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.

Legal 500 Editorial commentary

Testimonials

Collated independently by Legal 500 research team.

  • '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.

Practice head

The lawyer(s) leading their teams.

Janet Wong

Other key lawyers

Lilian Shi