Kelley Loo > 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

Kelley is a Partner in the IP Commercial & Litigation Practice.

Kelley is qualified as a solicitor in Hong Kong and New Zealand.  She holds a Bachelor of Laws degree from the University of Auckland, New Zealand and has obtained Postgraduate Certificate in Laws from the City University of Hong Kong.

Kelley has been advising on contentious and non-contentious IP issues for over a decade and combines extensive experience in Trade Marks Registry matters, IP enforcement and litigation, as well as commercial IP.  Her broad practice ranges from brand clearance and trade mark strategy, to anti-counterfeiting and litigation, advertising and local law compliance, commercial IP documentation including franchising, licensing, assignments and distribution agreements.

Kelley also advises on all aspects of data privacy including data privacy audits, regulatory compliance and strategic advice, investigations by the Privacy Commissioner and, in particular, the handling of data breach incidents.

Kelley’s clients range from luxury brand owners and biotech companies, to government bodies, sports equipment manufacturers and technology and telecoms companies.

Kelley also acts as an on-site legal advisor at major trade fairs in Hong Kong and regularly conducts presentations on IP rights and enforcement mechanisms to IP owners at trade fairs.

Highlights

  • Successfully obtained an interim interlocutory injunction on behalf of companies in the Nerium Group (the manufacturer of well-known skincare products), in trade mark, passing off and breach of contract proceedings and arbitration in Hong Kong, in a case which involved complex cross-border strategy and multi-jurisdictional court and trade mark office proceedings.
  • Successfully acted for the Spalding Group, a leading sports equipment manufacturer, in a Hong Kong case involving trade mark infringement, infringing company names and passing off proceedings, where the court recognised the SPALDING marks as well-known and ordered the defendant to change its infringing company name.
  • Represented a world leading mobile phone and computer manufacturer on patent infringement proceedings brought in Hong Kong by another major mobile phone manufacturer in connection with complex technology relating to over 80 patents covering the transmission of data packets. The case was part of a global dispute with multiple concurrent litigations worldwide.
  • Successfully resisted an urgent ex parte interim injunction on behalf of a government funded research and development entity in relation to claims concerning misuse of trade secret and breach of agreement.
  • Assisted a NYSE-listed manufacturer of signal transmission equipment on a data breach incident involving multiple jurisdictions, resulting from inadvertent disclosure of personal data, including handling of the data breach notification and investigations by the Privacy Commissioner.
  • Advised a multinational investment company headquartered in the US on strategies to handle a data breach incident involving a student competition.
  • Advised a well-known Hong Kong cafe chain on licensing and franchising issues relating to a joint venture with a Singapore public listed food and beverage company.
  • Acted on behalf of a research and development centre specializing in nanotechnology and advanced materials in conducting a comprehensive review of its standard agreements, document templates and preparation of new agreements.

Languages

English
Cantonese
Mandarin
Malay
Hokkien

Memberships

Member, The Law Society of Hong Kong

Education

Bachelor of Laws, University of Auckland, 2004

PCLL, City University of Hong Kong, 2008

Lawyer Rankings

Hong Kong > TMT

Housing practitioners with technology and science backgrounds, Deacons‘ TMT practice is particularly active in relation to digital assets. Its experience covers cryptocurrencies and the tokenisation of assets, blockchains, smart contracts and the metaverse. The team can also draw upon the expertise of the firm’s experienced IP, corporate and commercial practices. Charmaine Koo‘s practice covers IP litigation, data privacy and entertainment; and Machiuanna Chu regularly advises new economy clients and emerging businesses, including technology companies, cryptocurrency issuers and fintech companies (among others). On the IP side, Ian Liu, Kelley Loo and Amy Chung are also active partners.

Hong Kong > Intellectual property

Long-established Hong Kong law firm Deacons works for several of the world’s best-known brands on both their trade mark portfolios and complex prosecutions. It also houses a dedicated patent team, comprising patent attorneys who are qualified in Australia, China, Europe and UK. Another strength is IP litigation, while sector strengths for the group include consumer goods, financial services, TMT, life sciences, luxury goods, hospitality, entertainment, and electrical, electronic and mechanical manufacturing. The IP department is co-led by court litigation specialist Charmaine Koo, and Annie Tsoi, who also heads the China IP practice group. Also integral to the team are trade mark portfolio protection expert Patsy Lau; Jeffrey McLean, who is experienced in the technical and patent aspects of contentious matters; and Hong Kong and New Zealand-qualified Kelley Loo. Emmy Chow is a partner as of January 2022, while Theresa Luk and Eliza Siew are the senior associates to note.