Overview

Michelle Yee is a counsel in the IP & TMT group in Mayer Brown's Hong Kong office. She mainly handles non-contentious intellectual property matters. 

Michelle has experience in Hong Kong and foreign trade mark prosecution, trade mark opposition and cancellation actions, intellectual property licences and assignments, franchise agreements, sponsorship agreements, non-disclosure agreements and data protection matters.

Michelle speaks English, Cantonese, Mandarin, Shanghainese and French.

Spoken Languages

  • English
  • Cantonese
  • Mandarin
  • Shanghainese
  • French

Experience

  • 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.

Education

The University of Hong Kong, PCLL

University of Oxford, BA, Jurisprudence

University of British Columbia, BASc, Chemical Engineering

Admissions

  • Hong Kong

Activities

  • Member of The Hong Kong Institute of Trade Mark Practitioners