Anthony Tong

How have client demands changed over the course of your career and in what ways have you adapted to maintain long-lasting relationships?

I do not think that much has altered with respect to the four pillars of virtue that clients expect of their lawyers, namely: good understanding of their business; practical and pragmatic advice, rather than a recitation of the law; reasonable charges commensurate with the work; and quick response on urgent cases. However, as technological solutions evolve, clients now expect much better value for their money. I just strive to be perfect and maintain the highest level of work ethics. On top of this, I also invest in technology to improve our efficiency and access to knowledge. I am always conscious of the fact that the personal touch is still treasured by clients – that is, being empathetic to their needs at all times.

Which of your IP achievements are you most proud of and why?

This would be setting up of our Beijing IP agency in 2012 in time to celebrate our 30th anniversary. I am also very proud of my appointment as deputy chair of the Copyright Tribunal and to the board of directors of the Hong Kong government-funded Applied Science and Research Institute – I am the only lawyer on the 20-member board, which mostly comprises chairs and CEOs of tech companies, and university professors. Last but not the least, I am proud to be the lead counsel for a Hong Kong-listed client in prosecuting and defending more than 80 contemporaneous national and EU trademark-related proceedings against the same defendants in 15 European jurisdictions.

What are the most important nuances for international rights holders to be aware of before pursuing litigation in Hong Kong or China?

The two legal systems are different and this must be borne in mind when determining a strategy for cross-border litigation and particularly in settlement negotiations. Because of possible reciprocal IP enforcement measures available (only) between Hong Kong and China in the very near future and given that the Hong Kong common law system is more familiar to Western practitioners that there are circumstances that justify the issuance of proceedings in Hong Kong against Chinese entities.

What do you encourage clients to look for in a Chinese partner when entering into a joint venture agreement?

One with the right vision, ambition and ability, who is willing to walk the walk. A prospective Chinese partner must already have a good system and people in place with an existing profitable business model. Avoid those who brag about excellent government relationships. It is also imperative to conduct in-depth due diligence – from online searches to using the National Enterprise Credit Information Publicity System and employing investigators. Clients should also visit the offices and manufacturing facilities and interview staff members.

The Chinese authorities have made clear their intentions to continue strengthening IP protection in the region. How is the IP regime improving and what still needs to be done?

The Chinese authorities’ determination to strengthen IP protection is evident from the release by the Supreme People’s Court of the People’s Courts Intellectual Property Judicial Protection Plan (2021-2025) on 22 April 2021 during the 2021 China IP Publicity Week.

The plan clarifies the guiding ideology, basic principles, overall goals and key work measures for the judicial protection of IP rights during the 14th Five-Year Plan period. The plan has the aspiration that by 2025 there will be significant modernisation of the IP adjudication system and improved adjudication capabilities. It further emphasises the importance of increasing judicial protection for IP rights in key core technologies and of strengthening coordination between administrative law enforcement and the judiciary, and of deepening international cooperation on IP rights.

It is too early to see how effective the plan will be. For my part, I would like to see a relaxation of the notarisation requirement to prove the authority of representatives appointed by rights holders to bring their cases before market regulation authorities due to the lack of public company records available in certain places of incorporation (eg, the state of Delaware). With regard to online infringements, I would like to see clearer guidance on jurisdictional issues. I also like to see the streamlining of cross-province enforcement of judgments so as to reduce the time and costs before clients can enjoy the fruits of their litigation.