Intellectual and Industrial Property
Kim Gwang Partners advise clients on how to navigate the legal minefield in which intellectual property interests clash with unscrupulous industrial copying and technical ingenuity. With the setting up of our wholly owned intellectual property agency (Hong Hu & Associates (Beijing) Intellectual Property Agency Limited) in PRC in 2012, RBJL offers direct registration and enforcement services tailored to the specific needs of our clients.
We assist clients on IP acquisition, exploitation and enforcement. Over the years, we have represented numerous overseas, multi-national and local companies in relation to their intellectual property matters. We represented parties in arguably two of the largest patent trials in the legal history of Hong Kong. We also represented two copyright licensing bodies and a number of record companies in a number of cases at the Copyright Tribunal against the biggest television station and the largest karaoke chain in Hong Kong.
Kim Gwang Partners have been selected by Asia IP magazine to be one of the 10 top IP firms in Hong Kong for three consecutive years (2011 – 2013) and by Asian Legal Business (ALB) magazine to be a leading Full Service IP Law Firm 2010. For the second year in a roll, RBJL have been placed in the prestigious Silver Tier by the 2014 World Trademark Review 1000. RBJL is also listed in the Intellectual Property Category of The Legal 500. RBJL has also persistently maintained high rankings in the annual worldwide surveys conducted by Managing Intellectual Property magazine for Patents, Trade Marks and Copyrights in Hong Kong.
Our services include:
Acquisition
- Devising Chinese and English trade marks in accordance with clients’ needs
- Providing opinions on trade mark registrability and availability for use
- Filing and prosecuting trade mark applications in Hong Kong, China and worldwide
- Appearing before the Registrar of Trade Marks in Hong Kong at registrability hearings
- Lodging trade mark oppositions, cancellation, rectification and invalidation proceedings in Hong Kong, China and other jurisdictions
- Filing reviews with the Trademark Review and Adjudication Board as well as filing appeals with the People’s Court in China
- Due diligence of IP assets, including due diligence on validity of patents
- Providing patentability advice
- Drafting patent specifications
- Devising worldwide patent filing strategies
- Filing and prosecuting patent and design applications in Hong Kong, China and worldwide
- Issuing proceedings at the High Court of Hong Kong seeking post-grant amendments to Hong Kong Standard Patents and Hong Kong Short Term Patents
- Providing patent non-infringement opinion
- Patent landscaping
- Managing and maintaining worldwide trade mark, patent and design portfolios for clients
- Recordal of licences, assignments, change of legal entity, change of address etc.
- Copyright registrations in jurisdictions such as China, USA
Exploitation
- Sale and purchase agreements and assignment of IP assets
- License agreements, and recordal at the relevant IP Offices worldwide
- Franchise agreements
- Character merchandising, endorsement and sponsorship
- Distribution agreements
- Development agreements
- Know-how agreements
- Confidentiality agreements
- Joint venture agreements involving acquisition of IP rights, structuring of proprietorship among the joint venture group of companies
- Monitoring third parties’ patent, design and trade mark rights
Enforcement
- Tackling offending company names
- Watching services
- Monitoring trade fairs
- Investigating and obtaining evidence of infringing activities
- Preparing, lodging request and liaising with Hong Kong and PRC Customs on the enforcement of trade marks and copyright including requesting actions by the Hong Kong Customs during various international trade fairs that take place in Hong Kong
- Issuing and defending civil proceedings for or against IP related infringement
- Applying for interim injunctive relief, including Anton Piller Orders
- Initiating administrative, criminal and civil actions in China against IP infringement
- Representing copyright licensing bodies and copyright owners at the Copyright Tribunal
- Issuing contempt proceedings
