Intellectual Property | Vivien Chan & Co.｜Law Firm｜Hong Kong

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 2022

IP Counsel to

1,000+

Entities & Individuals across all
industry sectors regionally

Received

40+

Awards & Recognitions
Globally in 2022

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 ACOUISITION 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

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 SOUATTING 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

CHAMBERS AND PARTNERS

(ASIA-PACIFIC GUIDE AND GLOBAL GUIDE)

Intellectual Property (International Firms)-

Firm and Individual 2019-2023

China

MIP IP STARS

Patent Prosecution Law Firm 2022

Hong Kong

Trademark and Patent Stars 2021

Hong Kong

Ms Vivien Chan

BENCHMARK LITIGATION ASIA-PACIFIC RANKING

Intellectual Property Law Firm 2022-2023 Hong Kong

WTR 1000

Recommended Law Firms 2023 in Enforcement and Litigation and

Prosecution and Strategy

Hong Kong

WTR 1000

Recommended Lawyers 2023

Hong Kong

Ms Vivien Chan

Ms Anna Mas Koo

Mr Owen Tse

MIP IP STARS

Patent Prosecution Law Firm 2021

Hong Kong

Trademark and Patent Stars 2021

Hong Kong

Ms Vivien Chan

WHO’S WHO LEGAL

Trademark and Patents 2021

China and Hong Kong

Global Leader in

Trademark and Patents 2021

Ms Vivien Chan

ASIALAW LEADING LAWYERS

Distinguished Practitioner in Intellectual Property 2020-2021

Ms Vivien Chan

Notable Practitioner in

Dispute Resolution 2020 Hong Kong

Mr Owen Tse

MEDIA LAW INTERNATIONAL

Media Law Law Firm 2020-2021

China and Hong Kong

China Business and Trade Litigation and Dispute Resolution Mergers and Acquisitions Employment and Compensation Enforcement of IP Rights in Greater China Regulatory Compliance Tax and Wealth Planning

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