Michelle G. W. Yee

Michelle holds a chemical engineering degree with a focus in biotechnology. Prior to her legal career, she held roles in biotechnology research and chemical engineering in the oil and gas sector. Her past experiences have provided the leverage for her to furnish clients in the science, engineering and technology sectors with strategic IP protection advice tailored to their specific industry needs with an emphasis on new and emerging technologies. Michelle's prior experience as a regional in-house legal counsel with a global skincare and cosmetics conglomerate allows her to provide clients with practical legal advice that takes into account commercial realities and new ways of doing business, such as online/offline retail models and virtual "try-on" solutions for cosmetics and fashion products.

Michelle has conducted in-depth IP audits for multinational corporations to identify gaps in protection, and advises a number of institutional clients on global and regional brand protection strategies across Greater China and Southeast Asia. Michelle is highly skilled in handling trade mark prosecution matters in China and works closely with Mayer Brown's Beijing trade mark agency to provide practical legal solutions to clients to navigate the constantly evolving legal landscape in this challenging market.

In addition to her depth of experience in brand management work, Michelle is an avid writer and has authored numerous articles on trade mark law within the region, including updates on the introduction of the Madrid international trade mark registration system in Hong Kong, new guidelines issued by the China National Intellectual Property Administration on bad faith filings and blacklisting of trade mark squatters, and the new trade mark law in Myanmar. She is a regular speaker at multiple industry events on brand management topics, including strategies to deal with the increasing use of mobile apps and social media, and potential issues relating to business expansion into the metaverse and NFTs. A long-time member of the Hong Kong Institute of Trade Mark Practitioners, she was also named Rising Star 2020/21 by Managing IP Stars (2020).

• Acted for a UK insurance and financial services conglomerate on contentious and non-contentious trade mark issues worldwide, including prosecuting their worldwide portfolio, preparing trade mark opposition and cancellation actions, advising on company name hijacking, trade mark infringement and enforcement matters.
• Advised a US scouting organisation on a comprehensive filing strategy, potential infringement risks and licensing issues in relation to its trade mark portfolio in Hong Kong and China.
• Advised a US financial and insurance provider on its trade mark portfolio in various Asian jurisdictions, including Hong Kong, Taiwan, Singapore, Malaysia and Thailand.
• Advised a Canadian clothing manufacturer on unfair competition, trade mark infringement, domain name and regulatory compliance issues in various Asian jurisdictions, including China, South Korea, Japan and Indonesia.
• Advised a Hong Kong-listed Chinese technology company on mobile phone and web application agreements and policies, IP license agreements, advertising, copyright and passing off issues, celebrity endorsement agreements, data privacy compliance and trade promotion competition matters in Hong Kong.
• Advising an automobile manufacturer on a number of IP issues following an Asia-wide audit of existing trade mark portfolio which identified gaps in the portfolio and articulated a prosecution strategy, as well as the actions to take to build brand awareness and carry out effective enforcement in Asia.
• Advised a Japanese technology company on data privacy, telecommunications licensing, copyright and consumer protection issues relating to mobile phone applications in Hong Kong.
• Acted for an international pharmaceutical company on patent matters, including preparing and negotiating patent and technology transfer licence and related agreements with a China pharmaceutical manufacturer.
• Acted for an international fast food company on franchise matters, including preparing and negotiating franchise and related agreements for a new Hong Kong franchisee, preparing template franchise documentation for Asia.
• Advised a Canadian engineering company on patent infringement and breach of confidentiality matters in China.
• Advised a Canadian energy company on intellectual property licensing issues relating to a joint venture with a Chinese company.
• Advised an Australian online advertising agency on unfair competition and copyright infringement matters in China, including preparing cease and desist letters and takedown notices.