How we can help

In formulating IP rights protection programs, we advise on different forms of IP rights enforcement in Greater China

• Work with government officials at State Administration for Industry & Commerce (SAIC), State Quality Control & Examination Center, Consumer Protection Association, State Food & Drug Administration to provide solutions to IP enforcement
• Manage unfair competition/passing off successes in different product areas and industries

• Use of import and export intelligence
• Assist clients in recordal of rights with Customs in Mainland
• Liaise with Customs and alerts of counterfeits in Hong Kong & Mainland Customs
• Assist clients to confirm detained goods are counterfeits in Hong Kong & Mainland
• Assist in payment of mandatory bond for continued detentions in Mainland

• Assist in pre-trial investigations in Mainland and Hong Kong
• Obtaining injunctions and interim measures to preserve assets from moving out of the jurisdictions
• Advice on forum shopping
• Coordinate with attorneys in different jurisdictions to pursue civil prosecutions and obtaining injunctions against infringers on a global scale
• Thorough legal procedures and investigations to trace the sources of infringement worldwide

• Assist in pre-trial investigations in Mainland and Hong Kong
• Provide practical recommendations for multi-facet actions and co-ordinate crack down
• Work with Public Security Bureau in Mainland
• Work with Commercial Crime Bureau, Hong Kong Police, Hong Kong Customs, ICAC in Hong Kong to complement Mainland crack down

• Corporate investigations
  Adopt a comprehensive approach and utilize our Greater China offices and multi-disciplinary team comprising of lawyers, investigators, trademark attorneys and patent attorneys
• Asset searches and tracing
  Asset searches and tracing Using developed procedures for uncovering and documenting assets for clients
• Due diligence
  Conduct various forms of IP due diligence including breaking into the counterfeit supply chain to locate various infringing parties including packaging production agents, suppliers, distributors and third party manufacturers
• Vendor integrity and background checks
  Conduct background checks of prospective vendors to verity the integrity of the vendors Prepare reports evaluating the integrity and ratings of the vendors to clients

Representative experience

• Act on behalf of world’s leading men’s magazine to successfully enforce AIC action against US distributor who used a Hong Kong shadow company. We filed a complaint with the local AIC and obtained a court order to compel the shadow company to change its name. The AIC also imposed a fine and ordered US distributor to correct their act of false advertisement in breach of the Anti-Unfair Competition Law.
• Liaise with local AICs and Public Security Bureau to close down unlawful internet websites involved in fraud and gambling
• Represent 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
• Represent NEC in administrative raids against protectionist concerns in China
• Act 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 list of infringing website on official websites
• Represent OKI in securing Hong Kong Customs raid of counterfeit computer ribbons

• 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

• Trade Secrets
• Advise 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
• Investigate and act against possible infringement and unfair use of the “World Trade Center Association” by current and former licensees throughout China
• Advise worldwide and famous jeans brand in litigation involving breach of anti-unfair competition law and trademark infringement in China, formulate litigation strategies, assisted in evidence collection by acquiring infringing samples from the stores of the defendant around China, assist in arranging notarization of foreign evidence for use in Chinese court, draft statement of claim and advise on incidental matters.

• Information Technology & Domain Names
• File and win one of the first .cn domain names with CIETAC
• Regain numerous .com and .cn domain names for clients by negotiations, warning letters and arbitration proceedings
• Advise US-based distributor of power sports on striking off of shadow companies in Hong Kong by filing a complaint with the Companies Registries to strike off a shadow company and filing an infringement action at the same time, advise on related domain name arbitration in China, and advise on the evidence to prove the infringer’s bad faith in China.

• Advertising & Sweepstakes
• Advise airlines and software houses on enforceability of sweepstakes in China
• Advise on data collection and privacy relating to sweepstakes and competition rules in Greater China

• Trademark & Trade Dress
• Act on behalf of worldwide transportation services company to file opposition against marks in China, and negotiate on subsequent assignment of marks back to out client.
• Act on behalf of world’s leading publication to win a case on the basis of cross-subclass similarity of the goods and on the basis that co-existence of the subject mark with our client’s mark would cause confusion as to the trade origin of the products.
• Advise world-wide famous clothing brand in protection of their house mark which faced bad faith cancellation proceedings due to non-use by an infringer, strategically advising on effective evidence of use, and composing arguments to convince the use and reputation of their marks based on Chinese laws to the China Trademark Office.
• Act for the proprietor of a famous cartoon series in litigation against its former counsel for disputes on the proprietorship of the trademark rights, advise on breach of fiduciary duties, professional rules and proprietor of copyright, and formulate the litigation strategy for the client and secure a favourable settlement with recovery of the trademark rights.
• Act for a global aerospace company in maintaining protection of unregistered and unregistrable portfolio of trademarks
• Advise 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 obtaining in a declaration of infringement against retailer and damages

• Copyright
• Defend 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.
• Act for the estate of Diana, Princess of Wales to enforce copyright

• Patents
• Advise the world’s largest garment manufacturer on worldwide patent and plant variety protection in China. Coordinated its global patent litigation, represent it in ITC proceedings and obtained non - infringement opinions or declaratory judgments in various jurisdictions on its behalf
• Successfully prosecute “marginal” software patents in China, including patents for industrial management systems, Chinese word processing, speech and voice recognition by computers and image analysis
• Advise 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
• Advise one of the largest local CD and DVD manufacturers on patent filing strategy and defend it in anticipated infringement in Hong Kong and China
Franchising
• Assist the world's largest independent IT training company in litigation in compelling its sub-franchisee in Hong Kong to comply with the post-termination de-identification obligations after termination of the master franchise agreement with the franchisee; obtain a permanent injunction against the sub-franchisee and their directors to stop the breaches and the infringing acts and stop the sub-franchisee from using the domain name similar to that of our client.