Janet Wong
PEOPLE

Janet Wong

Partner, Head of Greater China Intellectual Property
wong.janet@dorsey.com

Overview

JANET HELPS CLIENTS FORMULATE AND IMPLEMENT BRAND PROTECTION STRATEGIES. SHE ALSO HELPS CLIENTS RECOVER ASSETS IN FRAUD CASES.

Janet has 18 years of experience in handling a wide range of intellectual property matters in Greater China. She is experienced in formulating brand protection strategies, managing trademark portfolios and handling IP-related transactions, including acquisition, franchising and licensing of IP rights, on a worldwide basis, for both local and multi-national clients. Janet also regularly advises on anti-counterfeiting and other IP enforcement actions, including trademark infringement and copyright piracy actions as well as company name and domain name dispute resolutions proceedings.

Janet is also involved in a variety of civil disputes and litigations with a particular focus on intellectual property, commercial and corporate matters. She helps clients in freezing and recovering assets in financial fraud cases. She is also head of the Firm’s Greater China Intellectual Property (IP) Group.

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)

Languages

  • Fluent in English, Cantonese and Mandarin

Experience

Representative Brand Management

  • 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 Hong Kong, China, Taiwan, Macau, Singapore, Malaysia, Japan, South Korea, New Zealand, Australia
  • 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

  • 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
  • Advised a major DVD case manufacturer in Hong Kong in defending a patent infringement action in the U.S. Federal Court

Representative Transactions

  • 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
  • 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
  • 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 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 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

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
“Overview of China’s New Antitrust Law”, Dorsey Client Update
“Sue in Hong Kong and Collect in China”, Dorsey Client Update
Get Ready for the .asia Domain Name
“Get Ready for the .asia Domain Name”, Dorsey Client Update
“China’s latest push on well-known marks", Managing Intellectual Property - China IP Focus 2007
Hong Kong launches Chinese .hk domain names
“Hong Kong launches Chinese .hk domain names”, Dorsey Client Update
China's New Rules on Domain Name
“China’s New Rules on Domain Name”, Dorsey Client Update
Anti-Fraud & Cybersecurity in Asia-Pacific: eUpdate Series

News & Press Mentions

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
Trademark, Copyright, Advertising & Brand 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
  • India
  • Intellectual Property Litigation
  • International Arbitration & Litigation
  • Lending Transactions
  • Mining
  • Patent Prosecution, Portfolio Strategy & Management
  • Technology
  • Trademark, Copyright, Advertising & Brand Management

Professional & Civic

Professional Achievements

  • Member, The Sedona Conference
  • Council Member, Licensing Executives Society China, Hong Kong Sub-Chapter, 2019-2020
  • Member, Law Society of Hong Kong 
  • Member, Law Society of England & Wales 
  • Ordinary Member, the Hong Kong Institute of Trade Mark Practitioners
  • Member, International Trademark Association
  • Member, International Trademark Association, Unreal Campaign Committee 2016-2017
Janet Wong