The new challenges in IP protection are increasingly difficult and complex. We are a one-stop service firm with substantial experience in assisting clients manage and enforce IP portfolios in Greater China.
We are licensed to file and execute enforcement directly in Mainland and Hong Kong. We recognise it is not a one size fits all solutions objective. We leverage on a multipoint approach, using our Greater China offices and two legal systems, to optimise solutions and results to take advantage of both Hong Kong and Mainland judicial redress solutions such as:
- Injunctions to prohibit movement of assets out of the jurisdictions;
- Garnishee proceedings requiring third party debtors of the infringers to pay over the credit balance to the claimants;
- Secure court orders to compel infringers to disclose information for account for profits and trace the source of infringement.
How we can help
In formulating IP rights protection programs, we advise on different forms of IP rights enforcement in Greater China
Administrative enforcement in Mainland
- 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
Border enforcement in Mainland and Hong Kong
- 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
Civil prosecutions in Mainland and Hong Kong
- 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
Criminal prosecutions in Mainland and Hong Kong
- 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
Investigation and Risk Control
- 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
Administrative enforcement
- 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
Border enforcement
- 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
Civil prosecutions
- 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.