Professional Practice

William has a predominantly intellectual property practice. His clients include global luxury brands, multinational corporations in technology and pharmaceuticals, licensing body of record labels as well as musicians and artists. William regularly appears before the Registrar of Trade Marks and has appeared in the High Court for infringement actions and IP-related contempt proceedings.

Besides his IP practice, William is also developing a practice in competition law. He has appeared in the first two private actions before the Competition Tribunal and has advised on matters involving investigation brought by the Competition Commission.

William’s recent IP cases include:

1. Acted for a world leading manufacturer of printed circuit boards in a 3-days trial before the Registrar of Trade Marks: Trademark “KINWONG 景旺电子” [2022] HKTMR 26.

2. Acted for Alibaba Group Holding Ltd and successfully opposed an application for trademark registration on the ground of bad faith: Trademark “阿里康美”  [2022] HKTMR 16

3. Acting for Wong To Yick Wood Lock Ointment Ltd, a renowned local manufacturer of Chinese medicated oil, in various trademark infringement proceedings, enquiry of damages/account of profits and contempt proceedings: see e.g. Wong To Yick Wood Lock Ointment Ltd v Imperial Charity Hall Medicines Ltd & Anor [2021] HKCFI 1252.

4. Acting for Cartier International AG, Van Cleef & Arpels S.A. & others in contempt proceedings for infringers’ non-compliance with disclosure order: see e.g. Cartier International AG & Ors v Dynasty Jewelry (Hong Kong) Ltd [2021] HKCFI 1005. Appeal pending (with Philips Wong).

5. Acted for 洪嘉珮 in an appeal against the decision of the Registrar of Trade Marks. Succeeded in resisting an appeal brought by Monster Energy Company: see Monster Energy Company v 洪嘉珮 [2020] HKCFI 561.

6. Acted for Hong Kong Karaoke Licensing Alliance Ltd, the licensing body of Sony Music, Warner Music and Universal Music before the Copyright Tribunal. Succeeded in confirming the reasonableness of the licence fees charged under the karaoke music videos licensing scheme: see Neway Music Ltd v Hong Kong Karaoke Licensing Alliance Ltd (CT 2/2010) (led by Andrew Liao S.C. and with Norman Hui).

William is recognised as a “Leading Junior” by the Legal 500 Asia Pacific Hong Kong Bar (2022) for Intellectual Property and Competition.

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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

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)

Publications, Lectures & Seminars

“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

Court of First Instance

  • Wong To Yick Wood Lock Ointment Ltd v Honor City HK Pharmacy Ltd HCIP 84/2021: trademark infringement and passing off
  • Cartier International AG & Ors v Dynasty Jewelry (Hong Kong) Ltd [2021] HKCFI 1005: failure to comply with disclosure orders (appeal pending)
  • Wong To Yick Wood Lock Ointment Ltd v Nippon Taisun (HK) Ltd & Ors HCIP 8/2021: trademark infringement and passing off
  • Dyson Technology Ltd & Another v German Pool Group Co Ltd & Ors HCIP 53/2019: inquiry of damages (led by Andrew Liao S.C.) ongoing
  • Wong To Yick Wood Lock Ointment Ltd v Imperial Charity Hall Medicines Ltd & Anor HCIP 7/2021: trademark infringement and passing off
  • Monster Energy Company v 洪嘉珮 HCIP 5/2019, [2020] HKCFI 561: appeal from decision of the Registrar of Trade Marks Registry
  • Wong To Yick Wood Lock Ointment Ltd v Chan Sui Pan HCA 1019/2017 account of profits
  • Wong To Yick Wood Lock Ointment Ltd v Mighty Win Ltd HCA 54/2017 account of profits

Trade Marks Registry and Copyright Tribunal

  • Revocation of Trademark “JAGUAR” cross-examination of witnesses (decision pending)
  • Opposition of Trademark “HAUTE COUTURE MARIAGE FRERES” (decision pending)
  • 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
  • Neway Music Ltd v Hong Kong Karaoke Licensing Ltd CT 2/2010 determination of karaoke licence fees (led by Andrew Liao SC and with Norman Hui)

COMPETITION

  • Taching Petroleum Co Ltd v Meyer Aluminium Ltd; Shell Hong Kong Ltd v Meyer Aluminium Ltd [2021] HKCT 2; [2021] HKCFI 3028; [2021] HKCFI 1690; [2021] HKCA 294; [2020] 4 HKLRD 646; [2020] HKCT 2 (with Kenneth K.H. Lee and Nana Lui) acted for the Defendant in alleging price collusion between the Taching Petroleum Co Ltd and Shell Hong Kong Ltd and thereby in breach of the first conduct rule as a defence to claims for payment for goods sold and delivered
  • Advising an undertaking on matters involving investigation brought by the Competition Commission

CIVIL, COMMERCIAL AND ARBITRATION

  • Acted in a dispute concerning sale and purchase of future receivables (HKIAC arbitration)
  • E-Hold Construction Ltd v Oasis Well Ltd DCCJ 2648/2021 (construction dispute, summary judgment)
  • Max Choice Development Ltd & Anor v Chan Chak Sung & Anors DCMP 3452/2021 (adverse possession)
  • HK88 Enterprises Limited v Su Yuan-Yu  HCA 926/2018 (beneficial ownership of land, constructive and resulting trust) ongoing
  • 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)
  • Guan Jianwei v Huo Xing Hua DCCJ 2281/2019 (summary judgment application, vacant possession)
  • Wang Rujing v GTI Holdings Ltd & Anor DCCJ 3868/2019 (summary judgment application, breach of settlement agreement, bond dispute)