Dora Si > Deacons > Hong Kong, Hong Kong > Lawyer Profile

Deacons
5TH FLOOR, ALEXANDRA HOUSE
18 CHATER ROAD, CENTRAL
HONG KONG
Hong Kong

Work Department

Intellectual Property practice group

Position

Partner

Career

Dora is a Partner in the China IP Practice.

Dora is admitted as a solicitor in Hong Kong and England and Wales. She holds a LLM (Commercial and Corporate Law) degree from the University College London and a LLB (Hons) degree from the University of Hong Kong.

Dora’s practice covers all aspects of China IP protection and enforcement. She has supported many multinational and Asian businesses in IP portfolio management, and has extensive experience in brand protection, particularly brand selection, re-branding, and conducting trade mark opposition proceedings and settlement negotiations. Dora has handled complex cross-border and online infringement cases, involving administrative actions and contentious proceedings in China and has successfully obtained well-known trade mark recognition for international clients in China.

Dora advices on a wide range of commercial IP transactions including e-commerce issues, advertising compliance, celebrity rights, licensing, franchising and distribution. She has represented many clients in relation to IP audits, due diligence for mergers and acquisitions, technology transfer, and technology development cooperation.

Dora also advises on China-related data privacy and cybersecurity issues including advising on the legal framework for the protection of personal data, important data, confidential information, trade secrets and state secrets in China, cross-border data transfer issues, data privacy audits, policies and compliance strategies.

Highlights

  • Advising on copyright transfer in China for a US video games and software company.
  • Successful recordal of franchise for a Swedish furniture wholesaler in China.
  • Advising on distribution and licensing arrangements involving garments and home products for a global sourcing firm based in Hong Kong.
  • Advising a US-based cosmetic and personal care corporation on data protection issues in relation to its launch of a new e-commerce platform including local law compliance of its global privacy policy and website terms and conditions.
  • Advising a Hong Kong-listed conglomerate on the compliance requirements to facilitate the cross-border transfer of personal data from Mainland China to Hong Kong, including preparing template data transfer contracts and data protection clauses in employees’ contract and assisting with self-security assessment.
  • Managing trade mark portfolios in China and Hong Kong for multinational clients including a US-based direct sales company, a leading US car manufacturer, a world leading fashion magazine, a global banking card company and a US-based food manufacturer.
  • Successful petition on behalf of a French veterinary pharmaceutical company to Beijing Communications Authority to close down website suspected of trade mark infringement in China.
  • Successful advising a US-based technology company in relation to a .CN domain name dispute and limitation issues.
  • Advising a US-based sports equipment company in trade mark proceedings in China resulting in recognition as a well-known trade mark.

Languages

English
Cantonese
Mandarin

Memberships

Member, The Law Society of Hong Kong

Member, The Law Society of England and Wales

Member, The International Association for the Protection of Intellectual Property (AIPPI)

Member, Licensing Executives Society of Hong Kong

Member, ITechLaw

Education

LLM (Commercial and Corporate Law), University College London, 2005

LLB (Hons.), University of Hong Kong, 2003

Lawyer Rankings

China > Intellectual property: foreign firms

Deacons fields a deep bench comprising patent attorneys qualified in Australia, China, Europe and the UK, all of whom are well-versed in large trademark portfolios and prosecution matters. Headquartered in Hong Kong, the team further draws on support from representative offices in Beijing, Shanghai and Guangzhou. The dual-qualified Annie Tsoi (China and the UK) advises on all aspects of IP and is an advisor to leading global companies in the luxury goods, cosmetic, pharmaceutical, entertainment, fashion and electronics sectors. Tsoi co-heads the practice with the triple-qualified Catherine Zhen (New York, Canada and China) who specialises in China IP protection strategy and contentious matters. Other recommended individuals include Dora Si, whose expertise further spans setting up e-platforms and partnerships with local e-commerce platforms for foreign clients, and Tracy Li, who was promoted to partner in January 2023.