9 Sep

Jonathan Chu


Having only recently joined CMS, what ambition do you have for the refreshed Hong Kong IP team?

I am very excited to grow the team and deepen the offering in the region. We are stepping into a fantastic situation wherein the firm already has a strong global IP practice with dedicated expertise in the sectors covered by my group, including technology, media and telecommunications, consumer products and life sciences and healthcare. We are also incorporating into our IP offering leading Asia-Pacific specialist practices related to intellectual property in life sciences and technology, in which my partners Nick Beckett, Sarah Hanson and Sheena Jacob specialise. These strengths, coupled with our capability in all core IP practice areas, open us up to a lot of great opportunities in the Greater China region and beyond. Our move to CMS has led to new clients and firm members, as well as greater market visibility, which comes with being a part of a global dynamic practice with a strong track record in intellectual property and many interesting opportunities in the pipeline.

How has your experience as an IP barrister helped shape your IP practice today?

I was very fortunate to start my career at 128 New Henry House and to have had the chance to specialise in intellectual property from day one. My time at the bar not only allowed me to train with some of the brightest IP barristers in the city, but also pushed me to handle cases on my own and essentially run a practice from the very start. All this allowed me to get comfortable with this area of the law, advocacy and making decisions on how to run a case independently. Further, the fundamentals that I picked up have given me the confidence and necessary tools to make the most of the opportunities that followed, including my jump to the solicitor side of the profession.

How have client demands changed over the past five years, and what impact has this had on your practice?

The types of clientele and business demand have changed quite a bit – we are seeing more entrepreneurs who want a broader service, but at the same time are coming to us for specialist advice. Service users these days are much more sophisticated and are clearer as to what they want. There is so much information out there and, for better or worse, it is not uncommon for clients to have expectations of the advice and fees. This has been positive in terms of my relationships with those instructing me as it is more collaborative and allows me to focus on delivering a service.

Why is a cross-jurisdictional strategy important in your region and how can brand owners ensure that theirs is watertight?

A cross-jurisdictional strategy is relevant to the Greater China region, as brand attraction may well be similar across the region with regard to marketing efforts, trends, media and cultural influences. These factors are enhanced by the ways in which information is shared over social media, which often transcends borders. In other words, something that is popular in one region is likely to attract a market in another. As a result, if a brand owner does not have an appropriate IP strategy, it may lose the right to use the brand in an important market. There is too much that can go wrong and too many people who would capitalise on a late step by a brand owner. Strategies should therefore be developed as early on as possible with steps taken to determine the marks for which a brand owner wishes to seek protection (including local language marks). These marks should then be registered and subsequently used in the relevant jurisdictions. Further, it is important to keep records of use.

What would you say are the top three characteristics that brand owners look for in a top-ranking IP attorney?

First, you must have expertise; IP lawyers have a specialist skill set and knowledge of a specific legal area. Second is commercial mindset; clients, especially those in intellectual property, are always commercially minded. Expertise will provide experience, but the right mindset allows the attorney to give the appropriate advice. Finally, attorneys must be solution driven; a commercial mindset is no use unless a way forward can be provided.

You represent clients across industries ranging from life sciences and technology to fashion and entertainment. How do you keep your finger on the pulse in so many markets?

Because of my experience at the bar and being part of a practice that covers IP law in general, I have always been comfortable with taking on matters and accumulating experience across a broad range of sectors. Of course, another reason that I have been able to take on this wide range is because I have the benefit of working alongside a strong and supportive team – in particular, senior associates Mengyi Chen and Candy Tong, as well as Micky Chau, who have all been working with me for a number of years. Having said this, taking on the work is one thing, keeping my finger on the pulse is another. CMS has an excellent platform for knowledge sharing, which is a mixture of global practice groups getting together regularly and sharing insights and a newsfeed platform where our teams around the world share important information across many sectors. I also spend a lot of time involved in industry associations, which is a very valuable resource for keeping up with local industry changes.

What are the main challenges that brand owners currently face enforcing their trademarks in Hong Kong and China?

There are the usual issues (eg, counterfeiting, squatting, establishing rights, enforcement and shadow companies). However, the best thing brand owners can do to protect their trademarks in Hong Kong and mainland China is ensuring that they plan their Greater China strategy early on. A large part of the issues that we see our clients dealing with are those that could have been avoided by more careful planning in the early days of their business launch.

What recent changes to the Chinese IP system do brands owners need to be aware of before pursuing a dispute in the region?

The Chinese IP system is continuously changing, and this includes laws, policies and manners of execution. At the moment, we are keeping a close eye on the US-China trade deal and the commitments made to evolve the IP system on the Chinese side. This is very much in line with the continued improvements to IP protection that we are seeing in mainland China. I always tell brand owners that there is IP recognition in China and enforcing an entity’s rights can be successful. The important thing is to keep matters in perspective with the upcoming changes as practices begin to align more and more with global expectations.

You are active in the blockchain and fintech spaces. How do you see these technologies shaping IP strategy in future?

Recent global events have demonstrated that digital business and day-to-day life necessitates digital solutions. We have seen continued growth in this space and a significant uptick in instructions from this space. Quite often, we see commercial and regulatory advice come together with instructions for IP advice, particularly with regard to patents. This is very important to our future IP strategy as these technologies will be the core of many clients’ businesses.

What long-lasting effects do you expect recent global events to have on IP firms and practices?

Things are changing so rapidly, it is difficult to say what is around the corner. What we can see from recent events is that those businesses that are digital in nature or have become digital are reaping the benefits of their form of business delivery. This applies to both potential and existing clients and IP outfits. I think that we were very fortunate (thanks to the foresight of the powers that be within CMS) that the hardware and software that we have had in place during the challenging period posed by covid-19, including all necessary security measures, allowed us to work remotely with minimal disruption. In general, e-filing services and the court’s evolving willingness to adopt technological solution could make IP firms and practices operate even more efficiently.

Jonathan Chu

[email protected]

Jonathan Chu has a complete IP practice ranging from advising on transactions and worldwide IP rights prosecution to IP litigation and enforcement strategies. His work involves cross-border elements, with a focus on the Greater China region, particularly Hong Kong and mainland China. Due to his broad legal and business exposure, Mr Chu is known as a go-to external counsel for private businesses and listed multinationals for contentious and non-contentious matters.