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IP Commercial Advisory

We have seen corporations and businesses starting to realize and appreciate the importance of intellectual property, and how such assets have come to be a significant and indispensable part of their assets and business.

At ONC, we assist our clients with various commercial advisory works, such as the role and effect of IP rights in commercial activities such as corporate mergers and acquisitions, joint ventures, reorganizations etc. To assist our clients in developing their businesses, we advise and assist in preparing a wide range of IP related agreements. By proper registration and utilizing its functions, in combination with assignments, licenses, advertising agreements, technology transfer agreements, software development agreements etc., our clients can maintain, enhance and leverage on their position and interests in commercial negotiations and cooperation.

Examples of our work include:

  • preparing license agreements for a Hong Kong listed company in relation to its extensive trade mark portfolio in Hong Kong and PRC;
  • advising a reputable education company on its licensing of software in relation to conducting examinations; and
  • assisting a prominent Korean toy company on its IP portfolio management; and preparation of license agreements.

If you would like to know more about our intellectual property practice or how we can help your business, please contact us at (852) 2810 1212 or at ip@onc.hk.

Please refer to our articles in ‘Knowledge’

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The Japanese brand MUJI lost in a trade mark infringement case to a local Chinese company with an earlier registered mark which highly resembles the former’s well-known trade name. China’s Supreme People’s Court has ultimately ruled against MUJI in an appeal after the claims went on for close to a decade. On 4 November 2019, MUJI was ordered by the Beijing Municipal High People’s Court to pay damages of more than RMB 600,000 (USD 87,000) and publicly apologizing to the local company.
Who pays the costs of implementing a website-blocking order in the context of trade mark infringement?
As a follow up our previous articles, “Website Blocking Order – a Possible Remedy against Trade Mark Infringement on the Internet?“ and “English Court of Appeal Affirms Injunctions Against ISPs for Website Selling Counterfeits“, we now revisit the topic as the UK Supreme Court handed down its long-awaited judgement in Cartier International AG and others (Respondents) v British Telecommunications Plc and Another (Appellants) on 13 June 2018. The UK Supreme Court has overturned the decisions of the lower courts and unanimously ruled that the costs of implementing a website-blocking order in the context of trade mark infringement should be borne by the right-holders, i.e. trade mark proprietors instead of internet service providers (“ISPs”), which are considered as innocent intermediaries merely providing a network which has been abused by others.
How could your FinTech be protected by intellectual property laws in Hong Kong?
The FinTech industry is a highly competitive one driven by innovative ideas and it is essential to devise a comprehensive strategy to protect the products of your innovation and hard work from an early stage. If your FinTech product or service is rooted in ideas and innovation, have you ever think of – How and what extent could your FinTech be protected by Intellectual Property (“IP”) rights? If your business activities involve FinTech, you may need to consider whether and how your interests can be protected in the realm of IP law. In this article, we will start with exploring possible IP protection available to your FinTech, in particular patent protection, followed by protection by copyright for those not patentable parts. After which, protection for your company’s name or your FinTech product or service’s name under the trademark regime will be discussed. Finally, we will share some thoughts regarding possible protection for certain confidential information in relation to your trade, consisting of “know-how” and/or “skills”, which is not typically protected under the patent nor copyright regimes.
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