Dorsey & Whitney > Hong Kong, Hong Kong > Firm Profile

Dorsey & Whitney
Room 2802, 28th Floor, Alexandra House
18 Chater Road
HONG KONG
Hong Kong

Hong Kong > Intellectual property Tier 4

Led by Janet Wong, Dorsey & Whitney's Hong Kong-based IP offering excels in providing patent and trade mark portfolio management work for large brand owners, where it adds value by virtue of its international network, as well as the firm’s core underlying primary focus on work in the space. As well as its core brand management focus, the team also handles ad-hoc IP due diligence-related to firm-wide transactional work, as well as a considerable volume of IP enforcement work, often with a nexus to the US.

Practice head(s):

Janet Wong

Other key lawyers:

Lilian Shi

Testimonials

Dorsey & Whitney has continuously provided us with invaluable insight and knowledge when we have had to deal with complex international litigation matters in recent years, especially in Hong Kong and China.’

They provide advice in a creative and cost-effective manner.’

Janet Wong and Lilian Shi have done an excellent job advising us on how to handle and respond to numerous trade mark enforcement and prosecution matters.’

Key clients

Mayo Clinic

Chow Tai Fook Jewellery Co., Ltd.

Hearts on Fire Company, LLC

World Trade Centers Association, Inc.

Samsonite IP Holdings Sarl / Samsonite Asia Limited / Tumi, Inc.

The Institute of Electrical and Electronics Engineers Inc.

Sangraf International Hong Kong Limited

LKK Health Products Group Limited

Novalearn Limited

Lee Kum Kee Company Limited

Work highlights

  • Representing long-term client Mayo Clinic in successful trade mark opposition/invalidation actions brought against a group that manufactures and sells healthy drinks bearing its mark with operations in multiple cities in Mainland China.
  • Represented Hearts On Fire Company, LLC, the US subsidiary of Chow Tai Fook Jewellery in maintaining its global trade mark portfolio in over 30 jurisdictions since 2016 and in co-ordinating extensive trade mark searches and successfully obtaining trademark registrations for a new sub-brand and a new house logo in various jurisdictions.
  • Advised a worldwide trade association in successfully preventing the dilution of its brand in the logistics business in multiple jurisdictions by pursuing oppositions across multiple jurisdictions and ultimately reaching a very favourable settlement that the logistics group agreed to cease using the disputed mark.

China > Dispute resolution: Litigation: foreign firms Tier 4

With ‘excellent experience in large-scale, cross-border work‘, Dorsey & Whitney LLP represents individuals, business entities and governments in complex disputes. The firm’s Mainland China offices’ litigation practice is led by Ray Liu, whose practice covers both cross-border disputes and US litigation. At associate level, Justin Wang focuses on cross-border commercial litigation.

Practice head(s):

Ray Liu

Other key lawyers:

Testimonials

The Dorsey China dispute resolution team possesses the industry’s top legal professional capabilities.’

‘Rich experience in foreign-related litigation, a flexible and steady work style, and timely and efficient client service capabilities.’

‘Able to minimise the risks and difficulties that clients have to face.’

‘The team has many years of extensive practical experience and can provide companies with important strategic predictions, decision-making assistance, and the final resolution of disputes.’

‘Over the years, the firm has adopted a series of innovative mechanisms, such as: hiring senior lawyers with experience in the legal departments of multinational companies; flexible charging mechanisms that are closer to the Chinese market; and fully combining its rich network of local lawyers in North America and Europe to provide clients with a package of dispute resolution solutions.’

‘Demonstrates superb management skills and rich collaboration experience.’

‘Excellent experience in large-scale, high-profile, cross-border work. The firm is also a trailblazer in the emerging field of legal technology.’

In addition to receiving excellent legal services from the firm’s China team, clients benefit from the firm’s experienced, foreign front-line legal experts.’

Key clients

China Huarong International Holdings

China Huarong Asset Management Co

Bank of China

China Construction Bank

TikTok Pte

ByteDance

PICC Property & Casualty Company

CITIC Agri Fund Management Co

Longping Agriculture Science Co

Nongfu Spring Co

Changzhou Fusion New Material Co

Risen Energy Co

Risen Energy America

Work highlights

  • Represented TikTok (and its parent company), as lead counsel, throughout the dispositive motion stage of a trade mark and unfair competition dispute.
  • Representing a major overseas investment vehicle and the subsidiary of China Huarong Asset Management Co in a complex commercial dispute in the High Court of Hong Kong over a note purchase agreement.
  • Acted for PICC Property & Casualty Company, as well as a number of its insureds, in a variety of civil actions, product liability litigation and coverage disputes.

Our dorsey Hong Kong office has served as a crucial connector both into Asia and from Asia to the United States and the rest of the world since 1995.

Since opening in 1995, Dorsey’s Hong Kong office has provided a wide range of services to clients with business interests in Asia, as well as Asia clients conducting cross-border business throughout the world.

Our Hong Kong office is comprised of qualified, multi-lingual lawyers and legal professionals who have worked in multiple jurisdictions including, PRC, Hong Kong, England & Wales, and the United States. Admitted to full practice in Hong Kong, our Hong Kong office advises on local, regional and international corporate and commercial transactions across the Asia-Pacific region, the United States, Europe and Canada.

Attorneys in the Hong Kong office practice in the areas of corporate advice and transactional matters, dispute resolution and intellectual property. Our practice groups in Hong Kong offer a multi-disciplinary and industry-focused approach to handle client legal matters in the areas of arbitration, capital markets, corporate governance, dispute resolution, mergers and acquisitions, intellectual property and restructuring.

Our clients include Fortune 500 companies, financial institutions, blue chip conglomerates, PRC real estate developers, technology companies, well-known consumer brands, private equity firms and family offices.

Beyond the Asia-Pacific region, the Hong Kong office team works seamlessly with colleagues in the United States, Europe and Canada to provide a “one-stop” international legal service solution for Asia/China-based clients.

The Dorsey Hong Kong corporate team has advised on large award-winning M&A, capital markets, corporate finance and private equity transactions. The lead corporate partners, Simon Chan and Hilda Chan, have decades of experience handling complicated cross border transactions for clients around the world. Clients include Fortune 500 companies, Hong Kong and China’s top real estate companies and HKEX listed conglomerates. With decades of experience in international capital markets, the team covers both ECM and DCM work. With the team’s multi-lingual skills, it is well suited to handle the needs of international and Asia/China-based clients. The team is best known for advising founders’ boards and senior management of international businesses to find practical legal and business solutions in a complex and uncertain world. Our Hong Kong team works seamlessly with Dorsey’s legal experts in the United States, mainland China, Canada and London to provide a one stop solution for our clients’ international legal needs.

Dorsey’s Greater China intellectual property team is best known for its comprehensive and holistic approach of brand formulation, management and protection in Greater China. With over 20 trademark attorneys globally, the Greater China intellectual property team is part of an extensive network of internationally recognized intellectual property practitioners around the world. The team handles a broad range of intellectual property matters in Asia, with a particular focus on trademark in Greater China. Equipped with industry knowledge, our lawyers provide tailored solutions to multinational corporations in a broad range of industries in relation to building up and maintaining intellectual property rights and to implementing brand protection and licensing strategies in China and Hong Kong. To further maximize value for our clients, many of our lawyers speak multiple languages that are needed for cross-border transactions, including structuring and negotiating licensing agreements, IP commercialization, and distribution and franchising agreements.

Dorsey & Whitney has a strong reputation for handling cross-border disputes. With offices in most of the principal legal and financial centres of the world, the firm’s lawyers have acted for individuals, corporates and governments in the resolution of disputes governed by the laws of civil and common law jurisdictions as well as international law and treaties such as those affecting foreign direct investments. The Hong Kong- and mainland China-based members of this firm-wide practice have in recent years been instructed in litigation and arbitration proceedings involving corporate acquisitions, shareholder disputes, contentious insolvencies and a wide variety of commercial matters, preponderant among them cases relating to investments or transactions in China or offshore investments or businesses of Chinese clients. Financial institutions, including banks, investment funds, private equity firms and high-net-worth individuals, are prominent in the client base of the firm’s contentious practice in Asia, but our experience in that field spans a wide range of industries including biotechnology, agriculture, manufacturing, mining and mineral processing, petroleum refining, specialized chemical and automotive components. Our disputes lawyers have native fluency in Cantonese and Mandarin as well as English.

Our Hong Kong office works closely with our two other offices in China in Shanghai and Beijing to provide a one stop solution for our clients. Our partners in charge, Ray Liu and Karen Fan in mainland China lead a full-service team counselling international clients on their market entry, investment, business operations, compliance and dispute resolution in mainland China. The team in China also work seamlessly with our US, Canada and London offices to provide multi-jurisdictional international legal services for our Asia/China-based clients.

Department Name Email Telephone
Hong Kong Office Head | Mergers & Acquisitions Simon Chan chan.simon@dorsey.com (852) 2105-0273
Hong Kong | Capital Markets Hilda Chan chan.hilda@dorsey.com (852) 2105-0215
Hong Kong | Commercial Litigation Katherine Cheung cheung.katherine@dorsey.com (852) 2105-0216
Hong Kong | Commercial Litigation Steve Nelson nelson.steve@dorsey.com (612) 340-2942
Hong Kong | Intellectual Property Lilian Shi shi.lilian@dorsey.com (852) 2105-0229
Hong Kong | Intellectual Property Janet Wong wong.janet@dorsey.com (852) 2105-0266
Beijing Office Head | Commercial Litigation Ray Liu liu.ray@dorsey.com (86-10) 8513-5988
Shanghai Office Head | Mergers & Acquisitions Karen Yiqin Fan fan.karen.yiqin@dorsey.com (86-21) 6135-6145
English (fluent)
Chinese (including Cantonese and Mandarin)