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Portrait of Jonathan Chu

Jonathan Chu

Partner

Lau, Horton & Wise LLP, in Association with CMS Hasche Sigle, Hong Kong LLP
Nexxus Building
41 Connaught Road Central
Hong Kong S.A.R.
Hong Kong
Languages Mandarin, Chinese, English

Jonathan is a Partner in the Intellectual Property group. 

Jonathan is a Hong Kong qualified lawyer who obtained his LLB at the Brunel University London, his PCLL degree at the City University of Hong Kong, and an LLM at University of Edinburgh. He is a native English speaker, fluent in Mandarin and Cantonese. 

His practice is a complete IP practice, ranging from advising on transactions, to worldwide prosecution of IP rights, to IP litigation and enforcement strategies in Hong Kong and China.  He is also active in the fintech and blockchain spaces. 

With over a decade of experience, Jonathan has advised a wide array of leading companies in industries including life sciences, fashion, toys and games, consumer goods, hospitality, TMT, TCM, entertainment, aviation, and energy, amongst others.

Jonathan is regularly sought out by clients as their go-to legal counsel to guide them through their regional contentious and non-contentious legal matters.  He regularly advises clients in local and cross-border intellectual property strategies including anti-counterfeiting, customs seizures, IP rights enforcement, technology transfer, co-development projects, and application/registration and commercialisation of all types intellectual property rights.  Jonathan’s practice also extends to advising clients on a variety of matters related to their businesses including commercial agreements, complex litigation, IP due diligence, and data privacy.

Jonathan is well recognised for both his enforcement and transaction expertise, being called “truly a master in enforcement and IP transactions”.  He was named as one of Asia’s 40 under 40 outstanding legal professionals in the region in 2017, and is ranked in leading international publications.

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"Jonathan is well-versed in handling work across the spectrum of contentious and non-contentious IP, often from a multi-jurisdictional perspective.“

Legal 500, 2019

"Jonathan’s rich and diversified experience and knowledge are reflected in his robust and pragmatic approach to legal issues. He can always devise effective solutions and strategies by being attentive to details, astute to the latest trends and developments in the market and understanding a business’s commercial objectives."

World Trademark Review, 2020

"Given his background as an IP barrister, Jonathan understands areas that could be problematic and contentious, providing advice for us to avoid them. He can provide advice that others cannot."

World Trademark Review, 2020

"He is at the top for trademark and IP matters, and is seasoned in other areas of laws."

World Trademark Review, 2020

"With a drive for client care that is “second to none” and well-rounded expertise in intellectual property, Jonathan Chu is the “go-to” person for trademark matters”.

World Trademark Review, 2020

Relevant experience

IPR Protection and Enforcement 

  • China’s leading online search engine in a trade mark and passing off dispute in Hong Kong
  • An international clothing and consumer goods retail chain in a trade mark and passing off dispute in Hong Kong
  • A leading cosmetics company on its IP enforcement issues in Mainland China
  • A global hospitality company on a multi-jurisdiction trade mark infringement and passing off dispute
  • A leading collectible toy company on various intellectual property protection and enforcement strategies over various jurisdictions in Asia, including Hong Kong and China, and advised on licensing and commercial agreements including agreements with major motion picture studios, artists and content owners
  • A Fortune 100 American pharmaceutical company in its enforcement of its patents in Hong Kong.

Life Sciences and Medical Devices

  • A US-based life sciences company in relation to a high profile acquisition of a cancer research company including acquisition of IPRs in connection with cutting edge technology developed by the target company and its founders
  • A UK-based life sciences company in relation the commercialisation of its product in Greater China
  • A Singapore-based life sciences company in relation to a co-development agreement with a Chinese partner
  • A Belgium-based life sciences company in relation to a R&D project with one of China’s leading R&D companies
  • An India-based life sciences company in relation to a manufacturing project with a China-based manufacturer
  • A Fortune 100 leading pharmaceutical company in relation to the enforcement of its intellectual property rights in Hong Kong
  • A leading TCM company in relation the enforcement of its intellectual property rights in Hong Kong and Mainland China.

Toys & Consumer Products

  • One of the largest toy companies in the world in relation to various IPR enforcement matters in Hong Kong and Mainland China
  • A world-famous leading collectible toy company in relation to various matters including enforcement of its intellectual property rights in the region, and advising on various licensing agreements
  • A smart home device company in relation to its manufacturing and distribution agreements
  • A major manufacturer of baby products in relation to its global IP protection and commercialisation strategy.

TMT

  • A publicly listed international electric vehicle and company on its worldwide IPR, commercial, and litigation matters
  • A successful blockchain solutions company on the patenting of its blockchain technology
  • The VC arm of a Hong Kong-based conglomerate on its blockchain-based PropTech/FinTech project
  • China’s leading mobile phone company in a trade mark dispute in Hong Kong with America’s leading mobile phone company
  • A popular electronic payment services company in a trade mark dispute in Hong Kong with a leading Chinese payment services company
  • China’s leading e-commerce platform including a licensing agreement with a European company.

Entertainment

  • A world-famous Korean conglomerate on its overseas live concert production for top K-Pop acts with South Korea’s largest Entertainment
  • Hong Kong’s most well-known film studios and entertainment company in relation to various legal matters including various production agreements and IP commercialisation projects
  • A variety of film production and distribution agreements for producers, investors and studios
  • A publicly listed company in relation to the acquisition of IPRs from major Hollywood Studios.

 
Hospitality and Travel

  • A gaming company on various project related agreements and legal matters in relation to its development of a luxury casino resort in South East Asia
  • An entertainment company on the acquisition of a major resort in the Pacific Islands
  • A leading airport lounge and hotel brand owner and operator on various legal matters, including advising on their IPR strategy, cross-border licensing matters, commercial agreements and restructuring
  • A luxury travel online platform on its world-wide trade mark strategy and prosecution
  • A founder of a popular food and beverage group in dispute with former partner over ownership of assets and IP of popular restaurant, and non-contentious matters relating to establishment of venues
  • Various airlines in relation to the commercial and IPR matters.

Fashion

  • An international fashion brand based in France in relation to its IP protection and enforcement matters in Hong Kong and Mainland China
  • A European luxury crystal company on its successful intellectual property enforcement campaigns in Hong Kong and PRC
  • The master licensee of a famous Italian fashion house in a successful claim against a sub-licensee for breach of licence agreement
  • A very popular fashion luggage company in relation to various legal matters including brand protection and dispute matters
  • A toy company in relation to an IPR dispute with a world-famous French fashion house.     
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Education

  • 2012 – LLM, University of Edinburgh 
  • 2004 – PCLL, City University of Hong Kong
  • 2004 – LLB, Brunel University London
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Feed

26/11/2021
Leg­al term for pay­ments in Hong Kong
1.  Are there any spe­cif­ic leg­al re­quire­ments in re­spect of pay­ment terms? No. 2. Is there a stand­ard pay­ment term set out in law? If so, what is it? No. 3. What are the cir­cum­stances in which parties...
26/11/2021
COV­ID-19 vac­cin­a­tion and test­ing in Hong Kong - em­ploy­ment law per­spect­ive
Vac­cin­a­tion 1. What op­tions does the em­ploy­er have to en­cour­age em­ploy­ees to be vac­cin­ated? Can the em­ploy­er provide a fin­an­cial in­cent­ive to em­ploy­ees?  There are no gen­er­al re­stric­tions on em­ploy­ers...
Comparable
27/10/2021
Epis­ode #1 - Nav­ig­at­ing the data pro­tec­tion land­scape in Asia, in­clud­ing...
Nick Beck­ett (Beijing/Hong Kong) chats with Jonath­an Chu (Hong Kong) and Sheena Jac­ob (Singa­pore) on data pro­tec­tion and in par­tic­u­lar:Does Asia need a GDPR equi­val­ent? The new China PIPL - should com­pan­ies be con­cerned? Cross-bor­der trans­fers of per­son­al data in Asia - cut­ting through the thick­et So you have a breach in Asia - how to man­age a data breach in this part of the world Cy­ber­se­cur­ity laws and reg­u­la­tion of crit­ic­al sec­tors - the new na­tion­al se­cur­ity fron­ti­er
26/10/2021
CMS Tech In­nov­a­tion Asia
Wel­come to CMS’s ‘Tech In­nov­a­tion Asia’ video/pod­cast series for pro­fes­sion­als deal­ing with leg­al, com­pli­ance, IP and reg­u­lat­ory is­sues in the Asia-Pa­cific re­gion.
17/09/2021
Vac­cine com­pens­a­tion re­gimes in Hong Kong
1. Are COV­ID-19 vac­cin­a­tions ob­lig­at­ory in your jur­is­dic­tion? Are you ex­pect­ing any le­gis­lat­ive changes to en­able man­dat­ory vac­cines for all or cer­tain people (e.g. health­care pro­fes­sion­als, pub­lic ser­vants...
Comparable
06/09/2021
Trans­fer of IP rights in Hong Kong
Pat­ents: As­sign­ment 1. How may a pat­ent be as­signed (by law and/or trans­ac­tion) and is it re­quired to re­cord the as­sign­ment in the na­tion­al pat­ent re­gister to be­come ef­fect­ive?  A pat­ent or any such...
Comparable
16/08/2021
Data pro­tec­tion and se­cur­ity
Ex­pert leg­al ad­visers
30/07/2021
Plastics and pack­aging laws in Hong Kong
1. What is the gen­er­al le­gis­lat­ive frame­work reg­u­lat­ing pack­aging and plastic waste in your jur­is­dic­tion? In Hong Kong, there are a num­ber of laws, reg­u­la­tions, and ini­ti­at­ives which ap­ply to pack­aging...
Comparable
13/07/2021
Open Secrets? Guard­ing value in the in­tan­gible eco­nomy
Across mul­tiple in­dus­tries, busi­nesses are de­riv­ing an ever great­er pro­por­tion of their value from as­sets pro­tec­ted not by pat­ent or copy­right – but by secrecy. And from cus­tom­er data to soft­ware al­gorithms...
08/06/2021
Trade secrets in Hong Kong
Gen­er­al 1. Has the Dir­ect­ive (EU) 2016/943 of the European Par­lia­ment and of the Coun­cil of 8 June 2016 on the pro­tec­tion of un­dis­closed know-how and busi­ness in­form­a­tion (trade secrets) against their...
Comparable
01/06/2021
APAC IP Up­date  – Spring 2021 
China SPP is­sues guid­ing cases tar­get­ing in­tel­lec­tu­al prop­erty-re­lated crimes On 4 Feb­ru­ary 2021, the Su­preme People's Pro­cur­at­or­ate (SPP) is­sued the 26th Batch of Guid­ing Cases tar­get­ing in­tel­lec­tu­al...
24/03/2021
APAC Monthly TMC Up­date  – Winter 2021
Aus­tralia Aus­tralia pro­ceed­ing with News Me­dia Bar­gain­ing Code The Aus­trali­an Com­pet­i­tion and Con­sumer Com­mis­sion (AC­CC) re­leased a draft code de­signed to es­tab­lish a man­dat­ory frame­work for ne­go­ti­at­ing...