Lilian Shi
PEOPLE

Lilian Shi

Partner
shi.lilian@dorsey.com

Overview

LILIAN HELPS CLIENTS ON VARIOUS GREATER CHINA RELATED INTELLECTUAL PROPERTY MATTERS IN TRADEMARK, PATENT AND COPYRIGHT AND APPLIES HER EXTENSIVE KNOWLEDGE OF CHINA’S IP LAWS TO HELP CLIENTS TO ENTER OR EXPAND BUSINESS IN GREATER CHINA.

As a Partner in the Hong Kong Office of Dorsey & Whitney, Lilian’s practice covers a broad range of IP work with a focus on China-related IP matters.

Lilian is experienced in trademark prosecution, anti-counterfeiting and contentious IP matters in China. Her practice spans brand and copyright protection, domain name disputes, technologies, licensing and franchising. Lilian is also experienced in managing trademark portfolios for multinational clients.
Lilian’s practice area also includes patent prosecution, enforcement and related advisory work.

Lilian is a contributor to Dorsey’s critically-acclaimed IP Blog, TheTMCA.com, which focuses on legal developments in the world of TradeMarks, Copyrights, and Advertising. TheTMCA.com and the Firm’s Trademark Practice Group have been recognized in JD Supra’s 2022 Readers’ Choice Awards.

Education & Admissions

University of Auckland (LL.B., 2004)

Hunan University of PRC (B.S., Engineering, 1991)

Admissions

  • Hong Kong
  • China (currently inactive)

Languages

  • English, Mandarin, Cantonese

Experience

Representative Experience

  • Represented a non-profit inter-government trade organization based in New York in trademark proceedings before the PRC Trademark Review and Adjudication Board seeking to overturn rejections of its trademark applications by the PRC Trademark Office
  • Represented a well-known online jewelry company based in Seattle in court appeals seeking to overturn unfavorable trademark opposition review decisions
  • Represented a New York-based jewelry company in a trademark invalidation proceeding seeking to recover pirated house brand from a Chinese squatter in China
  • Represented a US medical device company in a trademark proceeding in China seeking to recover its Chinese house mark
  • Assisted the world’s largest travel luggage company in securing design registrations in Hong Kong
  • Assisted a US designer, manufacturer and distributor of personal and oral care products in patent prosecution in China
  • Counseled and assisted a US designer, manufacturer and distributor of personal and oral care products in settling a patent dispute with a Chinese individual and successfully transfer title into client’s name
  • Advised a non-profit inter-government trade organization based in New York on a trademark infringement matter in China
  • Advised a non-profit inter-government trade organization based in New York on a membership and contractual dispute
  • Assisted a number of US multinational companies in copyright registration matters in China

News & Resources

Articles

China Abolishes Legalization Requirement on Foreign Public Documents and Adopts Apostille
Update regarding trademark proceedings in China: Rules on Suspension of CNIPA Trademark Proceedings
2023 China Trademark Legal and Practice Updates for Foreign Brand Owners
China Issues its First Court Judgment on NFT Infringement
How Far Can Injunctions Go? Part II: The Extraterritorial Reach of Trademark Injunctions from U.S. to Europe
How Far Can Injunctions Go? Part I: The Extraterritorial Reach of Trademark Injunctions from Hong Kong to China
Important Trademark Development from China for 2022: What US Brand Owners Need to Know
Advantages of Voluntary Copyright Registration in China Explained
CNIPA Issues Systematic Guidelines for Determination of Trademark Infringement in Administrative Enforcement Actions
Protecting Famous Names in China – Michael Jordan and His Eight-Year Trademark Battle in China
Effective November 1: Amendment of PRC Trademark Law Aims to Combat Bad Faith Applications
China IP Legal Update – China Anti-Unfair Competition Law Amended
Sound Marks in China
"Protecting Famous Names," Managing Intellectual Property
It's All in the Name: Protect Your Own
Keeping an eye on the latest IP developments

News & Press Mentions

Dorsey’s Trademark Lawyers and Offices Ranked in 2024 World Trademark Review 1000
Dorsey China Practices and Attorneys Recognized in The Legal 500 Greater China 2024 Edition
Dorsey Wins China Business Law Journal 2022 Cross-Border Deal of the Year Award
Dorsey’s Trademark Lawyers and Offices Ranked in the 2023 World Trademark Review 1000
Dorsey IP Practice Recognized by Asian Legal Business
Dorsey’s Trademark Lawyers and Offices Ranked in World Trademark Review 1000
Dorsey’s China Practices and Attorneys Receive Multiple Legal Awards and Rankings
德汇中国业务及律师近期荣获多个法律奖项和排名
Dorsey’s China Intellectual Property and Dispute Resolution Practices Recognized by Legal 500 Asia Pacific
Dorsey’s Trademark Lawyers Ranked in World Trademark Review 1000
Dorsey’s Hong Kong Office Recognized by Legal 500 for Intellectual Property
Dorsey & Whitney Names New Partners
Dorsey Nationally Ranked and Named Trademark Law Firm of the Year by "U.S. News – Best Lawyers" Best Law Firms
Dorsey Named One of Top Trademark Firms

Select Presentations

  • “Taking the Judicial Route,” with Cedric Lam, China IP Focus 2011
  • “Spotlight on IP Rights Protection and Enforcement,” with Cedric Lam and Janet Wong, IP Value 2013
  • “How Employee-Inventors are Protected,” with Cedric Lam and Janet Wong, China IP Focus 2013
  • “It’s All in the Name,” with Cedric Lam and Sherry Zeng, China IP Focus 2014
  • “Keeping an Eye on the Latest IP Developments,” with Cedric Lam and Janet Wong, IP Value 2014

Industries & Practices

Patent Prosecution, Portfolio Strategy & Management
  • Asia-Pacific
  • China
  • Energy & Natural Resources
  • Food, Beverage & Agribusiness
  • Healthcare & Life Sciences
  • Hong Kong
  • Intellectual Property
  • Intellectual Property Litigation
  • Patent Prosecution, Portfolio Strategy & Management
  • Technology Commerce
  • Trademark & Copyright

Professional & Civic

Professional Achievements

  • Pro-bono work for Animal Asia Foundation

Accolades

     L500 APAC Recommended Lawyer 2024  Legal 500 Asia Pacific Recommended Lawyer 2022

  • Recommended by Legal 500 Asia Pacific in Intellectual Property (Hong Kong), 2022-2024
  • Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2021-2024
Lilian Shi