How we can help

Greater China overall IP portfolio asset management:

• Search and investigation reports, developing global and Greater China filing strategies
• Development of Chinese-language trademarks
• Registration strategies for trademarks, patents and designs
• Brand protection strategies, brand enforcement, brand development search and clearance
• Greater China anti-counterfeiting and other enforcement programs
• Licensing, franchising and other transactional intellectual property
• IP due diligence
• Technical assistance and technology transfer agreements; trade practices and unfair competition law
• IP audits
• Exploitation rights, regionally and globally
• Lobbying and government relations work
• Comparative advertising
• Counseling on establishing, protecting, and capitalising on non-registrable IPR
• Internet IPR disputes: domain names, cybersquatting, linking, framing, wall papering, mousetrapping, metatags and keyword programmes
• Value added advice on valuation, technical assessment, licensing, royalty recovery, tax strategies

Entertainment, Media

• Merchandising and publishing licences
• Endorsements and sponsorships
• Management representation agreements

Music Theatre

• Record distribution agreements
• Talent engagements agreements
• Tax and financing

Representative experience

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 giing 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 SIMS 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

Copyright

• Defended a software copyright infringement at the PRC Court of Appeal and acted in the retrial at the Guangdong Economic Court
• Acted for the estate of the late Princess to enforce copyright rights

Trade Secret and Unfair Competition

• 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" (WTCA) by current and former licensees throughout China

Trademark/Trade Dress/Unfair Competition

• 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
• Acted for a global aerospace company in maintaining protection of unregistered and unregistrable portfolio of trademarks

Distribution, Franchise and Licensing

• Counsel to world wide 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

Advertising and 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

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 involving 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

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, advising on securing of endowment funds from Government, and propose checks and balances procedure

Representative clients

Ford Motors
NXP Semiconductors
Amway
Visa
Dow Agroscience / Dow Chemicals
Esquel Group
NEC
Research in Motion
Hanesbrand
Tom Group
LVMH
Condé Nast
United Feature Syndicate
Alticor / Amway