Overview

Michelle is a counsel in the IP & TMT group in Mayer Brown’s Hong Kong office and is Head of Brand Management (Asia). She focuses in all aspects of brand management work and has extensive experience in regional (in particular Hong Kong and Greater China) and global trade mark prosecution, opposition, revocation/invalidation and cancellation actions, copyright and design registrations, intellectual property licences and assignments, franchise agreements, sponsorship agreements, non-disclosure agreements and data protection matters. Michelle focuses on providing clients with effective, practical and cost-efficient brand management strategies to strengthen and maintain their intellectual property portfolios in Asia and worldwide.

Michelle holds a chemical engineering degree with a focus in biotechnology, and worked as a biotechnology researcher and in the oil and gas industry prior to her legal career. She leverages her technical knowledge to provide 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 regional in-house legal counsel at a global skincare and cosmetics conglomerate allows her to provide clients with practical legal advice that takes into account commercial realities as well as 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, with a particular focus on Greater China and other jurisdictions in Southeast Asia. Michelle travels regularly to Beijing and works closely with Mayer Brown's Beijing trade mark agency on trade mark prosecution matters in China, allowing her to provide her clients with the most updated and practical legal solutions to navigate the constantly evolving legal landscape in this challenging market.

Michelle has written numerous articles on the latest developments in trade mark law within the region, including on the introduction of the Madrid international trade mark registration 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 regularly gives client seminars on IP portfolio management and protection in Greater China, and on brand management in the digital era, taking into account the increasing use of mobile apps and social media, and potential issues relating to business expansion into the metaverse and NFTs.

Michelle is a long-time member of the Hong Kong Institute of Trade Mark Practitioners and has actively contributed to the field. She was also named Rising Star 2020/21 by Managing IP Stars (2020).

Spoken Languages

  • English
  • Cantonese
  • Mandarin
  • Shanghainese
  • French

Experience

  • Advised leading global and Hong Kong financial institutions on trade mark and IP matters, including managing their regional and global trade mark portfolios, conducting clearance searches for new business lines and advising on strategic filings to cover digital banking solutions.
  • Advised a pan-Asian FCMG retail and wholesale group on branding strategy and securing trade mark registrations for their innovative consolidated customer loyalty rewards programme covering their extensive retail and food and beverage businesses across Hong Kong.
  • Advised a leading Hong Kong-listed real estate group on their global trade mark portfolio, with a particular focus on contentious and non-contentious trade mark matters in Greater China. 
  • Advised various entities and business units (including businesses in real estate development, hospitality, food and beverage, aviation and shipping) of a Hong Kong- and London-based diversified conglomerate on their global trade mark portfolio. Key types of trade mark work include prosecution, oppositions, invalidations, cancellations / revocations, licensing, assignments and enforcement matters.
  • 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
  • Rising Star 2020/21 – Hong Kong – Managing IP IP Stars (2020)