
  • Exploitation rights, regionally and globally
  • Greater China anti-counterfeiting and other enforcement programs
  • Internet IPR disputes: domain names, cybersquatting, linking, framing, wall papering, mousetrapping, metatags and keyword programmes
  • IP audits
  • IP due diligence
  • Licensing, franchising and other transactional intellectual property
  • Lobbying and government relations work
  • Registration strategies for trademarks, patents and designs
  • Search and investigation reports, developing global and Greater China filing strategies
  • Technical assistance and technology transfer agreements; trade practices and unfair competition law
  • Value added advice on valuation, technical assessment, licensing, royalty recovery, tax strategies
Entertainment & media
  • Endorsements and sponsorships
  • Management representation agreements
  • Merchandising and publishing licences
Music & theatre
  • Record distribution agreements
  • Talent engagements agreements
  • Tax and financing
Technology & telecommunications
  • Competition & regulatory
  • Information technology procurement & regulatory
  • Telecommunications infrastructure

Representative experience

Trade Secrets

  • Advised multinational corporations on confidentiality obligations for IPRs generated by their R & D Centers and inventors in China, and conducted training for local staff on IPR duties and ethics.
  • Advised on PRC laws in respect of unfair competition, breach of trade secret and confidentiality in a major case involving the Three Gorges Project in China.
  • Investigated and acted against possible infringement and unfair use of the "World Trade Center Association" by current and former licensees throughout China.

Information Technology & Domain Names

  • Advised a Scandinavian-based IT service provider on sale of registered IPRs in China in a multi-jurisdictional asset sale.
  • Counsel to US telecommunication entity in its acquisition of an interest in a PRC telecommunication group, regulatory approvals and compliance.
  • Filing and winning one of the first .cn domain names with CIETAC.
  • Regained numerous .com and .cn domain names for clients by negotiations, warning and arbitration proceedings.
  • Liaised with local AICs and Public Security Bureau to close down unlawful internet websites involved in fraud and gambling.
  • Acted as company lawyer in securing the listing of the first IT company on GEM Board of the Hong Kong Stock Exchange.
  • Advised on privacy issues relating to collection, control and use of data by a website which collected customer preference data and further advised on the requirements for sending out electronic messages.

Advertising & Sweepstakes

  • Advised on use of classical paintings and famous characters in TV commercials.
  • Advised airlines and software houses on enforceability of sweepstakes in China.
  • Advised on data collection and privacy relating to sweepstakes and competition rules.

Distribution, Franchising and Licensing

  • Counsel to worldwide fast food chain in its franchise operations in PRC.
  • Tax counsel to a major household ware in its distribution and agency chain in PRC key cities.
  • IP and tax counsel to world's leading personal care company in their supply chain and licensing business in PRC.
  • IP and tax counsel to global furniture distributer on setting up and maintaining their franchising arrangement in China in accordance with franchising laws; structuring sale of goods in China for distribution within China and into Hong Kong.
  • Advised a global cartoons franchise on licensing of use of their dolls/toys for in China.

Patents

  • Advised the world's largest garment manufacturer on worldwide patent and plant variety protection in China. Coordinated its global patent litigations, represented it in ITC proceedings and obtained non-infringement opinions or declaratory judgments in various jurisdictions on its behalf.
  • Acted for global pharmaceutical company in infringement of its process patent of artificial sweetener. This involved our attorney giving testimony in the UK Patents Court and at US ITC proceedings in Washington, D.C. We worked closely with investigators on undercover collection of evidence, strategized on protectionist concerns, choice of litigation jurisdiction and forum selection of geography of the court(s), gave testimony at the UK Patent Courts and worked with US counsel on ITC proceedings.
  • Successfully prosecuted "marginal" software patents in China, including patents for industrial management systems, Chinese word processing, speech and voice recognition by computers and image analysis.
  • Advised an international smart card manufacturer with products covering mobile phone SIM card, contact and non-contact information / value storage cards, and parking meter card on patent protection and trade secret infringement in China.
  • Advised one of the largest local CD and DVD manufacturers on patent filing strategy and defended it in anticipated infringement in Hong Kong and China.
  • Advised on worldwide patent portfolio management of a vertically integrated garment making conglomerate, from their cotton growing processes to industrial designs and modus

Trademark & Trade Dress

  • Represented M&M's in M&M's v. W&W's, the landmark case on administrative injunction granted at national and provincial level to stop infringement in China.
  • Represented NEC in administrative raids against protectionist concerns in China.
  • Acted for a global aerospace company in maintaining protection of unregistered and unregistrable portfolio of trademarks.
  • Regularly assist in customs recordal, customs training, identification of detained goods, subsequent enforcement action for multiple clients and trademark portfolio management services for a worldwide direct selling company including the formulating of trademark watch notice criteria for Greater China and arriving at a user-friendly points-based system for internal client’s assessment.

Trademark

  • Advised a US tire manufacturer on trademark infringement litigation in Xiamen and Shangdong courts, resulting in the change of forum of adjudication, successfully avoiding local protectionism and resulting in a declaration of infringement against retailer and damages.
  • Acted for a world famous US university in trademark infringement issues, arranging for collection of evidence, complaining to the AIC, the Drug Administration Department; resulting in the closure of the website, search for infringing products and listing of infringing website on official websites.

Media & Entertainment

  • Represented various artists endorsement agreement and character merchandising.
  • Advised "Disney on Ice" show in Beijing on tax and IPR.
  • Acted for subvented Hong Kong theatre group, advised on securing of endowment funds from Government, and proposed checks and balances procedure.

Copyright

  • Defended a copyright (software infringement) case which involved the largest quantum of damages ever awarded in China. The case has been returned by the Court of Appeal to the Guangdong Economic Court for re-trial leading to voluntary abandonment thereof by the plaintiff.
  • Acted for the estate of Diana, Princess to enforce copyright rights.
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