Janet Wong
PEOPLE

Janet Wong

Partner
wong.janet@dorsey.com

Overview

JANET IS A HIGHLY EXPERIENCED AND VERSATILE LEGAL PROFESSIONAL SPECIALIZING IN INTELLECTUAL PROPERTY, CORPORATE TRANSACTIONS, AND COMMERCIAL LITIGATION, PROVIDING COMPREHENSIVE LEGAL SOLUTIONS TO LOCAL AND MULTINATIONAL CLIENTS.

Janet is the head of Dorsey's Hong Kong office and the head of Dorsey's Greater China intellectual property group. She is a highly experienced and versatile legal professional, with over two decades of expertise in intellectual property matters in Greater China. She has a strong background in corporate transactions, general commercial litigation, and financial disputes.

Janet excels in formulating global IP protection strategies, managing global IP portfolios, and handling IP-related transactions. She is skilled in drafting and negotiating various IP-related agreements, including IP licensing agreements, distribution agreements, and manufacturing agreements.

In addition to her IP specialization, Janet has a deep understanding of corporate law and regularly advises clients on corporate and other commercial transactions. She also has a proven track record in handling general commercial litigation cases and financial disputes, providing strategic guidance and effective representation.

With her expertise spanning intellectual property, corporate transactions, general commercial litigation, and financial disputes, Janet is a trusted and well-rounded legal advisor, offering comprehensive legal solutions to individuals and businesses.

Education & Admissions

Tsinghua University and the University of Hong Kong School of Professional and Continuing Education (Second Bachelor Degree in Chinese Law, 2007)

University of Hong Kong (P.C.LL, 2001), with distinction

University of Hong Kong (L.L.B., 2000), with honors

Admissions

  • Hong Kong
  • New York
  • England & Wales (non-practising)
  • China's Greater Bay Area (non-practising)

Languages

  • English, Cantonese and Mandarin

Experience

Representative Global IP Portfolio Management

  • Serving as the lead IP counsel for a U.S.-based luxury diamond company owned by a Hong Kong conglomerate, our team has been responsible for maintaining its global trademark portfolio across 30 jurisdictions since 2016. We have conducted extensive trademark searches and successfully filed applications for a new sub-brand and a new house logo in various jurisdictions. Additionally, we have provided patent filing strategies for its affiliate in multiple Asian jurisdictions, ensuring comprehensive IP protection
  • Developed branding strategies for Asia rollout of new brand name, slogan and logo design for a renowned traditional Chinese medical practitioner and his nutritional food company, including maintenance of a portfolio of trademarks in multiple jurisdictions in Asia Pacific
  • Created and implemented a strategy for client’s new Chinese character mark that involved applying for several variations of mark and filing strategic non-use cancellations against potentially blocking registrations

Representative Litigation

  • Regularly advise the largest financial asset management company in China and other clients in financial dispute cases from formulating litigation strategies, pursuing civil actions in Hong Kong or other jurisdictions, advising on enforcement of judgement or securities, addressing compliance issues, and providing guidance on insolvency and bankruptcy proceedings
  • Regularly provide counsel to both local and multinational clients in in cross-border or international commercial fraud cases, including seeking freezing orders against defendants’ bank accounts, obtaining discovery orders against bank accounts for purpose of tracing and recovery of assets in Hong Kong, the U.S., UK, and other jurisdictions 
  • Represented the world’s largest integrated non-profit medical group in trademark infringement and anti-unfair competition actions before the People’s Court in China
  • Represented an Alaska native corporation in freezing US$3.8 million in a bank account in Hong Kong which was transferred as a result of cyberattack, and obtaining discovery order against said bank account in order to pursue asset recovery
  • Represented the world’s largest integrated non-profit medical group in a civil action in Hong Kong restraining a shadow company from using objectionable Chinese and English company names
  • Represented a non-profit and non-political international association in an appeal before the Chinese court seeking to overturn an unfavorable trademark opposition review decision issued by the PRC Trademark Review and Adjudication Board
  • Represented a Hong Kong pharmaceutical consulting company in defending an application for an interlocutory injunction in Hong Kong in which the plaintiff sought to restrain the client from selling certain drugs for weight management
  • Advised a U.S. manufacturer of personal and oral health care products on gray goods and counterfeiting issues in China; represented them in disputes with current and former distributors; counseled them on trademark licensing issues
  • Acted for the world’s largest travel luggage company in a number of company name complaints and striking off actions against shadow companies in Hong Kong
  • Regularly assist a global leader and innovator in semiconductor solutions in protecting proprietary and confidential information
  • Assisted a well-established early learning education center in Hong Kong in defending a trademark opposition in Hong Kong
  • Represented the world's largest private nonprofit educational testing and assessment organization in disputes with former distributor and trademark licensee and its franchisees due to breach of distribution agreement and trademark license agreement as well as trademark and copyright infringement
  • Advised and represented the world's largest private nonprofit educational testing and assessment organization on online copyright / trademark infringement cases
  • Advised one of the largest conglomerate and Fortune 500 company on trademark infringement, passing off and theft of trade secrets issues in Hong Kong and China; regularly act for them in a number of company name and domain name disputes
  • Counseled a European manufacturer of luxury garments in trademark infringement proceedings before the People's Court in China including successfully obtaining a pre-action asset and evidence preservation order against the infringer
  • Regularly act for multinational clients in anti-counterfeiting actions, trademark opposition proceedings in Greater China as well as ICANN and CNNIC domain name disputes before the Hong Kong International Arbitration Centre

Representative Transactions

  • Represented a long-term industrialist investor in a substantial equity investment transaction, leading a funding round and raising US$310 million, while also assisting in corporate and IP due diligence for licensed patent portfolios
  • Represented a prominent Hong Kong-based distributor of premium craft beverages with global establishments, facilitating the acquisition of a brewing facility in Hong Kong to enhance production capacity and expand their offerings to discerning clientele
  • Counselled a high end lifestyle Chinese restaurant chain based in Hong Kong with respect to its global franchising activities, from preparing franchise agreements, trademark license agreements and consulting agreements to conducting trademark clearance searches and filing trademark applications in Asia, Middle East and North America
  • Represented a global company that designs, develops, manufactures and markets medical devices for the treatment of vascular diseases in restructuring its global trademark and patent portfolios
  • Counseled a U.S. provider of advanced wound care products with respect to technology licensing arrangements and regulatory issues in China relating to a US$4 million acquisition of a privately held wound care company with proprietary technologies and products
  • Advised the largest electronics and electrical equipment company ranked by the Fortune 500 on the transfer and license back of a large number of wholly and jointed owned patents and know-how in the divestiture of its embedded computing & power business
  • Represented the world's largest integrated non-profit medical group in the licensing of medical contents to a leading provider of health risk management services based in Shanghai
  • Represented an innovative, international educational software company that designs and develops educational online service for children in drafting, reviewing and negotiating term sheets, reseller agreement, partner agreement, software license agreement with different Chinese parties for the sale and distribution of software-as-a service offering to end users in China
  • Represented a leading U.S. designer and manufacturer of innovative consumer electronic products in acquiring a portfolio of trademarks in Asia
  • Advised a leading U.S. designer and manufacturer of innovative consumer electronic products in potential acquisition of a worldwide trademark portfolio from a competing brand
  • Represented an exclusive distributor of renowned household cleaning products in brand and know-how acquisition in Greater China
  • Performed IP due diligence for a private equity fund's investment in a pioneer manufacturer of the silicon power battery; advising them on IP issues in the ensuing acquisition
  • Advised multinational companies listed or to be listed on the Hong Kong Stock Exchange on IP-related issues
  • Regularly draft and negotiate IP-related agreements including software license agreements, technology transfer agreements, non-disclosure agreements, trademark license agreements and IP assignment agreements
  • Regularly structure, draft and negotiate various kinds of distribution agreements, reseller agreements, supply agreements and manufacturing agreements
  • Regularly conduct IP audit and manage IP portfolio for multinational clients
  • Advised on registration of copyright works, computer software and integrated circuits in China
  • Advised on cross-border IP protection issues, including customs recordal, enforcement as well as organizing trainings for customs officials
  • Successfully secured trademark registrations for one of the largest cartoon content providers in China in a substantial number of classes of goods and services in Hong Kong

Other Experience

  • Regularly guide multinational and local clients through the complexities of complying with employment laws and data privacy laws in Hong Kong
  • Advised clients on website terms of use and privacy polices
  • Advised clients on cross-border data transfer, data security and data breach issues in Hong Kong
  • Regularly draft and review employee handbooks, employment agreements, proprietary agreements
  • Regularly represent clients on termination of employment and employment disputes
  • Prepared and conducted FCPA training program for the Hong Kong / China staff of a New York-listed wheelchair manufacturer and distributor

News & Resources

Articles

Navigating Data Breach Notification and Prevention in Hong Kong: A New Comprehensive Guide in Hong Kong
Navigating Data Breach Notification and Prevention in Hong Kong: A New Comprehensive Guide in Hong Kong
Protecting Against Business Email Scams and Recovering Funds Wired to the United States
Recent Trends in Wire Fraud Scams: Uncovering and Tackling the Latest Tactics in Hong Kong
Hong Kong PCPD Releases Recommended Data Security Measures
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
The Legal Practice and Prospect to Enforce the Civil and Commercial Judgment Mutually Between Mainland China and HK
Criminalizing Doxxing Acts: New Amendments to Hong Kong’s Data Privacy Law
Criminalizing Doxxing Acts: New Amendments to Hong Kong’s Data Privacy Law
中国企业的国际仲裁(系列六):第三方资助可行吗?
PRC Companies in International Arbitration: Is it costly to arbitrate in Hong Kong?
中国企业的国际仲裁(系列三):在香港仲裁 ,费用真的很高吗?
Hong Kong Prepares to Implement the Madrid Protocol and Makes Other Changes: Trade Marks (Amendment) Ordinance 2020
Thinking about franchising in Hong Kong? Read This First.
Effective November 1: Amendment of PRC Trademark Law Aims to Combat Bad Faith Applications
The PRC E-Commerce Law on IP protection
China’s Greater Bay Area Puts Hong Kong in the Lead as Super Connector to the World
Hong Kong Email Wire Fraud Epidemic - How to retrieve funds and prevent wire fraud
Guide to Protecting Against Email Wire Fraud Scams and Recovering Funds Wired to Hong Kong
Keeping an eye on the latest IP developments
“China & Hong Kong - Recent Developments in Intellectual Property”, IP Value: Building and Enforcing Intellectual Property Value, 2007-2013 eds.
“How employee-inventors are protected”, Managing Intellectual Property - China IP Focus 2013
“Protecting copyright online”, Managing Intellectual Property - China IP Focus 2010

News & Press Mentions

Chambers Greater China Region Guide Honors Dorsey’s IP Practice
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
Asian Legal Business Honors Dorsey’s Patents and Copyright & Trademark Practices
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’s Trademark Lawyers Ranked in World Trademark Review 1000
Dorsey Names Janet Wong as Head of Greater China Intellectual Property
Dorsey Named One of Top Trademark Firms
Law360 Names Attorneys Who Moved Up The Firm Ranks In Q1
Dorsey & Whitney Names New Partners

Select Presentations

Industries & Practices

Cybersecurity, Privacy & Social Media
Educational Publishing, Technology & Services
International Arbitration & Litigation
Patent Prosecution, Portfolio Strategy & Management
  • Anti-Corruption Group
  • Antitrust & Competition Law
  • Asia-Pacific
  • China
  • Commercial Litigation
  • Corporate Governance & Compliance
  • Creative Industries
  • Cybersecurity, Privacy & Social Media
  • Educational Publishing, Technology & Services
  • Food, Beverage & Agribusiness
  • Franchise & Distribution Law
  • Healthcare & Life Sciences
  • Intellectual Property
  • Intellectual Property Litigation
  • International Arbitration & Litigation
  • Lending Transactions
  • Mining
  • Patent Prosecution, Portfolio Strategy & Management
  • Technology
  • Trademark & Copyright

Professional & Civic

Professional Achievements

  • Treasurer, Licensing Executives Society China, Hong Kong sub chapter (2021-present)
  • Member, The Sedona Conference
  • Member, Law Society of Hong Kong 
  • Member, Law Society of England & Wales 
  • Ordinary Member, the Hong Kong Institute of Trade Mark Practitioners
  • Member, Asian Patent Attorneys Association Hong Kong
  • Member, International Trademark Association
  • Member, International Trademark Association, Alternative Dispute Resolution Committee (2024-2025)
  • Member, International Trademark Association, Unreal Campaign Committee (2016-2017)

Accolades

L500 APAC Recommended Lawyer 2024 The Legal 500 Recommended Lawyer 2023 Legal 500 Asia Pacific Recommended Lawyer 2022 The Legal 500 Asia Pacific Recommended Lawyer 2021

  • Recommended by Legal 500 Asia Pacific in Intellectual Property (Hong Kong), 2021-2024
  • Recognized as a Notable Practitioner in Chambers and Partners Greater China Region Guide, 2024
  • Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2020-2024
Janet Wong