TransAsia maintains an active intellectual property (IP) practice, both independently and as an integral component of our other practice areas. We are particularly active in IP matters relating to heavily regulated and evolving areas, such as the Internet and broadcast media. Our IP team is also active in IP dispute resolution, assisting clients to resolve a wide range of lawsuits, particularly with respect to online and audiovisual copyrights.
Client Services
General IP Matters
- Drafting, negotiating and reviewing contracts
- Developing strategies for IP protection
- Assessing the legal status of IP assets
- Evaluating the strength of legal claims relating to IP
- Advising on trade secrets, know-how and IP enforcement with respect to employees
- Conducting IP-related due diligence
- Investigating IP infringement allegations
IP Registration and other Procedural Matters
- Conducting trademark and domain name searches
- Registering trademarks, copyrights, computer software and domain names as well as handling opposition, cancellation and invalidation proceedings
- Advising on the license, franchise and assignment of IP rights
- Recording IP rights with customs
IP Dispute Resolution
- Enforcing IP rights through administrative proceedings
- Appealing administrative decisions on IP rights
- Litigating IP and domain name disputes
Government Work
We enjoy close working relationships with the key government authorities in this field, including the Ministry of Culture, National Copyright Administration and the Trademark Office under the State Administration for Industry & Commerce.
We have also assisted the State Administration of Radio Film & Television with various research and policy initiatives, including those relating to IPTV and broadcast copyright licensing.
Representative Transactions
- Advised Nokia on its digital rights management system for a new electronic device to be distributed in China
- Represented Qunar.com (leading travel search engine) in its defense of trademark opposition proceedings brought by Guangzhou Quna
- Successfully defended Youku.com (leading Chinese video sharing website) against a claim brought by Shi Ji Long (provider of online television content) for alleged copyright infringement resulting from user uploads of unlicensed television programs
- Advised Duty Free Shoppers (DFS) on its IP protection strategy for China
- Represented Elsevier in its negotiations with cyber-squatters for the transfer of domain names in the .cn space
- Represented Random House on several trademark matters
- Advised the International Olympics Committee during the 2006 Torino Winter Olympic Games on the protection of its IP rights (specifically in respect of online sources) throughout China
- Assisted various multinationals with IP restructuring and ownership arrangements in order to comply with regulatory requirements
- Assisted Electronic Arts to protect its trademarks and copyrights in online-game licensing and cooperation with local partners, including advising on risk analysis and IP strategies
- Obtained a favorable settlement for Youku.com in a copyright infringement case brought against it by TVB, a leading Hong Kong-based broadcaster
- Advised Mtime, a leading PRC movie content website on its litigation against another website for copyright infringement
- Represented Fushi Copperweld on its appeal before the PRC Trademark Review and Adjudication Board for the registration of a trademark
- Successfully defended Qunar.com in persuading the appeals court to overturn the original judgment for copyright infringement
- Assisted Youku.com to significantly reduce previously awarded damages for the alleged copyright infringement of 3 pieces of electronic publications resulting from user uploads
Representative Clients
- Alibaba.com
- American Automobile Association
- Cemex
- CSR
- DFS
- EE Media
- Elsevier
- Gruner+Jahr
- IOC
- Lanvin
- Luitpold
- Melaleuca
- Morningside
- Nokia
- North Light
- Random House
- Starbucks
- Time Warner (Turner Broadcasting)
- True Seating
- Tyco International
- Youku
