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James Lau

Special Counsel
Baker & McKenzie

Biography

James Lau is a special counsel in Baker McKenzie's Hong Kong office and a member of the Firm's Intellectual Property and Technology Practice Group.

Practice Focus

James has extensive experience in advising on intellectual property law in China. His practice covers trademark prosecution and enforcement, and he also regularly advises on a wide range of intellectual property matters, including copyright, unfair competition, trade names, domain names, designs, licensing, advertising and product labeling laws, Chinese branding, parallel imports and OEM issues.

James has advised numerous companies on strategies for securing intellectual property protection in China prior to market entry. He has managed the intellectual property portfolios for brand owners in a broad range of industry sectors, including the aviation, consumer electronics, cosmetics, entertainment, food and beverage, hospitality, luxury and fashion, media, pharmaceutical, steel and technology industries. James works closely with senior legal counsels and business units in many of the world's most valuable brands.

James has successfully directed complex enforcement operations at the administrative and court levels against infringers throughout China, and has also conducted confidential negotiations and closed deals for the purchase of trademarks and domain names from serial pirates in China. James has also obtained well-known trademark recognition for a large number of clients.

James is a member of Baker McKenzie's Food & Beverage Industry Group.

Representative Legal Matters

  • Advised a multinational food and beverage company on all aspects of trademark applications, clearance searches, prosecutions, oppositions, cancellations, invalidations, assignments, licensing, enforcement, customs recordal/seizure as well as domain name registration and disputes.
  • Advised a multinational fast-food restaurant on the licensing of its trademarks, copyright and knowhow in relation to the spin-off of its China business.
  • Advised a fishing tackle company on action against pirate trademarks and negotiations for the purchase of such marks, and the associated risks of customs seizure for OEM manufacturing in China.
  • Reviewed the IP rights portfolio of a telecommunications company and advised on the strategies to recover pirate trademarks.
  • Assisted various foreign brand owners with successfully obtaining well-known trademark recognition by the PRC Trademark Office, PRC Trademark Review and Adjudication Board, National Intellectual Property Administration and the People's Courts.
  • Advised a multinational steel company on enforcement strategies at the administrative and court levels against infringers throughout China, and with managing its online take-down programs on Alibaba, Taobao, WeChat and other online platforms.

Professional Associations and Memberships

  • Law Society of Hong Kong - Member
  • International Trademark Association - Member 
  • Hong Kong Chamber of Commerce - Member, China Committee

Admissions

  • Hong Kong (2012)

Education

  • The University of Hong Kong (P.C.LL.) (2010)
  • The University of Hong Kong (LL.B.) (2009)

Languages

  • Cantonese
  • English
  • Mandarin
  • Author, "Competition: Out with the Old," Intellectual Property Magazine, February 2018
  • Author, "Supreme People's Court Clarifies Approach to Protecting Personal Name Rights in China," Hong Kong Lawyer, February 2017