Solicitors

Michelle Yee

Work Department

Intellectual Property, Trademark

Position

Michelle is a partner in the IP group and is the head of JSM’s Brand Management. Her practice covers all aspects of brand management work such as global trademark prosecution, opposition, revocation/invalidation and cancellation actions, copyright and design registrations, intellectual property licences and assignments, franchise agreements, sponsorship agreements, non-disclosure agreements and data protection matters. Michelle has a strong track record advising both multinational and Asian businesses with a particular focus on Hong Kong and Greater China. She regularly assists clients with effective, practical and cost-efficient brand management strategies with the goal to strengthen and maintain their intellectual property portfolios in Asia and globally.

Michelle holds a chemical engineering degree with a focus in biotechnology. Prior to her legal career, she held roles in biotechnology research and chemical engineering in the oil and gas sector. Her past experiences have provided the leverage for her to furnish clients in the science, engineering and technology sectors with strategic IP protection advice tailored to their specific industry needs with an emphasis on new and emerging technologies. Michelle's prior experience as a regional in-house legal counsel with a global skincare and cosmetics conglomerate allows her to provide clients with practical legal advice that takes into account commercial realities and new ways of doing business, such as online/offline retail models and virtual "try-on" solutions for cosmetics and fashion products.

Michelle has conducted in-depth IP audits for multinational corporations to identify gaps in protection and advises a number of institutional clients on global and regional brand protection strategies across Greater China and Southeast Asia. Michelle is highly skilled in handling trade mark prosecution matters in China and works closely with JSM's Beijing trade mark agency to provide practical legal solutions to clients to navigate the constantly evolving legal landscape in this challenging market.

In addition to her depth of experience in brand management work, Michelle is an avid writer and has authored numerous articles on trade mark law within the region, including updates on the introduction of the Madrid international trade mark registration system in Hong Kong, new guidelines issued by the China National Intellectual Property Administration on bad faith filings and blacklisting of trade mark squatters, and the new trade mark law in Myanmar. She is a regular speaker at multiple industry events on brand management topics, including strategies to deal with the increasing use of mobile apps and social media, and potential issues relating to business expansion into the metaverse and NFTs. A long-time member of the Hong Kong Institute of Trade Mark Practitioners, she was also named Rising Star 2020/21 by Managing IP Stars (2020).

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