Recognized by Asian Legal Business (2015) as one of the top lawyers under the age of 40 in Asia, Alan Chiu has received close to 30 awards as a leading IP and entertainment lawyer in Hong Kong and China. Under his leadership, ELLALAN has been recognized as a Tier 1 Copyright/ Trademark firm in Hong Kong in 2019 despite our relatively young history.
Since 2002, Alan has been focusing on both contentious and transactional intellectual property matters and covering also data privacy, advertising law, competition law, e-commerce, digital forensic, internet security as well as mediation and arbitration. In particular, Alan has handled a number of headline IP litigation in Hong Kong and is renowned for his sophisticated strategies in handling cross-border and convoluted IP disputes for global fashion brands, technology giants, artists and celebrities. He has a substantial entertainment practice, working closely with A-list artistes, film directors, film production companies, music labels, animation designers as well as music/ movie royalty collecting societies. He is uniquely positioned in understanding and handling artist and entertainment matters in Hong Kong and Mainland China.
Before combining with Ella Cheong to run his own firm ELLALAN, Alan was a partner at Mayer Brown JSM and then Hogan Lovells, responsible for managing both their Hong Kong and China IP, Media and Technology practices. Alan was also the Managing Director of Mayer Brown JSM’s Beijing IP Agency and led their Beijing IP team, where he gained substantial experience in managing IP practices and developed close relationships with government officials and IP lawyers/professionals of different levels in the Greater China Region.
With an IT forensic background, Alan advises and speaks extensively on artificial intelligence, blockchain, crypto-currency, e-commerce, social media, online consumer protection, cybersecurity and data privacy matters. He also has extensive experience in assisting clients in handling digital forensic issues in civil proceedings concerning counterfeiting, software copycats, online defamation, misappropriation of trade secrets and message authenticity of instant messaging app. He is currently a member of the InnoTech Committee of the Law Society of Hong Kong and a member of the INTA Enforcement Committee.
He is an accredited mediator, a China-Appointed Attesting Officer appointed by the PRC Ministry of Justice, a Civil Celebrant and an Adjunct Professor of Law appointed by Hong Kong Shue Yan University.
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EXPERIENCE
- LLB, City University of Hong Kong
- LLM in Computer & Telecommunications Law, King’s College London
- P.C.LL., City University of Hong Kong
- LLM in IP & IT laws, The University of Hong Kong
- PgDlp in IT Forensics, The University of Hong Kong
- Admitted as Solicitor, Hong Kong (2004)
- China Appointed Attesting Officer
- Civil Celebrant of Marriages
- Accredited Mediator, Law Society of Hong Kong, Hong Kong International Arbitration Centre and Hong Kong Mediation Accreditation Association Limited
- Vice-Chairperson of Practice Management Committee, The Law Society of Hong Kong
- Adjunct Professor of Law, Hong Kong Shue Yan University
- Member, HK Group, Asian Patent Attorneys Association (APAA)
- Committee Member of the Joint Committee for the Promotion of the Basic Law of Hong Kong
- Practising Solicitor Member of the Solicitors Disciplinary Tribunal Panel
- Committee Member of INTA Enforcement Committee
- Distinguished Practitioner – Asialaw Profiles
- Managing Partner of the Year – Finalist, Asian Legal Business, 2024
- Silver in IAM Reasearch, IAM Patent 1000 Ranking, 2024
- IP Expert, Asia IP, 2024
- WIPR Leader, World IP Review, 2023
- Distinguished Practitioner – Intellectual Property, Asialaw Profiles and Leading Lawyers 2022 Edition, 2021
- Commercial Litigation Expert of the Year in Hong Kong – The Lawyer Network, 2023
- Intellectual Property Law Expert of the Year in Hong Kong – The Lawyer Network, 2023
- Lexology Client Choice Awards 2021 – Intellectual Property – Copyright, Lexology, 2021
- Managing Partner of the Year – Finalist, Asia Legal Business, 2020
- Asia Top 15 IP Lawyers – Asia Legal Business, 2022
- Managing Partner of the Year – Finalists- Asian Legal Business, 2022
- Managing Partner of the Year – Finalist, Asian Legal Business, 2021
- Asia Super 50 Disputes Lawyers – Asian Legal Business, 2021
- Top 40 Lawyers under the age of 40 in Asia, Asia Legal Business, 2015
- Distinguished practitioner – Intellectual Property – Hong Kong, Asialaw Regional Awards, 2020 and 2023
- Litigation Star (Hong Kong), Benchmark Litigation Asia-Pacific, 2021 and 2022
- IP Expert, Asia IP, 2022
- Dispute Resolution Star – Intellectual Property, Benchmark Litigation Asia-Pacific, 2019 and 2020
- Ranked as IP Star (Hong Kong, Trademark), Managing IP, 2016, 2017, 2018, 2019, 2020 and 2023
- Recommended Lawyer (Hong Kong: Patent Transactions), IAM Patent 1000, 2015, 2016, 2017, 2018 and 2020
- The World’s Leading Patent Professionals – Transactions, IAM Patent 1000, 2021
- Leading Individual: Silver Tier in Enforcement and Litigation (Hong Kong), WTR 1000, 2023
- Leading individuals: enforcement and litigation, WTR 1000, 2018, 2019, 2020 and 2021
- Leading individuals: transactions, WTR 1000, 2018, 2019, 2020 and 2021
- Recommended – Individuals: Enforcement and Litigation, WTR 1000, 2022
- Recommended – Individuals: Transactions, WTR 1000, 2022 and 2023
- Managing IP Asia Pacific Awards – Practitioner of the Year – Managing IP, 2023
- Ranked as IP Star (Hong Kong, Patent), Managing IP, 2014 and 2015
- Ranked as IP Star (China, Trademark), Managing IP, 2015
- Recommended Lawyer (Hong Kong: Patent Litigation), IAM Patent 1000, 2015, 2016, and 2017
- Leading practitioners in Patent Transactions, IAM Patent 1000, 2019
- “Up and Coming Lawyer” – Chambers Global 2019 – China, Intellectual Property (International Firms), Chambers and Partners, 2019
- “Up and Coming Lawyer” – Chambers Global 2017 – China, Intellectual Property (International Firms), Chambers and Partners, 2017
- Top lawyers – Chambers Greater China Region Guide 2023 (Intellectual Property) – Chambers and Partners, 2023
- Leading trademark expert, WTR 1000, 2018
- Recommended Lawyer, WTR 1000, 2017
- World’s Leading Trademark lawyer, Who’s Who Legal, 2022
- World’s Leading Patent Lawyer, Who’s Who Legal, 2022
- Thought Leaders Mainland China and Hong Kong SAR – Patent, Who’s Who Legal, 2022
- Patents 2019 – World’s Leading Patents Lawyer, Who’s Who Legal, 2019
- Leading patent lawyers, agents and attorneys, Who’s Who Legal: Patents 2018, 2018
- Intellectual Property: Trademark awards, Client Choice Awards 2018, 2018
- Consumer Protection Solicitor of the Year: Hong Kong 2018, Finance Monthly Global Awards 2018, 2018
- Most Influential Intellectual Property Lawyers 2019 – Hong Kong, 2019 Global Excellence Awards, 2019
- Chambers Global 2017 Guide, 2017
- Individual Gold Award, The Law Society Pro Bono and Community Service Award, 2017, 2018, 2019, 2020 and 2023
- Individual Silver Award, The Law Society 2016 Pro Bono and Community Service Award, 2016
- IP Lawyer of 2017, LawyerIssue Awards, 2017
- Mainland Related Legal Services Solicitor of 2017, Hong Kong, Finance Monthly Global Awards 2017, 2017
- Intellectual Property – Solicitor of the Year – China, Lawyer Monthly Legal Awards, 2017
- Consumer Protection Solicitor of the Year – Hong Kong – Lawyer Monthly Legal Awards, 2017
- Hong Kong – Intellectual Property Lawyer of the Year, The ACQ5 Global Awards, 2017
- Arbitration & Mediation – Solicitor of the Year – Hong Kong, Lawyer Monthly Private Client Awards, 2017
- Commercial Litigation Expert of the Year in Hong Kong, Global Advisory Experts, 2023
- Commercial Litigation Expert of the Year in Hong Kong, The Lawyers Network, 2022
- Commercial Litigation Expert of the Year in Hong Kong, Global Law Experts, 2022
- Intellectual Property Law Expert of the Year in Hong Kong, The Lawyer Network , 2022
- Intellectual Property Law Expert of the Year in Hong Kong, Global Law Experts, 2022
- Intellectual Property Law Expert of the Year in Hong Kong, Global Advisory Experts, 2023
- Intellectual Property Law Expert of the Year in Hong Kong, Corporate INTL,2023
- Commercial Litigation Expert of the Year in Hong Kong, Corporate INTL, 2023
- “The Visionaries” category of the 2023 edition of The A-List 2023, China Business Law Journal, 2023
- China’s Elite Lawyers (Foreign Lawyers) – The 2022 A-List, China Business Law Journal,2022
- Advising a luxury jewellery brand on a wide range of IP and related issues covering copyright registration, trademark licensing, customs recordation and seizures, anti-counterfeiting programmes in Hong Kong and China, copyright infringement and passing off litigation (successfully obtaining an interlocutory injunction against a major online jewellery seller), shadow company name complaints, cross-border infringement issues, trademark portfolio and branding strategies in the APAC region
- Represented Wong To Yick Wood Lock Ointment Limited and Mr. Wong To Yick in an unfortunate family saga which involved a lengthy trademark infringement and passing-off Hong Kong litigation, contempt of court proceedings, various PRC enforcement actions (including customs seizure, administrative raid, civil litigation and administrative litigation), trademark infringement litigation in the US as well as trademark opposition and cancellation proceedings in over 16 countries. All disputes were successfully settled after litigating for 11 years
- Defending a Hong Kong High Court passing off litigation (including an interlocutory injunction application) as well as trademark revocation and opposition proceedings for one of the leading Mainland futures companies
- Advising one of the world’s leading luxury brand conglomerates on anti-counterfeiting matters and IP litigation in Hong Kong, covering a total of 7 famous fashion brands
- Defended a headline trade name and trade mark litigation for a renowned restaurant group in Hong Kong and assisted the client to reach a settlement expeditiously and successfully removed the obstacle for the client’s plan for initial public offering
- Handling Hong Kong IP enforcement matters (including trademark and passing off litigation) and PRC customs seizure matters (over 200 cases) for a renowned American fashion label with over 1,000 stores around the world
- Led the China IP team in handling a huge PRC IP enforcement portfolio of over 100 matters for a world leading engine manufacturer
- Advising on the IP aspect of a headline shareholders’ dispute concerning a Michelin star Chinese restaurant chain which presence in Hong Kong, China and Japan
- Handling over 100 PRC trademark oppositions and advising on trademark licensing and enforcement matters in China for one of the world’s largest tire companies
- Successfully defending a patent infringement claim and a copyright infringement litigation (at Summary Judgement Stage) for a famous listed construction company in Hong Kong
- Handling a copyright infringement litigation and trademark invalidation proceedings in Hong Kong and a PRC trademark dispute for a leading savings bank in Europe
- Assisting 10+ brand owners to handle and clear complicated and messy issues of squatters of trade marks in China
- Handled around 40 company name complaint cases and Hong Kong IP enforcement matters (including a passing-off litigation) for a famous Japanese consumer electronics brand owner
- Handling an IP enforcement program (including a successful raid action against a Guangzhou subject) for one of the world’s furniture fittings market leaders
- Assisting a luxury luggage brand to tackle copyright infringement, trademark infringement and passing off issues in Hong Kong
- Advising a famous luxury fashion brand on customs seizures, trademark enforcement and litigation in Hong Kong and China
- Handling an IP enforcement portfolio pursuing over 20 local / PRC subjects for a famous US multi-purpose lubricant brand owner, including takedown of infringing postings on online trade portal sites
- Handled a large IP enforcement program pursuing over 30 local / PRC subjects for a multi-national kitchenware manufacturer
- Advised and handled PRC trademark oppositions and enforcement matters for one of the world’s largest brewery
- Handled a large IP enforcement program pursuing over 100 local / PRC subjects for the world’s leading flashlight manufacturer as part of their brand protection project
- Advised a major theme park in Hong Kong on patentability and licensing issues of its inventions
- Assisting one of the world’s leading software giant in anti-software piracy laws matters
- Advised various local and US companies on cloud computing contracts
- Advised a Hong Kong NGO on user’s terms and conditions for a smartphone app
- Advised a US technology MNC on various IT contractual disputes
- Handled software copyright registration matters in China for a Hong Kong software house
- Advised a world leading engine manufacturer on technology transfer issues in joint venture arrangement in China
- Assisted in tackling objectionable or fraudulent websites and complaining to ISPs and web hosting companies
- Invited to speak on legal concerns in cloud computing at the HKU Cloud Computing Conference and the 4th Annual Cloud World Forum Asia in 2013
- Co-authoring a book chapter on licensing issues in cloud computing for the University of Hong Kong
- Handling the Asia domain name portfolio for a leading US women apparel brand
- Handling the Asia domain name portfolio for the operator of two US high-end department stores
- Drafted and filed 20+ domain name complaints for various Fortune 500 companies and MNCs
- Advised in due diligence exercises on targets possessing domain names and Internet/wireless keywords
- Advised on domain name recovery strategies for various brand owners
- Advising a Taiwan based online music platform market leader on Hong Kong data protection compliance issues
- Advised a luxury jewellery brand for compliance issues with the new direct marketing regime under the Personal Data (Privacy) Ordinance and assisted in reviewing the related communications, PICS and policies
- Advised a Dubai based hotel group on data protection compliance issues in China
- Advising a Hong Kong NGO on personal data protection issues arising from its smartphone app and social media sites
- Advised a female artist on her TV programme-shooting contracts
- Advised a famous Hong Kong male movie star on all legal issues, particularly in relation to trademark and domain name matters
- Assisted two veteran Asia megastars in handling defamatory litigation in Hong Kong
- Advised on PRC investment projects by a famous Hong Kong male singer
- Advising an up-and-coming handbag designer on all Hong Kong and PRC manufacturing, distribution, sourcing, marketing and contractual matters
- Advised a renowned fashion chain-store operator for their operations (for over 70 stores) in the Greater China Region
- Advised a Canadian backpack brand on their e-commerce operations in China
- Advised a Hong Kong listed company group in negotiating a significant PRC IP licensing deal with a Japanese brand owner involving more than 30 cartoon characters and 1,300 trademarks
- Conducted various briefings / training sessions on the changes to the Trade Descriptions Ordinance and advised on policies and complaints
- Negotiated intellectual property indemnities and software licences in a major aircraft purchase deal
- Gave an extensive legal opinion (bilingual) on company name and trademark conflict issues for a PRC technology client as part of its IPO project and responded to the HK Stock Exchange and the Securities & Futures Commission’ enquiries
- Advising a UK based plush toy manufacturer on recovery of mould from its Chinese factory
- Advising on the TV programme licensing and merchandising arrangement for a famous Japanese cartoon character in Asia
- Assisted in various cross-border M&A deals and led the team in conducting IP due diligence exercises for different M&A transactions. One of the representative deals is Nestle’s US$11.85 billion acquisition of Pfizer’s infant nutrition business
- Advised various local universities and tertiary institutions on their IP policies, ownership issues and licensing deals
- Advised Wong To Yick Wood Lock Ointment Limited on drug import licence issues, IP valuation and shareholder dispute
- Gave an extensive legal opinion (in English) on company name and trademark conflict issues for a renowned restaurant group based in Hong Kong as part of its IPO project
- Handling high-valued tenancy matters for leading property developers