Overview

Benjamin Choi is a partner of Mayer Brown's IP & TMT Group. Benjamin focuses on local and foreign trademark prosecution (portfolio management, pre-filing advice on availability and distinctiveness of trademarks for registration, handling of official actions and contentious proceedings including opposition, revocation and invalidation actions, post registration matters including assignment, licence and security interest). Benjamin is experienced in conducting IP due diligence for merger and acquisition projects involving the transaction of IP assets. He also advises on trademark, copyright, design and patent enforcement and passing-off actions in Hong Kong and unfair competition in China, as well as domain name disputes in Hong Kong and China.

Benjamin serves as President of the Hong Kong Institute of Trade Mark Practitioners to promote improvements in the trademark and intellectual property law and practice and to encourage cooperation between trade mark professionals in Hong Kong to protect the interests of trade mark owners. He is also currently a member of the INTA Famous and Well Known Marks Committee (East Asia & Pacific Subcommittee).

Benjamin speaks English, Cantonese and Mandarin.

Spoken Languages

  • English
  • Cantonese
  • Mandarin

Experience

  • Advising Ann Taylor Inc, the largest US woman apparel chain, on their trademark issues and handling their registration portfolio in China, Hong Kong, Japan and other Asian countries.
  • Advising a famous youth fashion brand on their trademark issues and handling their trademark portfolio in Hong Kong.
  • Advising LiFung Trinity (Management) Ltd on their Kent & Curwen trademark issues and handling their trademark portfolio in Hong Kong and other Asian countries.
  • Advising Hong Kong Jockey Club on their trademark issues and handling their trademark portfolio in Hong Kong, China, Macau and Taiwan.
  • Advising Hang Seng Bank on their trademark issues and handling their trademark portfolio in Hong Kong, China and other countries worldwide.
  • Advising Hang Lung Properties on their trademark issues and handling their trademark portfolio in Hong Kong, China and other countries worldwide.
  • Advising Wynn Resorts on their trademark issues and handling their trademark portfolio in Hong Kong, China and other Asian countries.
  • Advising Feng Shui Master Mr Choi Pak Lai on a number of trademark oppositions in China to protect his personal name and trade name from unauthorized third party's use and registration.
  • Assisting a number of overseas brand owners to resolve trademark squatting issues in China by strategic planning behind buy-out negotiation.
  • Advising Seven Towns Limited on the protection and enforcement of IP rights in Rubik's Cube in Hong Kong and China.
  • Assisted Seven Towns Limited in succeeding in a domain name dispute before the Hong Kong International Arbitration Centre to close down an infringing site www.rubik.com.hk which was selling infringements.
  • Assisted Seven Towns Limited in successful collaboration with Internet and online retailing service providers such as Alibaba to take down postings of infringements in violation of IP rights subsisting in the Rubik's Cube.
  • Advising Eastman Kodak Company on their trademark issues and handling their registration portfolio in Hong Kong and China.
  • Assisted Eastman Kodak Company in successfully deregistering a Hong Kong company using "Kodak" as part of its company name.

Education

City University of Hong Kong, PCLL

City University of Hong Kong, LLB

Admissions

  • Hong Kong

Memberships

  • Member, INTA Famous and Well Known Marks Committee (East Asia & Pacific Subcommittee)
  • President, Hong Kong Institute of Trade Mark Practitioners
  • Member, International Trademark Association
  • Member, Asian Patent Attorneys Association
  • Civil Celebrant of Marriages
  • Silver Band - Trademark Prosecution and Strategy (Hong Kong) – World Trademark Review 1000 (2016-2019)
  • Recommended Lawyer in Intellectual Property – The Legal 500 Asia Pacific (2015, 2016)
  • Leading Lawyer in Trademarks – Who’s Who Legal (2015)
  • Leading Practitioner: China (Trade Mark: Greater China International Firms) – Expert Guides (2012)