Clients turn to Grace for her broad experience in contentious and non-contentious matters, ranging from IP clearance, protection and enforcement, local and foreign trade mark matters, company name hijacking, and IP agreements including licensing, franchise, and collaboration agreements. She also advises on data protection matters, including regulatory compliance, privacy risk assessments, and law enforcement requests.
Experience
IP Protection and Enforcement
Advised a US multinational fast-food corporation on the unauthorised use of brand IP by delivery and aggregator service providers arising out of a licensee dispute.
Assisted an American-Swiss pharmaceutical company with a letter of request for witness examination and document protection in support of a US patent litigation.
Advised a local university on an infringement and compensation dispute with a former professor and assisted with reviewing its IP documentation with employees, students, and other inventors.
Assisted a US-based luxury hotel and casino developer and operator with enforcement actions against infringing businesses and designs in Asia Pacific.
Advised one of the largest European sportswear manufacturers on enforcement actions under the Trade Descriptions Ordinance and reasonable diligence defence.
Regularly assists clients with infringement issues, company hijacking matters, domain name recovery, police reports, and complaints with social media platforms, domain name registrars and hosting service providers against fraudulent online activities.
Handles trade mark searches, prosecution, opposition, invalidation and cancellation actions for clients in a wide range of industries, including luxury goods, food and beverage, transportation, real estate, and academic institutions.
Acts for clients in Customs investigation and enforcement actions against counterfeiting activities and consumer protection offences.
Acted for a German high-end electronics manufacturer against parallel importers concerning trade mark and copyright infringement, passing-off and regulatory issues.
Co-ordinated global copyright enforcement actions for a Hong Kong-based toys distributor relating to infringing packaging and product designs.
IP & TMT Advisory
Conducted IP due diligence for a sizeable minority investment by a media and entertainment-focused US investment firm in a US record label.
Advised a US-based luxury hotel and casino developer on regulatory and IP issues concerning a wine-rating competition.
Assisted a resorts and casino developer with the restructuring of intra-group trademark licensing arrangements, review of software agreements, and preparation of a trademark policy.
Advised a local university on its rights and obligations under a software subscription agreement concerning an additional subscription request from the software provider.
Advised a local education provider on termination grounds and post-termination obligations concerning a high value software development contract and assisted with post-termination negotiations.
Provided a local non-governmental organisation with copyright advice on fair dealing and infringement exemptions and issues relating to filming of beneficiaries.
Regularly advises on IP clearance, data protection, trade descriptions, and other regulatory issues surrounding online and offline advertising and filming.
Advised US social media and Chinese e-commerce companies on online platform liability, take-down requests, and regulatory compliance issues relating to the launch of new products.
Prepared and reviewed various IP and technology contracts, including terms of online portal SaaS and mobile apps, advertisement or promotional campaign agreements, artiste agreement, index and IP licensing agreements, memorandum of understanding for academic cooperation programmes, non-disclosure agreements, and settlement agreements.
Data Protection
Advised a local property developer on the justification of collection and processing of biometric data in access control systems and suggested compliance measures.
Advised a private humanitarian organisation on Hong Kong and PRC data privacy compliance regarding its enrolment to an inter-agency employee misconduct scheme and use of a global human resource information system.
Conducted privacy risk assessments for various business initiatives of a transit operator including ticketing systems and use of CCTV.
Advised foreign technology companies on powers of law enforcement authorities to compel disclosure of, or obtain direct access to, personal data.
Advised a Hong Kong food and beverage chain on data protection issues relating to the restructuring of a multi-brand membership rewards program (including reviewing and amending the user terms and conditions, privacy policy, user interface design and content).
Advised a Japanese multinational food and beverage corporation on group personal data protection policy, data incident management procedure, data subject request procedure, and recruitment and employee privacy notices.
