Deacons

Intellectual Property practice group

Partner

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.

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Member, The Law Society of Hong Kong

Bachelor of Laws, University of Auckland, 2004

PCLL, City University of Hong Kong, 2008