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 and has extensive experience in Hong Kong, Mainland China and foreign trade mark prosecution, trade mark 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 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 expertise to provide clients in the science, engineering and technology sectors with strategic IP protection advice to cater for new and emerging technologies. Michelle's prior regional in-house experience at a global skincare and cosmetics conglomerate allows her to provide clients with practical legal advice taking into account commercial realities as well as new ways of doing business, such as online/offline retail models, and the increasing use of AI technologies and innovative software to enhance customer experience.

Michelle has conducted in-depth IP audits for multinational corporations to identify gaps in protection, and advised institutional clients on global and regional brand protection strategies, with a particular focus on Greater China and other jurisdictions in Southeast Asia. Although based in Hong Kong, Michelle travels regularly to Beijing and works closely with Mayer Brown's Beijing trade mark agency on trade mark prosecution matters in China, which allows her to provide clients with practical strategies for protecting their brands in China and dealing with trade mark hijackers and infringers.

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

Michelle is a member of The Hong Kong Institute of Trade Mark Practitioners.

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