Enforcement of IP Rights in Greater China
HOW WE CAN HELP
REPRESENTATIVE EXPERIENCE
ACCOLADES
We directly handle enforcement matters in Mainland China and Hong Kong via our offices in Beijing and Hong Kong, and are therefore well-positioned to handle cross-border and multi-jurisdictional IP disputes. We work directly with the relevant administrative bodies and law enforcement agencies to ensure your best case is presented. Our in-house investigation capabilities enable us to manage our clients’ investigative needs in different regions in China in a cost-effective manner. Over the years, we have formulated effective enforcement strategies and solutions for the world’s largest brands from different industry sectors to tackle different forms and scales of counterfeiting and unfair trade practices.
Successfully removed
500+
Bad Faith Filings in Mainland China in 2022
Handled
1,000+
IP Disputes in 2022
(opposition, cancellation, invalidation, administrative complaints, litigation)
Received
40+
Awards Recognitions
Globally in 2022
HOW WE CAN HELP
ADMINISTRATIVE ENFORCEMENT
- Enforcement of IP rights via administrative and regulatory bodies in Mainland China, including China National Intellectual Property Administration (CNIPA), State Administration for Market and Regulation (SAMR), National Copyright Administration, Cultural, Radio, Television, Tourism and Sports Bureau, National Medical Products Administration
- Conduct administrative raid actions
- Transfer of infringement cases to the Public Security Bureau (PSB) for criminal prosecution
CUSTOMS AND BORDER ENFORCEMENT
- Import and export surveillance
- Customs recordal and arrangement for payment of bond fees in Mainland China
- Detention of suspected infringing goods
- Represent brands as appointed examiners for customs enforcement and testify as expert witnesses in court proceedings in Hong Kong
- Cooperate with customs in investigations and enforcement actions
CRIMINAL PROSECUTION
- Enforcement actions with the PSB in Mainland China
- Enforcement actions with Hong Kong Customs and Hong Kong Police to complement PRC crack down
COMPLEX MULTI-CHANNEL AND MULTI-URISDICTIONAL ENFORCEMENT
- Multi-jurisdictional IP disputes
- Infringement in virtual space (e.g. Metaverse, gaming environment, NFT-related IP dispute)
- Jurisdictional challenges
- Administration of multi-channel enforcement programmes (online, administrative and judicial
- Discovery actions in Hong Kong (e.g. Anton Piller orders, Norwich Pharmacal orders) to facilitate litigations in other jurisdictions
- Coordinate with attorneys in different jurisdictions to pursue IP disputes in a global scale
- Enforcement of foreign judgments and arbitration awards in Mainland China and Hong Kong
- Global settlement negotiation strategies
IP INFRINGEMENT
- Pre-action strategy
- Injunctive relief
- Asset preservation order
- Forum selection strategy in Mainland China
- Tackle offending company names and shadow companies
- Groundless threat and declaration of non-infringement proceedings
- IP dispute settlement, mediation and arbitration
ANTI-UNFAIR COMPETITION & TRADE SECRET PROTECTION
- Unfair competition lawsuits concerning trade names, trade dress, product designs, promotional materials and other unfair business behaviours
- False advertising
- False endorsement
- Trade secret misappropriation
- Risk prevention, assessment and control
INVESTIGATION AND SURVEILLANCE
- Intellectual property investigations
- Background check
- Trade fair monitoring
- Market and e-commerce surveillance
- Trademark and domain name watch
- Market surveys
- Evidence preservation (e.g. notarisation, timestamping, blockchain)
E-COMMERCE, SOCIAL MEDIA, ONLINE PLATFORMS AND DOMAIN NAMES
- Take-down strategies on app stores, e-commerce platforms and social media sites
- Defend malicious take-down requests
- Combat brand impersonation and brandjacking on social media sites, such as WeChat, Weibo, TikTok and Xiaohongshu
- Domain name dispute and recovery
- Undercover purchases of domain names, social media accounts and other online accounts
CONTRACTUAL DISPUTES
- Cross-border IP dispute resolution
- License and franchise royalty recovery
- Enforce confidentiality and non-compete agreements
- Unauthorised use, misuse and registration of licensed IP assets
- Post-termination obligations
REPRESENTATIVE EXPERIENCE
ADMINISTRATIVE & CRIMINAL ENFORCEMENT
- Represented M&M's in M&M's v. W&W's, the landmark case on granting of administrative injunction on national and provincial levels to stop infringement in Mainland China
- Strategized enforcement actions for a major French clothing and lingerie brand against a bad faith Chinese individual that forged client’s signature to fraudulently transfer client’s major trademarks to her own name
- Obtained favourable decisions from AMR 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
- Anti-counterfeiting strategy for Greater China for a global mobile device brand, covering enforcement actions at AMR, PSB, Customs and online as well as judicial redress, the use of expedited process in specialized IP court and collection of evidence on online platforms
- Cross-border enforcement strategy for the world's leading men's magazine brand against Chinese infringers by striking off shadow companies in Hong Kong and simultaneously initiating administrative enforcement actions to crack down infringing activities in Mainland China
- 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
- Surveillance and enforcement program for a leading global supplier of premium cars to take down shadow companies incorporated in Hong Kong
BORDER ENFORCEMENT
- Obtained injunction in Shanghai enjoining the export of counterfeiting automobile parts by a Chinese company to Turkey seized by the Shanghai Customs and favourable court judgment
- 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
- 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
- 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 highprofile enforcement action against counterfeiting car parts activities
E-COMMERCE, SOCIAL MEDIA, ONLINE PLATFORMS AND DOMAIN NAMES
- Acted for a leading electronic music equipment brand in successfully defending malicious take-down complaints on e-commerce platforms and infringement lawsuit from a bad faith competitor
- Successfully assisted an emerging US direct selling nutritional supplement brand in taking down impersonating accounts on WeChat
- Represented one of the world’s prestigious universities in cease of abuse of client’s name and branding against a Taiwan-based dental chain. Successfully secured change of infringer’s business name, logo, branding, website and social media accounts in Mainland China and Taiwan
- Closed down the operation of a Chinese counterfeiter of a European milk powder brand by administrative complaints nationwide, WeChat complaint and domain name arbitration
- Advised a world leading direct-selling brand on actions against distributors which sold client’s products on C2C online marketplace in breach of the distribution agreement and successfully assisted in taking down the infringing listings
- Assisted an Australian cosmetic and skincare brand in reclaiming its domain name from its former business partner via domain name arbitration based on copyright and invalidating unauthorised trademark registration
- Enforcement strategy for an upscale US home-furnishing brand against the cross-border online sale of counterfeits and takedown of copyright infringing materials
- Strategies for the world's largest private non-profit educational testing and assessment organization on actions to combat the sale of pirated software on Taobao
- Assisted numerous brand owners in taking down infringing product listings on online marketplaces in Greater China, including Alibaba, TMall, 1688.com, JD.com, Pinduoduo, and Xiaohongshu
TRADEMARK
- Took over and expedited the conclusion of the dispute between a copycat and a famous French luxury brand after prior 16 years of battle. Successfully shut down the copycat’s retail outlets in major provinces in Mainland China. Secured voluntary assignment of the Chinese house mark back to the client at zero consideration
- 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
- Litigation strategy for a US tire manufacturer on trademark infringement litigation in Xiamen and Shandong. Successfully mitigated against local protectionism concerns by securing a change of forum of adjudication for client, and obtaining a declaration of infringement against retailer with damages awarded
- Established a precedent for enforcement against Mainland China online shops selling a leading direct selling company’s products with tampered product tracking devices based on trademark infringement
- Regained trademark rights for the owner of a famous cartoon series from its former lawyer who was in breach of fiduciary duties and professional rules
- Cross-border enforcement strategy for a world leading directselling company to stop a PRC infringer to conduct infringement activities via a shadow company incorporated in Hong Kong
- Acted for a global leading aesthetic medical brand in successfully stopping the distribution of counterfeiting machine parts in Hong Kong based on trademark infringement, passing off, violation of consumer safety regulations and breach of contract
PATENT & DESIGN
- Advised the world's largest garment manufacturer on worldwide patent and plant variety protection in Mainland China, coordinated its global patent litigation, represented it in ITC proceedings and obtained non-infringement opinions or declaratory judgments in various jurisdictions on its behalf
- Advised a US leading company in technologies and solutions for the development of genetic medicines on trade secret misappropriation and patent infringement and devised investigation plans and evidence collection strategy
- Patent infringement analysis and risk mitigation advice for a US machinery manufacturer in Greater China
- Assisted an emerging US direct selling nutritional supplement brand in combating trademark, design patent and copyright squatting in Mainland China
- Conducted patent infringement analysis and advised on enforcement strategies for a global healthcare brand for its air purification systems
COPYRIGHT
- Defended copyright infringement lawsuit lodged against an English luxury leather goods by a local designer in Hong Kong
- Successfully defended software copyright infringement case in Mainland China
- Acted for a US-based international lubricant oil company in a copyright infringement and unfair competition action against a Chinese company and successfully demanded the Chinese company and its associated companies to amend their websites and take down all copyright infringing materials
- Acted for a world-renowned designer and distributor in the luxury lifestyle market in taking down online infringing product listings based on copyright infringement and unfair competition / common law passing off
- Acted for an upscale US home-furnishing brand in devising enforcement strategy against the cross-border sale of counterfeits and takedown of copyright infringing materials
- Ceased the sale of replica jewellery of a French luxury jewellery brand in Hong Kong based on copyright infringement and passing off
PASSING OFF/ UNFAIR COMPETITION
- Lead counsel to a leading French luxury skincare brand in an unfair competition and infringement lawsuit against a French competitor in Mainland China. Market surveys conducted in Beijing, Chengdu, Shanghai, Shenyang and Guangzhou to collect evidence of confusion. 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.
- Litigation strategies for a world-renowned jeans brand against copycats relying on Anti-Unfair Competition Law in Mainland China and enforced the judgment against the defendant and on Tmall
- Advised a world-famous US university in trademark infringement, false advertising and unfair competition claims to cease the promotion and sale of fake drugs under client’s name
- Counsel to a New Zealand healthcare product brand in civil action against a shadow company engaged in cross-border infringement activities based on trademark infringement and passing off
TRADE SECRET
- 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
- Acted for a UK-based footwear brand on actions based on trade secret misappropriation, breach of confidentiality clause and copyright infringement against its Chinese manufacturer in Mainland China
- Advised a luxury silk lifestyle brand against a potential business partner in Mainland China for breach of non-disclosure agreement, trademark infringement, unfair competition and false advertising
WHAT OTHERS SAY
"Very many thanks to Owen Tse for his excellent level of client services."
~ Trowers & Hamlins LLP, UK
"Vivien Chan is a master of strategy. When I need strategic counsel in a difficult situation, I come to her."
~ Orrick, Herrington & Sutcliffe LLP, US
"Great help to us in our enforcement of trademark and design right."
~ NEC Corporation
"Our Brand has been working for many years with Vivien Chan law firm handling for us TM litigations. In the recent years Vivien Chan law firm has handled complex TM squatting disputes which have been resolved in a very satisfactory way. We appreciate in particular their great team and the strong dedication they have shown in helping us resolve complex issues."
~ Saint Laurent
"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
"You have been invaluable to us and we could not have managed our Asian trademarks without you. I feel so lucky to know you and look forward to many more years working together!"
~ New U Life Corporation
"Backed by 35 years of experience helping clients to protect their IP rights across Greater China, full-service law firm Vivien Chan & Co. competently manages complex local and cross-border trademark matters"
~ World Trademark Review 1000
"With over 30 years’ experience, Vivien Chan & Co. has built itself a strong reputation in general disputes and intellectual property.
~ Benchmark Litigation
"We value your clear advice and readiness to respond."
~ Wildbore & Gibbone, UK
ACCOLADES
CHAMBERS AND PARTNERS
(ASIA-PACIFIC GUIDE AND GLOBAL GUIDE)
Intellectual Property (International Firms)-
Firm and Individual 2019-2023
China
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
Recommended Law Firms 2023 in Enforcement and Litigation and
Prosecution and Strategy
Hong Kong
Recommended Lawyers 2023
Hong Kong
Ms Vivien Chan
Ms Anna Mas Koo
Mr Owen Tse
Patent Prosecution Law Firm 2021
Hong Kong
Trademark and Patent Stars 2021
Hong Kong
Ms Vivien Chan
Trademark and Patents 2021
China and Hong Kong
Global Leader in
Trademark and Patents 2021
Ms Vivien Chan
Distinguished Practitioner in Intellectual Property 2020-2021
Ms Vivien Chan
Notable Practitioner in
Dispute Resolution 2020 Hong Kong
Mr Owen Tse
Media Law Law Firm 2020-2021
China and Hong Kong
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