Marks & Clerk
Firm overview:
Global IP firm Marks & Clerk has a long history in China, with its presence dating back to 1984. The firm’s Greater China Intellectual Property practice is divided into patent and trademark teams based in Hong Kong and Beijing, which offer local expertise combined with the international reach of Marks & Clerk’s global network, spanning three continents. Marks & Clerks offers an integrated IP service, often advising the same client on a multitude of IP rights.
Trademark prosecution is a particular specialism of the practice, and the team has assisted a number of iconic brands with protecting their marks in China. Since 2010, the firm has had a local trademark agency licence, enabling it to file and handle matters directly with the China National Intellectual Property Administration (CNIPA).
Marks & Clerk is a solid choice for contentious registry matters, with a strong track record of success in oppositions and invalidations at the CNIPA and Hong Kong Intellectual Property Department (HKIPD). As well as being instructed directly by clients, the firm handles a significant amount of referral work, acting as a trusted partner to law firms and IP agencies from overseas.
The firm’s involvement in China’s trademark community includes serving as advisor to the HKIPD and operating a WeChat public account tailored for Chinese-speaking communities.
Team overview:
Partners Jacqueline Chu and Xuefang Huang lead Marks & Clerk’s trademark team. Chu has over 20 years’ experience advising on trademark protection in Hong Kong and internationally, and is currently the president of the Hong Kong Institute of Trade Mark practitioners.
Huang’s career highlights include securing well-known trademark status in China for marks belonging to a globally recognised automotive manufacturer. Huang serves as co-vice chair of the AIPPI China Trademarks Committee, and she has previously served as co-chair of the International Trademark Association (INTA) Bulletins Committee, China Subcommittee.
Key matters:
- Trademark services for a renowned British car company
Marks & Clerk assisted a renowned British car company with trademark prosecution and enforcement services in China, including clearance and investigations, use and infringement assessment, and contentious proceedings.
Some highlights of the 2024 work include obtaining well-known trademark recognition for the client’s mark on vehicles; an 87% success rate in CNIPA decisions issued that year for the client; and the successful removal of a 27-year-old ‘squatted’ registration.
- Trademark advisory work for a fintech company based in Macau
The team assisted a fintech company with trademark advisory services in China, Macau and Hong Kong, as well as a wide range of other jurisdictions. This included brand name recommendations, search and investigation services, trademark prosecution, and opposition defence.
In 2024, Marks & Clerk filed more than 150 new trademark applications for this client in China, Hong Kong and Macau in 2024. The firm also defended the client’s applications against all of the seven oppositions filed by a well-known international credit card organisation in China and Macau.
