Joanna S. F. Hui

Senior Associate

Overview

Joanna Hui helps US, Asian and European clients with brand protection and enforcement strategies. Joanna advises clients on both contentious and non-contentious matters globally, ranging from global trade mark prosecution, opposition, revocation/ invalidation and cancellation actions, IP protection and enforcement, customs clearance and recordal, domain name hijacking, company name hijacking to IP agreements, including co-existence agreements, licenses and assignment agreements. Joanna also advises clients on enforcement strategies against counterfeiting and brand hijacking in mainland China and other Asian jurisdictions.

Experience

  • Advising one of the largest manufacturers of engines and related parts on both contentious and non-contentious issues, including prosecuting their trade mark portfolio, preparing trade mark oppositions and cancellation actions, advising on domain name hijacking, trade mark infringement and enforcement strategies against counterfeiting in Hong Kong, mainland China, Vietnam, South Korea, Indonesia and other Asian jurisdictions.
  • Advising a listed American manufacturer of filters and related parts on both contentious and non-contentious issues, including prosecuting their trade mark portfolio, preparing trade mark oppositions and cancellation actions, advising on domain name hijacking, trade mark infringement and enforcement strategies against counterfeiting in mainland China, Vietnam, Malaysia, Indonesia and other Asian jurisdictions.
  • Advising an American multinational technology company on brand protection, trade mark prosecution, opposition, revocation/ invalidation and cancellation actions in mainland China.
  • Advised an American multinational technology company on IP agreements, including co-existence agreements, licenses and assignment agreements, with other technology companies.
  • Advised multinational clients on trade mark issues on OEM manufacturing in mainland China.

  • Advising one of the largest global spirits companies on trade mark opposition, revocation/ invalidation and cancellation actions in mainland China.
  • Advised a leading Hong Kong financial institution on trade mark infringement and company name hijacking in mainland China.
  • Advising a Hong Kong tertiary institution on brand protection and manging their IP portfolio in Hong Kong, mainland China and other jurisdictions.
  • Advising Hong Kong educational institutions on brand protection and manging their IP portfolio in Hong Kong, mainland China and other jurisdictions.
  • Advising an American multinational company on enforcement and trade mark prosecution matters in Hong Kong.
  • Advising a Hong Kong telecommunication company on brand protection and manging their IP portfolio in Hong Kong, mainland China and other jurisdictions.
  • Advised a swimwear company on IP agreements with a Chinese company.
  • Advising a Hong Kong food and beverage chain on brand protection in Asian jurisdictions and managing their IP portfolio.
  • Advising a Hong Kong sports governing body on filing strategy and non-contentious trade mark issues in Hong Kong, mainland China and other jurisdictions.
  • Advising an American luxury retailer on non-contentious trade mark issues in mainland China.

Qualifications

Education

  • The Chinese University of Hong Kong, PCLL
  • The Chinese University of Hong Kong, LLB , First Class Honours

Admissions

  • Hong Kong

Languages

  • English
  • Cantonese
  • Mandarin