Grace Chen

Senior Associate

Trademark & Copyright

Primary office

Hong Kong

Telephone

Connect

Practice focus

Trademark and Other IP Prosecution

IP Litigation

Administrative Enforcement of IP

IP Investigations

IP Licensing

Domain Name Disputes

Customs

Designs

Experience

Grace Chen has practiced intellectual property law for over 15 years. She has extensive experience in strategic advising and handling prosecution, enforcement, litigation and commercial matters relating to IP rights in China and globally.

Prosecution Matters: advising on filing strategy; advising on and carrying out actions against pirate trademarks and bogus patents; handling responses to office actions and defenses to attacks from third parties against clients’ IP rights; managing clients’ IP portfolio in China and other major jurisdictions (US, EU, AU, etc.).

Enforcement Matters: design enforcement strategy; managing onsite investigations; arranging and/or conducting evidence preservation; planning and conducting raid actions; drafting and following up on cease and desist letters; advising and handling customs recordal and seizure matters (including petitioning local customs to release clients’ seized shipment by relying on “OEM Exception”).

Litigation Matters: developing and implementing litigation strategy; drafting and/or reviewing complaints, statements and other documents; managing and overseeing evidence collection and preparation; negotiating with opposing parties for settlements; cooperating with overseas lawyers on cross-border civil or criminal actions, e.g., evidence collection/preservation, asset searches, and service of court documents. Commercial Matters: drafting IP-related commercial agreements; advise on IP-related commercial issues.

Work Highlights

Conducting watch services for Wine Australia to identify trademarks misappropriating Geographical Indications for wines in Australia; filing oppositions, invalidations, and non-use cancellations against pirated marks. One opposition case has been recognized as one of the 2019 Model Trademark Opposition, Invalidation and Refusal Appeal Cases by the China National IP Administration (“CNIPA”);
Designing and implementing filing and enforcement strategies for a leading skincare brand; successfully organizing criminal action against its former general distributor in China, who was sentenced with a 3.5-year jail term; negotiating with e-commerce platform for assistance in evidence preservation and raid action; assisting overseas lawyers with a civil action against the same infringer in another jurisdiction;
Coordinating multiple criminal raid actions for a famous brand in entertainment industry, and the total value of seized fakes exceeds US$1 million. The infringers were respectively sentenced to 3 and 4 years in prison;
Developing and managing IP enforcement programs for Fortune 500 companies, including via delivery of C&D letters, conducting administrative and criminal raid actions, filing design infringement, copyright and trademark infringement lawsuits, negotiating with infringers to reach settlements on cessation of infringement and payment of compensation; liaising with overseas lawyers and advising creative ways to obtain/preserve overseas evidence to support civil suits in China, and vice versa; advising clients in designing and implementing creative ways for notarizing infringement evidence related to expensive and large-size system or equipment (which renders sample purchases impossible or impractical);
Supporting a famous fashion brand in successfully defending bad faith opposition filed by a local pirate who used to be its supplier in China; managing client’s design portfolio globally; filing invalidation actions against design patents ripping off client’s designs; conducting enforcement actions in China, and coordinating raid actions and civil actions in other jurisdictions;
Assisting several clients to release goods seized by local customs due to local pirates’ recordal of pirate trademarks by arguing “OEM exception”; taking actions to invalidate local pirates’ trademark registrations and customs recordal and recommend action points to resolve trademark issues and avoid future seizure by local customs.

Education

Bachelor’s Degree, Beijing Language and Culture University
JD, Chinese University of Hong Kong

Admissions

Legal Profession Qualification (2012)

Languages

Mandarin Chinese (native)
English (fluent)

Recognitions

Legal 500
Managing IP – IP Stars

Recent Insights

PRC – Extraterritorial Use of Unfair Competition Law against Trademark Registry Pirate

A recent judgment issued by the Shanghai IP Court (“SIPC”) clarifies how the PRC Anti-Unfair Competition Law (“AUCL”) can be applied to parties that...

PRC – Amendment of Anti-Unfair Competition Law

The revised law will enter into effect on October 15, 2025. While the new law introduces a number of changes impacting a wide range...

New Guidelines on Non-Use Cancellations

Recently, the China National IP Administration (CNIPA), the parent organization to the Trademark Office (TMO), began introducing new policies and procedures relating to non-use...