
James is an IP specialist with extensive experiences in handling IP litigations, contentious, enforcement and advisory matters. He has served world famous luxury brands, dual listed PRC tech giant, a HK unicorn, MNCs, Fortune 500 companies, and HK listed companies.
James’ more recent and notable experiences include:
- Assisting PRC technology giant, Alibaba, in handling their portfolio of offshore trademark contentious proceedings. James has handled over 200 cases in over 40 different jurisdictions for the group. He also represented Alibaba in handling various domain name disputes, company name complaints / litigations and various online brand protection matters.
- Assisting prestigious luxury brand Louis Vuitton in a copyright infringement and passing off case against Belle International in relation to its popular Archlight sneakers (HCA 776/2019).
- Representing Hong Kong Karaoke Licensing Alliance Limited (“HKKLA”) in their Copyright Tribunal dispute against Neway (the biggest Karaoke Chain in HK) (CT 2/2010), involving over HK$90M of licensing fees for Neway’s use of their karaoke music videos. The case lasted over a decade and resulted in a first ever judgment handed down by the Copyright Tribunal.
- Representing Hong Kong Recording Industry Alliance (1 of 6 registered copyright licensing bodies in HK, which represents multinational record companies such as Warner, Sony, Universal etc., “HKRIA”) in handling copyright infringement action against Metro Broadcast Corporation (an HK radio broadcaster) (HCIP 42/2021).
- Representing Malaysia listed snack and confectionery manufacturing business – Oriental Food Industries in an IP infringement dispute commenced back in 2011 against one of HK’s leading importers, exporters and distributors of FMCG food products – Sze Hing Loong (HCA2094/2011).
- Handling the Hong Kong IP enforcement portfolio of and the Hong Kong Customs trademark recordation for French apparel and accessories brands – Sandro, Maje and Claudie Pierlot.
In addition, James has in the past advised clients on privacy policies, IT service agreements and disputes, distributorship agreements, NDAs, celebrity endorsement agreements, ecommerce agreements, manufacturing agreements, sponsorship agreements, website terms, advertising compliance issues, and prepared substantial IP legal opinions (both English and Chinese) concerning company listings on the Main Board of the HK Stock Exchange.
James also has experience in handling employment matters, compliance projects and cyber fraud money recovery actions.
James is a Council Member of the Licensing Executives Society China, Hong Kong Sub-Chapter and an Executive Committee Member of the Hong Kong Automation Technology Council.
James speaks fluent Cantonese, Mandarin and English.
PRACTICE AREAS
INDUSTRIES
PUBLICATIONS
ACCOMPLISHMENTS
EXPERIENCE
- LLB, King’s College London (2009)
- P.C.LL., The University of Hong Kong (2011)
- Admitted as Solicitor, Hong Kong (2013)
- MA (Sociology), Chinese University of Hong Kong (2018)
- Notable Practitioner, Managing IP, 2021
- Rising Star – Intellectual Property, Asialaw Profiles and Leading Lawyers 2022 Edition, 2021
- Rising Stars , Licensing International, 2021
- 19th Annual ALB Hong Kong Law Awards – Young Lawyer of the Year (Law Firm) – finalist, Asia Legal Business, 2020
- Council Member of the Licensing Executives Society China, Hong Kong Sub-Chapter
- Executive Committee Members of the Hong Kong Automation Technology Council
IP Contentious Matters:
- Assisting PRC technology giant, Alibaba, in handling their portfolio of offshore trademark contentious proceedings. James has handled over 200 cases in over 40 different jurisdictions for the group. He also represented Alibaba in handling various domain name disputes, company name complaints / litigations and various online brand protection matters.
- Assisting prestigious luxury brand Louis Vuitton in a copyright infringement and passing off case against Belle International in relation to its popular Archlight sneakers (HCA 776/2019).
- Representing Hong Kong Karaoke Licensing Alliance Limited (“HKKLA”) in their Copyright Tribunal dispute against Neway (the biggest Karaoke Chain in HK) (i.e. CT 2/2010), involving over HK$90M of licensing fees for Neway’s use of their karaoke music videos. The case lasted over a decade and resulted in a first ever judgment handed down by the Copyright Tribunal.
- Representing Hong Kong Recording Industry Alliance (1 of 6 registered copyright licensing bodies in HK, which represents multinational record companies such as Warner, Sony, Universal etc., “HKRIA”) in commencing copyright infringement case against Metro Broadcast Corporation (an HK radio broadcaster) (HCIP 42/2021).
- Representing Malaysia listed snack and confectionery manufacturing business – Oriental Food Industries in an IP infringement dispute commenced back in 2011 against one of HK’s leading importers, exporters and distributors of FMCG food products – Sze Hing Loong (HCA 2094/2011).
- Represented Louis Vuitton, Loewe, Kenzo, Givenchy and Celine in an IP infringement dispute against an infringer (HCA 582/2018) where client successfully obtained mareva injunction and default judgment.
- Represented Unionpay (Chinese bank card association founded by 85 financial institutions in PRC) in a copyright, trademark and passing off dispute.
- Represented Michael Kors in a trademark infringement case (HCA 2819/2017).
- Handling the Hong Kong IP enforcement portfolio of and the Hong Kong Customs trademark recordation for French apparel and accessories brands – Sandro, Maje and Claudie Pierlot.
- Assisted a number of multinational brands in their IP enforcement matters in Hong Kong, e.g. Celine, Givenchy, Loewe, Kenzo, Emilio Pucci, Marc Jacobs, Michael Kors, Versace, Abercrombie & Fitch and La Perla.
- Assisted a Fortune 500 in their PRC Customs enforcement portfolio.
- Handled domain name complaint cases for a number of clients, including PRC technology giant, hotel management brand, luxury fashion group and electronic component manufacturing business.
- Handled Hong Kong company name complaint cases for a number of clients, including PRC technology giant, multinational construction company, luxury fashion groups and Hong Kong listed real estate groups.
Advisory Matters:
- Advised on and issued a number of substantive IP legal opinions regarding registrability and infringement risk of using certain trademarks in relation to company listings on the Main Board of the HK Stock Exchange.
- Provided over 250 pieces of advice regarding legal compliance of advertisements and marketing materials published in Hong Kong.
- Advised an established Hong Kong healthcare food product company on full range of general commercial and compliance matters.
- Advised clients on privacy policies, IT service agreements and disputes, distributorship agreements, NDAs, celebrity endorsement agreements, ecommerce agreements, manufacturing agreements, sponsorship agreements and website terms.