Intellectual Property

We are proud to be recognized as one of Hong Kong’s leading intellectual property practices, offering comprehensive legal solutions to protect, enforce, and maximize the value of your intangible assets.

From startups and creatives to multinational corporations, our dynamic and experienced team of IP lawyers provides tailored advice across all aspects of intellectual property law. Whether protecting your brand, safeguarding your innovations, or resolving disputes, we deliver seamless, practical, and cost-effective solutions that align with your commercial goals.

Trademark Protection & Enforcement

Trademarks are at the heart of any successful brand, serving as powerful tools for recognition and trust. Our team can provide legal solutions that are designed to safeguard your brand’s integrity and value through proactive protection and robust enforcement measures.

Our services include:

Advising on trademark registration, performing availability searches, and filing applications in Hong Kong and internationally.
Handling trademark oppositions, cancellations, and revocation proceedings.
Enforcing trademark rights against infringement through cease-and-desist letters, negotiation, or litigation.
Developing brand protection strategies, including monitoring and managing trademark portfolios.

Copyright Protection

Copyright is essential for safeguarding creative works, from artistic creations and written materials to digital content and media. Our team provides expert guidance aiming to protect your intellectual and creative assets.

Our services include:

Advising on copyright ownership, licensing, and assignment agreements.
Representing clients in copyright infringement disputes.
Drafting and negotiating agreements related to the use and exploitation of copyrighted works, including publishing, music, and film rights.

Patents and Design Rights

Innovation is the lifeblood of many businesses, and protecting inventions and designs is key to maintaining a competitive edge. Our team provides strategic advice to help clients secure and commercialize their patents and design rights.

Our services include:

Advising on registration of standard patent (based on a patent application filed in the designated Patent Office), short term patents and designs.
Drafting and negotiating licensing agreements for patents and designs.
Handling disputes related to patent and design infringement, including litigation and alternative dispute resolution.

Trade Secrets and Know-how

In many industries, trade secrets and proprietary information are critical to maintaining a competitive advantage. We provide expert advice on protecting and enforcing these valuable assets.

Our services include:

Drafting and reviewing non-disclosure agreements (NDAs) to safeguard confidential information.
Advising on misappropriation of trade secrets and enforcement of confidentiality obligations.
Representing clients in trade secret disputes, including injunction applications and breach of confidence claims.

Domain Name Disputes

In the digital age, domain names are an integral part of intellectual property. Our team helps clients secure and protect their online identity with strategic advice and legal representation.

Our services include:

Advising on domain name acquisition and registration strategies.
Representing clients in domain name disputes under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and other mechanisms.
Enforcing IP rights against cybersquatting or unauthorized domain name use.

Anti-Counterfeiting and Enforcement

Counterfeiting poses a significant threat to businesses, damaging brand reputation and revenues. Our team offers robust, proactive solutions to combat counterfeiting and safeguard your intellectual property.

Our services include:

Conducting market monitoring and investigations to detect counterfeit activities.
Collaborating with law enforcement authorities to conduct raids and seize counterfeit goods.
Enforcing IP rights through cease-and-desist letters, civil litigation, or criminal prosecution.
Advising on strategies to prevent counterfeiting and unauthorized use of IP assets.

Commercialization of Intellectual Property

Unlocking the commercial potential of intellectual property is key to long-term business success. Our team provides strategic advice to help clients monetize their IP assets effectively and efficiently.

Our services include:

Drafting and negotiating licensing, franchising, and distribution agreements.
Structuring joint venture and collaboration agreements involving IP rights.
Advising on IP-related mergers, acquisitions, and portfolio sales.
Drafting royalty agreements and revenue-sharing arrangements.

Contentious IP Matters and Litigation

When disputes arise, our team has the expertise to represent clients in all types of contentious IP matters, whether through negotiation or litigation.

Our services include:

Trademark, copyright, and patent infringement litigation.
Breach of confidentiality and trade secret disputes.
Domain name disputes and cybersquatting claims.
IP-related contractual disputes, including breaches of licensing agreements.

Intellectual Property

Partner in Charge

Grace H. W. CHU

Consultant

William M. CATLEY

Associates

Paralegals

Luna CHOI
Carrie FONG
Maggie CHENG

Frequently Asked Questions (“FAQs”)

What is a trademark?

A trademark is any sign which is capable of distinguishing your goods or services from those of others. It can include words, letters, characters, numerals, designs, colors, shapes of the goods or any combinations of these.

Why register a trademark?

Once the trademark is registered, you will have the exclusive right to use the trademark in relation to the registered goods and services. You will have the right to take legal actions to stop unauthorized use of your trademarks in relation to the same or similar goods and services; and to seek compensation and other remedies.

What should be considered when designing a trademark?

A trademark should be distinctive and unique. It should not be similar to someone else’s registered trademark or a trademark being applied for. It should not be descriptive of your goods and services or descriptive of the quality or characteristic of your goods and services.

How can I find out if my trademark is similar to someone else’s registered trademark or a trademark pending application?

A search can be conducted at the online Trade Mark Search System of the Trade Marks Registry.

How long does it take to process a trademark application?

Generally, it can take around 6 to 8 months from the date of application to the grant of registration. It can take longer if the trademark application faces objection from the Trade Marks Registry or opposition from other parties.

What should I do if my trademark application is objected by the Trade Marks Registry or opposed by someone else?

The Trade Marks Registry may object an application for registration on the ground of lack of distinctiveness or similarity with an earlier application or other legal grounds. You should seek legal advice from an IP lawyer on whether and how you may overcome the objection(s).

After a trademark is accepted for registration by the Trade Marks Registry, it will be published in the Hong Kong Intellectual Property Journal. If within 3 months from the date of publication, someone files a notice of opposition against your application, then your application will be suspended until after the opposition proceeding is concluded. You should seek legal advice from an IP lawyer on whether you should withdraw your application or defend the opposition.

What is Classification of goods and services?

Currently the goods and services for the purpose of trademark registration are divided into 45 types/ classes. You must list the goods and services and their class number(s) in your application for registration of a trademark. Since a registered trademark may be cancelled for non-use for a period of 3 years or more, you should only select those goods and services on which you are using your trademark or will soon start using.

What is the validity period of a trademark registration?

In Hong Kong, a registered trademark is initially valid for 10 years from the filing date of the application for registration.

Can the trademark registration be renewed?

It can be renewed for further 10-year periods as long as the trademark is still in use and the renewal fees are paid. A registered trademark may however be challenged in revocation proceedings if it is not used for a continuous period of 3 years.

What is the meaning of “TM” and ®?

TM stands for Trade Mark and indicates that a particular word, phrase, logo or sign is being used as a trademark. The TM symbol can be used whether or not the trademark is registered.

On the other hand, ® symbol means that the particular trademark is a registered trademark. In Hong Kong, it is against the law to use the ® symbol if the trademark is not registered in Hong Kong or elsewhere.

What should I do if my trademark is being used by someone else without my permission?

We would suggest that you try to collect evidence of the unauthorized use of your trademark, such as photographs of the products using your trademark, screenshots of the website which display products using your trademark, or even purchase a product which uses your trademark and retain the invoice and receipt for payment. This is important and can help to establish your case. You should then promptly consult an IP lawyer for legal advice on ways to stop the unauthorized use.

Should I register my trademark in Mainland China or Hong Kong?

The Mainland China and Hong Kong have independent legal systems for trademark registration and enforcement. In fact, trade mark rights are territorial in nature. If your trademark is registered in Hong Kong only, it will not enjoy protection in Mainland China or elsewhere. Similarly, if your trademark is registered in Mainland China only, it will not enjoy protection in Hong Kong.

If you use your trademark in Mainland China, for example, your products bearing the trademark are sold or manufactured in Mainland China, you should protect your trademark by applying for registration in Mainland China.

Since most jurisdictions impose use requirements for registered trademark, you should register your trademark only in those countries or places where you use or will soon start using your trademark. It may not be a good idea to register your trademark in countries or places where you do not and will not use your trademark.

Do I have trade mark rights in my company name?

Your company name by itself is not protected as a trade mark despite your company is incorporated and registered with the Companies Registry. In fact there is a “Note” at the bottom of every certificate of incorporation which says “Registration of a company name with the Companies Registry does not confer any trade mark rights or any other intellectual property rights in respect of the company name or any part thereof”.

If you use your company name as a brand name of your goods and services, then you should register your company name/ brand name as a trademark.

Disclaimer

The FAQs in this website are provided for general information purposes. The answers do not take into account your particular circumstances and do not constitute advice from us. The answers should not be regarded as a substitute for professional legal advice. You should seek independent legal advice before taking action on any matters to which the answers may be relevant, or if you have any doubt about how the law applies to you.

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