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Intellectual Property
HOW WE CAN HELP REPRESENTATIVE EXPERIENCE ACCOLADES

Our award-winning offices in Beijing and Hong Kong are fully licensed to directly handle intellectual property prosecution, enforcement and commercialisation matters in Greater China and therefore provide one-stop services. With a network of trusted associates across the world, we are also well-positioned to cater for our clients’ IP needs in Asia, and around the world.

Handled
6,000+
IP Cases in 2021
IP Counsel to
1,000+
Entities & Individuals across all industry sectors regionally
Received
40+
Awards & Recognitions
Globally in 2021
HOW WE CAN HELP
BRAND PROTECTION & DEVELOPMENT
  • Bespoke protection strategy for logos, brand and product names, designs and trade dresses
  • Clearance searches
  • IP audits
  • Branding and communication strategies
  • IP policies, procedures and in-house training
REGIONAL IP PORTFOLIO MANAGEMENT
  • Trademark, patent, design, and copyright portfolio development and management
  • IP surveillance and watching
  • Tackle bad faith squatting, buyback negotiation
ANTI-COUNTERFEITING AND ANTI-UNFAIR COMPETITION
  • Multi-jurisdictional IP enforcement actions
  • Injunctions and interim measures to cease infringement and preserve assets
  • Investigation and evidence preservation
  • Administrative enforcement and criminal actions
  • Border control and customs actions
PATENTS
  • Patent prosecution and portfolio counselling
  • Advice on patentability and freedom to operate
  • Patent non-infringement and invalidity analysis
  • Authorship and inventorship dispute
  • Employee renumeration
DESIGNS AND COPYRIGHTS
  • Design prosecution and portfolio counselling
  • Protection strategies for product designs, packaging, software, visual interface, publications, media, digital works and non-traditional works
  • Copyright recordals in jurisdictions such as Mainland China and the US
  • Copyright policy
TRADE SECRETS
  • Strategic protection for trade secrets and sensitive information
  • Confidentiality and non-compete agreements
  • Trade secret protection programmes
  • Injunctions and seizures of confidential information
  • Trade secret enforcement
IP ACQUISITION AND COMMERCIALISATION
  • IP due diligence, valuation and acquisition
  • IP financing (e.g. mortgages, liens, bonds)
  • Licensing, franchising, co-branding and distribution agreements
  • Strategizing IP ownership structure in commercial deals
  • Tax strategies
E-COMMERCE, SOCIAL MEDIA AND INTERNET
  • Takedown strategies on app stores, online marketplaces and social media sites
  • Enforcement strategies against online counterfeiting, brand impersonation, and cybersquatting
  • Terms of use and privacy policies for apps, online platforms, social media sites and websites
  • Data security and personal information protection
  • Domain name acquisition, registration and management
ENTERTAINMENT, GAMES AND MEDIA
  • Publishing, broadcast, game and merchandising licencing
  • Endorsements and sponsorships
  • Tactical protection for source codes, game titles, characters and graph designs
  • Combat unlicensed in-game products trading and counterfeit games
  • Streaming and broadcasting infringement, takedown and injunction applications
VIRTUAL WORLD AND DIGITAL ASSETS
  • Holistic IP protection solutions for digital economy and virtual world (e.g. Metaverse, gaming environment)
  • IP protection strategies for avatars, virtual goods, digital assets (e.g. NFTs), and digital currencies
  • Transfer of digital assets and IP rights therein
  • Infringement in virtual space
INNOVATION, TECHNOLOGY AND TELECOMMUNICATIONS
  • Protection, enforcement and commercialisation of inventions and technologies
  • Technology investments and transfer
  • Dispute in research and development
  • Data collection, cross-border data transfer and data breach
ADVERTISING AND REGULATORY COMPLIANCE
  • Advertising review
  • Competition
  • Data privacy
  • Employment
  • Product compliance and liability
  • Tax
REPRESENTATIVE EXPERIENCE
Our Leading & Award-Winning IP Lifecycle Management Solutions
BRAND AND PRODUCT CREATION AND DEVELOPMENT
  • Counsel to leading luxury fashion houses on IP portfolio review and strategic filings for expansion to the virtual world (e.g. Metaverse, gaming environment) and protection for digital assets (e.g. NFTs)
  • Prosecution strategies for a US developer of popular online games to secure trademark registrations for in-game currency and in-game products and successfully overcame objections based on non-distinctiveness and negative influence
  • Secured registration for a sound mark of a US media and entertainment brand in Mainland China
  • Secured certification mark registrations for the largest US trade association for the oil and natural gas industry in Mainland China
  • Devised Chinese hotel names and prosecution strategy for a world-leading hotel group for one of its newly acquired hotel business in Greater China
  • IP clearance and prosecution strategies and gap filing review for a world-famous health supplement brand in the brand logo revamping exercise covering more than 20 classes in multiple jurisdictions
  • Design patent filing and copyright protection strategies for perfume bottle designs of an international luxury conglomerate in different jurisdictions, including Mainland China and European Union
  • Prosecution strategies for an international crypto-products trading platform and removal of a Korean-based competitor’s filing of similar marks
IP SQUATTING SOLUTIONS
  • Negotiated time-sensitive buy back of the house mark of European pet food company from a Chinese squatter, who has a history in backing out, at a reasonable price during the outbreak of COVID-19
  • Successfully assisted an international luxury conglomerate in removing bad faith applications filed by a professional squatter in Mainland China and avoided the need to pay around USD 2 million to reclaim the trademarks
  • Cracked down a Chinese squatter syndicate which filed bad faith applications in multiple jurisdictions and engaged in infringing activities for a state-owned national oil and energy company in Dubai, devised investigation strategies to unveil the complex company relationship and prosecution strategies to secure first trademark registration in Greater China
  • Secured numerous favourable administration decisions based on unregistered character name rights and bad faith for a world-famous movie series
  • Assisted an Australian cosmetic and skincare in reclaiming its domain name from its former business partner via domain name arbitration based on copyright and invalidating unauthorised trademark registration
REGIONAL IP PORTFOLIO MANAGEMENT AND DEVELOPMENT
  • Managing th IP portfolio of a multinational direct-selling company in Greater China for more than 35 years
  • Successfully obtained well-known status for trademarks of multinational brands in Mainland China
  • Received well-known trademark recognition for the lead character name of a world-famous movie series in South Korea
  • Acted for a leading multinational cybersecurity and telecommunication company in patent prosecution and management of the patent portfolio in Hong Kong
  • Building the intellectual property portfolio in Greater China and Asia for an emerging US direct selling nutritional supplement company from scratch and combating trademark, design patent and copyright squatting in Hong Kong, Mainland China and Taiwan
  • Lead counsel for a leading international real estate company in concluding a worldwide trademark coexistence agreement with a China-based leading financial technology service company covering Greater China, Europe, the US, Japan, Thailand, Singapore and the Philippines with coexistence terms favouring our client
ANTI-COUNTERFEITING AND ENFORCEMENT
  • Lead counsel to a leading French luxury skincare brand in an unfair competition and infringement lawsuit against a French competitor in Mainland China. Successfully resisted the defendant's jurisdictional challenges. Successfully persuaded the Court to find that the use of confusingly similar promotional materials constituted unfair competition, ordering the competition to cease the infringing acts, pay money compensation and publish public apology. 
  • Enforcement strategy for a leading US game and software developer in actions against the unauthorised sale of virtual currency and in-game products and cracking down scams and frauds in the video game environment
  • Acted for a leading electronic music equipment brand in successfully defending malicious take-down requests on e-commerce platforms and infringement lawsuit
  • Investigation strategies for a multinational pharmaceutical brand to crack down the supply of counterfeit vaccines at medical centers in Hong Kong. Acted as client’s appointed expert witness in verifying the authenticity of the seized products in criminal proceedings
  • Obtained favourable decisions from Administration for Market Regulation for an international luxury conglomerate, recognising the sale of lookalike lipstick products constituting unfair competition and imposing fines of nearly 5 times of infringers’ revenues. The decisions were widely reported by the Chinese media
  • Strategized enforcement actions for a major French clothing company against a bad faith Chinese individual forging client’s signature to fraudulently transfer client’s major trademarks to her own name
  • Acted for one of the world’s largest and most renowned automobile manufacturers in the largest seizure of counterfeit automobile parts at the Chinese border in recent years
  • Acted as the appointed examiner for one of the world's largest manufacturers of premium cars in verifying the genuineness of the seized products in a high-profile enforcement action against counterfeiting car parts activities
  • Cross-border enforcement strategy for world's leading men's magazine brand against PRC infringers by striking off shadow companies in Hong Kong and simultaneously initiating administrative enforcement actions in Mainland China
  • Enforcement and investigation strategy for an innovative genetic nanomedicine and medical device manufacturer in actions against a former Chinese employee who had misappropriated client’s machine designs and created knockoff products
IP COMMERCIALISATION
  • Assisted a major US airline in utilizing its intellectual property rights in multiple regional jurisdictions to finance its continued operations by securing complex loans and issuing bonds of over USD10 billion
  • Advised the world’s largest US coalition of leading electronics, retail, auto and toy companies on copyright ownership and license structure in a software licensing deal with a Chinese company
  • IP and tax counsel to global furniture distributor on setting up and maintaining their franchise arrangement in Mainland China
  • Represented one of the most prestigious universities in the US in its negotiation of cooperation with the world’s largest Chinese multinational e-commerce group and formulated the licensing structure in light of the tax laws and foreign exchange restrictions in the Mainland China
  • Advised a world's leading lubricant oil manufacturer in IP licensing and IP asset ownership structure in relation to the incorporation of a joint venture company in Mainland China and developed mechanisms for disposition of IP assets after termination
  • Assisted a US developer of popular online games in conducting acquisition due diligence on the IP rights of the target software companies, handled assignment and combatted bad faith squatting for software and game titles in Greater China
  • Analysed the strength of a patent portfolio of a US electronic part supplier to enable retention of its customer base in Mainland China
  • Advised a multijurisdictional direct-selling company in the IP licensing structures for the grant of licenses to and collection of royalties from Chinese subsidiaries
IP POLICIES, REGULATORY COMPLIANCE AND TRAINING
  • Assisted a US airline company in reviewing social media posting policy to ensure compliance with the Chinese and Hong Kong law
  • Advised an emerging animal-free dairy product brand in launching its first online selling platform on different legal aspects, including intellectual property, product labelling, product recall and other regulatory compliance issues
  • Assisted a French high-end skincare brand in reviewing their TV adverts to ensure compliance with the censorship rules in Mainland China
  • Advised MNCs on confidentiality obligations for IPRs generated by their R&D centres in Mainland China and conducted training on IPR protection and ethics
  • Developed a copyright awareness program for employees, licensees and distributors of a global personal care brand
  • Provided bespoke in-house confidentiality and intellectual property awareness training to a US leading consumer electronics accessory brand
  • Provided in-house training to legal counsel of a multinational luxury conglomerate on the latest legal developments in data security and protection of personal information and regulatory practices concerning the collection of personal data on e-commerce platforms and mobile applications in Mainland China

WHAT OTHERS SAY
"Our Legal Department in charge of the LVMH Group's Perfumes and Cosmetics companies has been working with Vivien Chan for many years on all matters related to Intellectual Property and related fields. The Vivien Chan team is particularly appreciated for its strong reactivity, its efficient follow-up and its ability to find and propose innovative solutions to overcome legal difficulties or obstacles. More recently, Vivien Chan provided a great and a successful support on a strategic dispute on the grounds of unfair competition in China. A big thank you to the whole team for this continuous collaboration."
~ LVMH Group
"We can rely on the Vivien Chan firm as our needs, technology and the law changes."
~ Amway
"Such an experienced and helpful trademark firm in China."
~ Diversey, Inc.
"Your follow-up and advice have been important to clear our obstacles to grow business in PRC, HK and other Asian Area."
~ Mikimoto
"I send thanks to you for the fantastic services your colleagues have given to Bradley and me so many times for our clients and for our general education."
~ Bradley Arant Boult Cummings LLP, US
"You’re the most valuable firm in Hong Kong and Greater China. If I have anyone to recommend, it will be you."
~ Interpatent, Italy
"Thank you for all the years of great service to my clients and to me. You have my complete trust and there is no other firm I would use in Hong Kong and China."
~ Bachman & LaPointe, P.C., US
"Having enjoyed choice quality services at reasonable professional charges, we are confident that our choice of Vivien Chan was absolutely correct."
~ NGB Corporation
ACCOLADES
MIP IP STARS


Patent Prosecution Law Firm 2021
Hong Kong
MIP IP STARS
Trademark and Patent Stars 2021 Hong Kong
Ms Vivien Chan
WHO’S WHO LEGAL
Trademark and Patents 2021
China and Hong Kong
WHO’S WHO LEGAL
Global Leader in
Trademark and Patents 2021
ASIALAW LEADING LAWYERS
Distinguished Practitioner in Intellectual Property 2020-2021
Ms Vivien Chan
BENCHMARK LITIGATION ASIA-PACIFIC RANKING

Intellectual Property Law Firm
2020-2021 Hong Kong
MEDIA LAW INTERNATIONAL
Media Law Law Firm 2020-2021
China and Hong Kong
ASIAN LEGAL BUSINESS IP RANKING
Tier 1 Trademarks and Copyright Law Firm
Tier 2 Patents Law Firm 2019- 2021
Hong Kong
CHAMBERS AND PARTNERS
(ASIA-PACIFIC GUIDE AND GLOBAL GUIDE)

Intellectual Property (International Firms)-
Firm and Individual 2019-2021
China
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