Professional Practice

William has a broad civil practice with a focus on intellectual property and commercial. He has particular experience in advising and litigating on IP infringements and agreements with an IP element. He has represented global luxury brands, multinational corporations in technology and pharmaceuticals, licensing body of record labels as well as musicians and artists.

William has been ranked as a leading junior in Legal 500 (2022-2024) for IP and is described as “sharp, thorough, and well researched” and “demonstrates remarkably prescient judgement and excellent listening skills”.

Recent highlights include:

  1. Acting for Cartier International AG, Van Cleef & Arpels S.A. & others in contempt proceedings against IP infringers for non-compliance of disclosure order before the Court of Appeal: see [2023] HKCA 1002; [2021] HKCFI 1005 (appeal before the Court of Final Appeal pending)
  2. Acted for Société des Produits Nestlé S.A. in multiple proceedings before the Registrar of Trade Marks: see [2024] HKTMR 8; [2023] HKTMR 30; [2023] HKTMR 29
  3. Acting for German Pool in inquiries of damages on cross-undertaking given for an interlocutory junction and groundless threats of patent infringement.

William is a Fellow of the Hong Kong Institute of Arbitrators and accepts appointment to act as arbitrator. He has been appointed as the presiding arbitrator in an IP dispute concerning online gaming licenses and has represented parties in HKIAC-administered arbitrations.

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Education

2013  PCLL (Chinese University of Hong Kong)

2010  Bachelor of Laws and Bachelor of International Studies (University of Sydney)

2005  Saint Ignatius College, Riverview (Sydney)

Professional Appointments & Memberships

Fellow, Hong Kong Institute of Arbitrators

Part-time Lecturer (Non-Clinical), Department of Professional Legal Education, The University of Hong Kong (2020-present)

Committee Member, Committee of Intellectual Property of the Hong Kong Bar Association (2019-present)

Committee Member, Standing Committee of Continuing Education of the Hong Kong Bar Association (2022-present)

 

Publications, Lectures & Seminars

“Hong Kong: Competition Litigation” The Legal 500 Country Comparative Guides (August 2023)

“Metaverse, Trademarks, Competition” 2022 (CPD Seminar)

“Competition Law with Industry Focus on Construction Materials and Related Sectors” November 2020

“Neway Music Ltd v Hong Kong Karaoke Licensing Alliance Limited: A Landmark Decision by the Copyright Tribunal”  Hong Kong Lawyer, 11 June 2020

“Competition Law as a Defence in Civil Actions” 2019 (CPD Seminar)

“Introduction on Competition Ordinance Cap. 619” 2017 (CPD Seminar)

Selected Cases

Intellectual Property

High Court

  • Advanced Card Systems Ltd v Leung Tin Chak Gilbert & Anors HCIP 80/2023 (copyright infringement and infringement of registered design)
  • Blackbird Concessionaires Ltd v Wong Kathy Car-Yee trading as Workaholic Productions HCIP 53/2023 (ownership of film, exclusive licensee and copyright infringement)
  • Mr. Chi Wing Ltd & Law Oi Ying Ltd Trading as Singapore Heardway Medicine Company v Cheung Ka Cheong trading as Hong Kong Chung Shun Medicine Manufactory HCIP 39/2023 (trade mark infringement, passing off, invalidation and revocation of trade mark registration) (led by Andrew Liao SC)
  • EL: AR Ltd v Future Lighting Collection Ltd HCIP 3/2023 (copyright infringement and revocation of registered design)
  • JK Ballet & Jazz School Ltd v Jolly Kids Education & Ors HCIP 68/2022 (trade mark infringement, passing off, invalidation of trade mark registration, acquiescence and estoppel)
  • Hung Win Trading Co Ltd v Ku Ka Fai Alan HCIP 57/2022 (trade mark infringement and passing off)
  • Bentley Motors Limited v Aucera S.A. HCIP 53/2022 (revocation of trade marks for non-use)
  • Re Hong Kong Standard Patent No. HK40026920 HCIP 23/2022 (amendment of patent specification)
  • Wong To Yick Wood Lock Ointment Ltd v Honor City HK Pharmacy Ltd HCIP 84/2021: trade mark infringement and passing off
  • German Pool Group Co Ltd & Ors v Dyson Technology Ltd & Another HCIP 53/2019 (inquiries of damages on cross-undertaking given for an interlocutory injunction and groundless threats of patent infringement). Led by Andrew Liao S.C.
  • Monster Energy Company v 洪嘉珮 HCIP 5/2019, [2020] HKCFI 561 (appeal from decision of the Registrar of Trade Marks Registry)

Trade Marks Registry

  • Opposition of trade mark “Atwo illuma” [2024] HKTMR 8
  • Opposition of trade mark “CVA” [2023] HKTMR 66
  • Opposition of trade mark “CVA” [2023] HKTMR 65
  • Opposition of trade mark “Buffy” [2023] HKTMR 61
  • Opposition of trade mark “VIVO” [2023] HKTMR 40
  • Opposition of trade mark “CHALI” [2023] HKTMR 34
  • Opposition of trade mark “ATWO” [2023] HKTMR 30
  • Opposition of trade mark “a2 Store” [2023] HKTMR 29
  • Opposition of trade mark “OT Tango & Device” [2023] HKTMR 24
  • Revocation of trade mark “JAGUAR”  [2023] HKTMR 4
  • Opposition of Trademark “HAUTE COUTURE MARIAGE FRERES” [2022] HKTMR 41 
  • Opposition of Trade Mark “KINWONG” cross-examination of witnesses [2022] HKTMR 26 
  • Opposition of Trade Mark “阿里康美” [2022] HKTMR 16 
  • Opposition of Trade Mark “JUVÉDERM” [2022] HKTMR 11 (written submissions) 
  • Opposition of Trade Mark “Juvederm & Device” [2022] HKTMR 10 (written submissions) 
  • Invalidation of Trade Mark “永良” [2022] HKTMR 8 
  • Invalidation of Trade Mark “Goodever PF” [2022] HKTMR 7 

Copyright Tribunal

  • Neway Music Ltd v Hong Kong Karaoke Licensing Ltd CT 2/2010: (37 days trial before the Copyright Tribunal on the reasonableness of licence fees charged under a karaoke music videos licensing scheme). Led by Andrew Liao SC and with Norman Hui

Commercial

  • Advanced Card Systems Ltd v Leung Tin Chak Gilbert & Anors HCA 644/2023 (breach of confidentiality obligations, employee’s breach of contract and of duty of good faith and fidelity)
  • Sumitomo Rubber Industries, Ltd v Homer International Sports (Shanghai) Co., Ltd & Anor DCCJ 3090/2021 (breach of licensing agreement, foreign law)
  • E-Hold Construction Ltd v Oasis Well Ltd DCCJ 2648/2021 (breach of construction contract, summary judgment)
  • Lee Man Fai v Yip Pak Keung HCA 1631/2018 trial settled on second day (contract, misrepresentation, restitution, illegality defence)
  • Design Time Ltd v Complete Power International Ltd & ors HCA 1808/2019 (summary judgment application, bond dispute)
  • Toy Quest Ltd v Nuance Communications Ireland Ltd HCA 832/2018 (breach of technology licensing agreement)
  • Wang Rujing v GTI Holdings Ltd & Anor DCCJ 3868/2019 (summary judgment application, breach of settlement agreement, bond dispute)

Arbitration

  • Chair arbitrator in an IP dispute concerning online gaming licenses (HKIAC arbitration)
  • Acted as counsel in a dispute concerning sale and purchase of future receivables (HKIAC arbitration)
  • Refusal of enforcement of a Mainland arbitral award (led by Andrew Liao SC)

Contempt

  • Wong To Yick Wood Lock Ointment Ltd v Imperial Charity Hall Medicines Ltd & Anor HCIP 13/2022 (failure to comply with disclosure orders)
  • Cartier International AG & Ors v Dynasty Jewelry (Hong Kong) Ltd [2023] HKCA 1002; [2021] HKCFI 1005 (failure to comply with disclosure orders) (with Philips Wong)
  • Wong To Yick Wood Lock Ointment Ltd v Yue Hwa Cosmetic Ltd & Anor HCIP 75/2021 (failure to comply with disclosure orders)

Competition

  • Taching Petroleum Co Ltd v Meyer Aluminium Ltd [2021] HKCT 2; [2021] HKCFI 3028 Counterclaim for damages arising from price fixing in contravention of first conduct rule. With Kenneth Lee and Nana Lui
  • Taching Petroleum Co Ltd v Meyer Aluminium Ltd [2021] HKCA 294 Appeal against Competition Tribunal’s decision in refusing to grant leave to amend Points of Defence and refusing leave to adduce expert evidence. With Kenneth Lee and Nana Lui
  • Advised an undertaking on matters involving investigation brought by the Competition Commission

Equity and Trust

  • HK88 Enterprises Limited v Su Yuan-Yu HCA 926/2018 (beneficial ownership of land, constructive and resulting trust)
  • Shun Pong Ltd v Chan Koo Kai Felix and others HCA 255/2017 (proprietary estoppel)
  • Leung Ching Mai v Mak Wai Lun Thomas DCCJ 1494/2022 (common intention constructive trust, proprietary estoppel)

Property

  • Max Choice Development Ltd & Anor v Chan Chak Sung & Anors DCMP 3452/2021 (adverse possession)
  • The Incorporated Owners of Haiphong Mansion v James S. Lee & Company & Anor LDBM 138/2021 (breach of DMC)
  • Guan Jianwei v Huo Xing Hua DCCJ 2281/2019 (summary judgment application, vacant possession)