Anthony Tong

You have won widespread acclaim as a trademark litigator. What has been you most memorable case and why?

At 4:30 pm on Saturday 13 November 2021 my client, a Hong Kong company, was served with anlight-italicinjunction order made by the State Court in Singapore to compel them, as organiser, to immediately shut down a nine-day exhibition of a massive inflated artwork of a well renowned artist just when it opened to allow VIP guests to file in. I got instructions within five minutes thereafter. I immediately collated and sent all the requisite evidence to the legal team in Singapore that I had managed to assemble at a very short notice. Together we worked non-stop night and day during the weekend and by Monday morning 15 November 2021, we perfected and filed with court an affidavit in support of an urgent application to discharge the interim injunction which we successfully did later in the day, around 48 hours from the moment that my client was served with the injunction order. The artist’s name ended up among the top 10 most Google-searched Singapore news in 2021. This case is memorable in that we were running against time to reopen the exhibition as early as possible. It was also memorable because I managed to assemble and lead an outstanding legal team and to discharge thelight-italicinjunction within such a short period of time.

How has remote working affected the way that you interact with clients and network more generally – and do you see any of these changes becoming permanent?

Remote working with existing clients and networks does not differ significantly with physical face-to-face meetings although the value of in-person interactions is still immeasurable. This is particularly challenging for collaborating with new clients due to the difficulty to create a personal trust and connection remotely since digital communication makes it difficult to understand client’s needs.

Be that as it may, working remotely, even though not entirely, is something that we have to live with and fortunately modern technology has made it easier than ever before to adapt and overcome. On the other hand, attending networking conferences can never be replaced although clients are now more amenable to having video/phone conferences. We will just need to establish expectations and boundaries in a remote environment in accordance with the wish of clients using a combination of various tools. Establishing communication preferences is particularly important when working with new clients so that we can always communicate with them using their method of choice. I do believe that a hybrid of remote and in-person interactions will be the new “normal” that one must adapt.

What are some of the most common mistakes that rights holders make when marketing their brands in China and Hong Kong – and how can they avoid them?

The biggest mistake of all must be the failure to follow China’s politically correct standard. All companies doing business in China must follow the one China policy. Correct labelling for different geographic regions like Hong Kong, Macau and Taiwan must adhere to this policy.

Second, foreign brands need to carefully consider their Chinese names. The linguistics of naming a Chinese brand can be a maze if not a minefield. The naming can be done by phonetic transliterations, direct translations or descriptive translations. One phonetics can stand for a number of different Chinese words each with different meanings. Two laudatory words when put together can well mean something derogatory.

Third is the choice of marketing platforms. China and Hong Kong have distinctly different cultures. Business development and operations are under very different legal, economic and cultural constraints. Moreover, western social media like Instagram, Facebook, YouTube or Twitter are only available in Hong Kong but not in China whereas WeChat is the most popular platform for mainland Chinese consumers.

Fourth is the failure to adopt an effective product localisation strategy whilst maintaining product and brand consistency. China is a big country with the biggest population in the world. Its vast landscape straddles a large variety of climates, demographics and infrastructures.

Late last year, China’s State Administration for Market Regulation threatened to revoke the operating licences of platforms that fail to take proper action against counterfeiters on their sites. What impact – if any – do you expect this move to have on levels of counterfeiting in China?

This sounds more like rhetorics than substance as the implications for revoking operating platform licences are immense. The Chinese Trademark Law already provides for liability for contributory infringement by platform operators. The active steps taken or threaten to be taken by the State Administration for Market Regulation (SAMR) to revoke the operating licences of platforms should force the operators to take much swifter actions on such platforms to investigate and take down suspected counterfeiting offerings. This is definitely good news on the part of the trademark owners although this is also creating immense pressure on platform operators to conduct more self-monitoring thus substantially increasing on their cost of operation. Insofar as the counterfeits are concerned, such move on the part of SAMR would also drive the counterfeiters to diversify their marketing activities onto various smaller online platforms thus making it harder for trademark owners to weed out such activities.

What are the biggest challenges facing clients looking to enforce their brands in multiple jurisdictions?

The biggest challenge is on the collation and admissibility of evidence on counterfeiting activities. The legal systems among common law, civil law as well as those laws based on religious faiths are very different. The procedural requirements on notarisation and legalisation of powers of attorney, documents proving the legal standing of the trademark owners as well as evidence on counterfeiting in civil law countries could be prohibitive. Moreover, the plethora of online platforms where counterfeits are sold and the difficulty in tracing such activities to the counterfeiters create immense evidential burden and jurisdictional challenges. The ease with which the counterfeiters can move their counterfeit offerings onto different sites or platforms is also a huge challenge.