Charmaine Koo > 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, co-head of Intellectual Property practice group

Career

Charmaine is Co-Head of Deacons’ Intellectual Property Department and Head of the IP Litigation and Enforcement, Commercial IP and Entertainment and Media Practices.

Charmaine is admitted as a solicitor in Hong Kong, Canada and England and Wales.  She is also qualified as a barrister in Ontario, Canada.  She has a BSc in biology from the University of Toronto, an LLB from Queen’s University, an LLM from Cambridge University and a Diploma in IP Law and Practice from the University of Bristol.

Charmaine’s wide-ranging practice covers all aspects of IP work from complicated commercial transactions, IT and online business issues, to data privacy and cybersecurity, to advertising, local law compliance and regulatory issues, to anti-counterfeiting strategies and enforcement of IP rights, including complex patent litigation.  She has won a number of high profile court cases resulting in ground-breaking decisions in the Hong Kong IP field including Yakult vs. Yakudo, Guccio Gucci S.P.A. vs. Cosimo Gucci and Tsit Wing (Hong Kong) Company Limited vs. TWG Tea Company Pte Ltd., which went to the Court of Final Appeal and was voted by Managing IP Magazine as the “Hong Kong IP case of the Year 2013”.

She is one of Hong Kong’s leading entertainment lawyers and was previously in-house counsel at one of the world’s largest entertainment and media companies.

Charmaine also has extensive experience advising on all aspects of data privacy, from data privacy audits and regulatory compliance, to handling investigations by the Privacy Commissioner and appeals against the Commissioner’s decisions, as well as handling data breach incidents and strategic advice on complex arrangements regarding sharing and utilisation of data amongst conglomerates and international group companies.

Her clients range from the world’s leading internet service providers, to luxury brand owners, major international film studios, television networks and music publishers, to statutory bodies, conglomerates and multinationals across many sectors.

Charmaine is a prolific speaker on a wide range of IP issues and is the author of the Hong Kong chapters of “Patent Litigation Global Guide” and “Copyright Litigation Global Guide” of the Practical Law Global Guides published by Thomson Reuters (2018).  She is also the author of the Hong Kong chapters of the  third edition of “Data Protection & Privacy – International Series” published by Thomson Reuters (2016), “International Advertising Law” published by Globe Law and Business (2014), as well as the Hong Kong Chapter of the International Independent Film & Television Alliance’s Arbitration Award and Enforcement Guide.

Charmaine is an active member of many committees and advisory bodies including the Advisory Committee on Promotion of Arbitration, Department of Justice (2021-2024)the Design, Marketing and Licensing Services Advisory Committee, HKTDC (2021-2022) and the Domain Name Dispute Resolution Panel, HKIAC (2021-2026).  She is also President of the Licensing Executives Society of China (Hong Kong Sub-Chapter).

Charmaine is the recipient of many awards and accolades including recognition by Chambers Asia Pacific as a Tier 1 Leading Individual in IP in China (2018-2021), by Legal 500 as a Recommended Lawyer in TMT in Hong Kong (2020-2021), by World Trademark Review 1000 a Gold Tier Individual in Enforcement and Litigation in Hong Kong (2016-2021) and by Benchmark Litigation as a Dispute Resolution Star in IP in Hong Kong (2019-2020).

Highlights

  • Successfully defended Alibaba in proceedings commenced in Hong Kong by cosmetics supplier Mary Kay against a number of Alibaba companies and shops on the www.tmall.com platform. The landmark decision clarifies Hong Kong law on parallel imports and liability of online platforms for IP Infringement as well as the jurisdiction of Hong Kong Courts in relation to online sales by platforms based outside of Hong Kong.
  • Acting for a world’s leading mobile phone and computer manufacturer in patent infringement proceedings commenced by another leading mobile phone manufacturer in relation to cellular technology.
  • Representing companies in the Gmedia group in a Hong Kong patent infringement action against Tencent Holdings (the leading mobile internet company in Mainland China) over the use of Gmedia’s QR code technology in Tencent’s Weixin and WeChat products.
  • Successfully acted for Tsit Wing (Hong Kong) Company Limited in its long-running and complex Hong Kong trade mark dispute with TWG Tea Company Pte Ltd, one of the few IP cases to go to the Court of Final Appeal. The case was voted by Managing Intellectual Property Magazine as the “Hong Kong IP case of the Year 2013”.
  • Successfully represented Google in an appeal against the Hong Kong Privacy Commissioner resulting in a landmark decision where the Administrative Appeals Board confirmed the jurisdictional application of Hong Kong privacy law, and that there is no independent “Right to be Forgotten” under Hong Kong law.
  • Advised a leading Chinese multinational technology company specialising in e-commerce, internet and technology on Hong Kong data privacy and consumer protection issues relating to the sale and advertising of consumer products on e-commerce platforms including reviewing and amending terms of service and privacy policies.
  • Advised a major Hollywood film studio on all production legal work including drafting relevant documents in connection with a multi-million dollar film production in Hong Kong and China including agreements for production services, crew and equipment, costume design and corporate guarantees.
  • Advised the owner of the largest Chinese language film library in Asia and a vertically integrated entertainment studio on various legal issues including rights in film libraries, investment and production, chain of title, copyright infringement matters, production of musical and sale and purchase of remake rights.

Languages

English
Cantonese
Mandarin

Memberships

Committee Member, Advisory Committee on Promotion of Arbitration, Department of Justice (2021-2024)

Committee Member, Design, Marketing and Licensing Services Advisory Committee, HKTDC (2021-2022)

President, Licensing Executives Society of China, Hong Kong Sub-Chapter (2017-2019)

Co-chair of Trademarks, Designs, and Merchandising Committee of Lex Mundi

Secretary, Intellectual Property and Entertainment Law Committee, International Bar Association (IBA)

Regional Vice Chair Asia Pacific of the Intellectual Property Practice Group, Lex Mundi

Vice Chairman, Head of Legal Committee of Licensing Executives Society China, Hong Kong Sub-Chapter (2013 & 2014)

Council Member, The Hong Kong Institute of Trade Mark Practitioners

Member, Licensing Executives Society of China, Hong Kong Sub-Chapter

Member, The International Trademark Association

Member, The Asian Patent Attorneys Association

Member, The Law Society of Hong Kong

Member, The Law Society of England and Wales

Education

Dipl. Intellectual Property Law and Practice, University of Bristol, UK 

LLM, Cambridge University, UK 

LLB, Queen’s University, Canada 

BSc, University of Toronto, Canada

Lawyer Rankings

China > Intellectual property: foreign firms

Deacons‘ Hong Kong-based IP team, which also leverages support from representative offices in Beijing, Shanghai and Guangzhou, acts for some of the world’s best-known brands. The firm houses patent attorneys, who are  qualified in Australia, China, Europe and the UK, and has a longstanding track record  in handling large trade mark portfolios and prosecution matters. The IP department is co-led by IP expert Charmaine Koo, and Annie Tsoi, who consistently acts for leading companies from the luxury goods, cosmetics, pharmaceutical, entertainment, fashion and electronics sectors. Also integral to the group are patents and designs practice leader, Catherine Zheng, a specialist in China IP protection strategy and contentious matters; Dora Si, who provides ‘quick responses‘ and ‘firm and concise advice‘, and advises on China-related data privacy and cybersecurity issues; and China-focused technology specialist Ian Liu, who is particularly active in IP litigation and enforcement work, along with commercial IP matters.

Hong Kong > Intellectual property

(Hall of Fame)

Charmaine KooDeacons

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.

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.