BROUGHT TO YOU BY
本文作者
甄维仁 Barry Yen
观韬律师事务所香港办公室合伙人
Global Intellectual Propery Odyssey
↑ Barry enjoyed hang gliding to relax
Antipodean Origins
Barry completed an Arts and Law degree in Australia in the late 80’s. Following admission as a solicitor of the Supreme Court of New South Wales he commenced his legal career in Australia’s leading patent and trade mark attorney firm. At that time non-contentious intellectual property [“IP”] matters - registering marks, patents and designs - was mostly handled by several established patent firms. The principal at my firm, Dan Shanahan - wrote the Bible on” Australian Law of Trade Mark’s and Passing Off”. My immediate supervisor was an exacting attorney who provided excellent tutelage and updated subsequent editions of the trade mark Bible. It was a privilege to have such expert guidance. I worked tirelessly to justify the patient training and faith given to me as a junior lawyer.
Passage to HK via England
At the same time, the protection of intellectual property rights [IPR] in HK was gaining prominence. The dominant international US law firm in Hong Kong appreciated the importance of servicing this relatively new practice. There were not many specialists available locally so they scoured the region for candidates with the necessary skills to advise and the personality to build the practice. Having responded to their advertisement in Australia in early 1989, I went for a five-week overland camping safari in East Africa before a face-to-face meeting in their London office. The interview was positive so the next step was to be assessed by the Hong Kong partners. This led to a wonderful job offer. I tidied up my modest affairs in Sydney placed my hang-glider in storage and flew to HK keen for international legal and cultural exposure.
The quickest way to qualification as a solicitor in Hong Kong was to earn admission in England first and then applying for recognition in HK. I studied for the UK Qualified Lawyer Transfer Scheme exam while on an Asian tour for the Hong Kong Dragons national rugby team. This led to admission to the roll of solicitors in England and Wales, and membership of The Law Society of England and Wales.
Having, secured the necessary qualification and supporting documents, I was quickly admitted as a solicitor of the High Court of Hong Kong. The recognition of my lawyerly status in England was a privilege afforded by the pre-1997 Colonial administration. This saved me two years as a “trainee solicitor”. Whilst “solicitor” is now understood to refer to a qualified professional legal advisor, the term originates from the 15th century – well before Britain controlled Hong Kong – and referred more broadly to "one who conducts matters on behalf of another". It has been an honour to be on the roll of courts across the world.
Bustling HK
Hong Kong’s business environment thrived throughout the 1990’s, and intellectual property issues abounded. Global businesses manufactured goods in China for a fraction of what it would cost back in the US, EU pf other industrialized country. HK had an important role in the distribution, financing and management of production.
Having advised clients of a major US firm and then a major HK firm Barry joined a boutique commercial practice, in the late 90’s. The team offered the ‘big law experience” with the flexibility and nimbleness demanded of new businesses to HK.
A HK IP professional in a global market
As the partner responsible for the intellectual property practice, we rode the strong wave of Hong Kong’s vibrant economy. Companies had the budget and appetite for investigating counterfeiting activities and passing off, sending cease and desist letters, and applying for judicial remedies like injunctive relief and orders for costs and damages. Most of these actions were based on robust trade mark registration programs so we have always taken care to understand the business of our clients to provide detailed and future proof specifications of goods and services. We always strived to keep up with the law in HK and comparable common law jurisdictions. We are pleased that court cases that we have successfully handled on revocation actions are still cited as precedents in HK.
The IP profession in Hong Kong is relatively small and collegiate so we were also very glad and blessed to handle contentious matters when other IP firms had conflicts of interest or needed a supervisor when they executed Anton Piller orders. This affirms the need to be on good terms with peers and to maintain a reputation for being skilled, dedicated and trustworthy. One of my best referrals was an invitation to participate in a multi-party arbitration over a chain of department stores. The disputing parties including private equity investors were represented by a “who’s who” of the top US commercial firms. I was excited visit New York to address the panel including two retired judges. Unlike some witnesses I did not fly in and of New York on a private jet. This was an incredible time for my career and the IP profession.
Speaking engagements
I thrived in that environment where many new businesses started in HK to manage activity in China. The US firm was dynamic and understood the benefit of networking and building relationships. This suited my energetic and outgoing character. I was always meeting new people at specialist global and regional conference for IP professionals. I was invited to speak at conferences in the 1990’s such as the Asian Trade Mark Summit (Hong Kong), on IP protection in the PRC, and Intellectual Property Rights Protection in China (in Beijing). In the new millennium I bolstered my international profile by thought provoking speeches on:
"Cybersquatting" at the "Trademarks in Cyberspace Forum 2005" in Vancouver.
"Key Challenges Facing the IP Profession in the Asia - Pacific Region" and "Counterfeiting and Piracy in the Asia Pacific" at the "Trading Ideas Symposium" in Sydney organized by the government’s IP Australia in 2007. That a co-speaker was the then Director General of the World Intellectual Property Organisation, added to the profile of the conference. This was a great opportunity to exchange views and interact with government official and policy makers around the Asia Pacific.
"Counterfeiting and Piracy" and "Challenges to Enforcement in the Digital Age" at the APEC Workshop in Nha Trang Vietnam in July 2007, at the invitation of Vietnamese officials who attended the IP Australia Symposium.
"Celebrities and Trademarks" at the International Trademark Association's 132nd Annual Meeting in Boston US) in 2010.
“Mediation” for the Hong Kong government’s “Mediation Week” in May 2016.
Educating others
Throughout this time, Barry also helped to educate the next generation of intellectual property practitioners. He was a part-time lecturer for The University of Hong Kong's SPACE program and the Advanced Diploma in Legal Studies, and also Macquarie University's Graduate School of Management. His comments on intellectual property have also been quoted in publications such as “Fortune” magazine and “Managing Intellectual Property”. Since 2017 Barry has assessed the Civil Advocacy skills of students undertaking the Post Graduate Certificate in Laws at Hong Kong University.
Barry has authored various articles and reports on intellectual property. His insightful works have been circulated in popular industry publications such as International Corporate Law, Trademark World, Revue du Droit de la Propriete Intellectuelle, Trademark Yearbook, as well as Trade Marks: World Law and Practice.
Giving back
I was helped by many people along my journey and have been very grateful for the connections and friendships. Having derived so much joy from the experiences and interactions I have been keen to help build and give back to the profession. The IP field is perhaps the most collegiate of all the legal disciplines. There are many local and international bodies that we IP practitioners can participate in and contribute to.
To this end Barry has enjoyed longstanding membership of the International Trademark Association (INTA). Through INTA he has consistently worked with other global practitioners to advance the interests of brand owners. A notable contribution was with the Trademark Reporter Task Force. In that role he reported on developments in the case law and practice relating to trade marks in Hong Kong, China, Cambodia and Macau. Barry also served on INTA's "Amicus" sub-committee, and the East Asia & Pacific Subcommittee of INTA's Legislation & Regulation Committee (2006-2007). In 2006 INTA's Legislation & Regulation Subcommittee presented submissions to the Chinese authorities on possible revisions to their Trademark Law of the PRC. Most recently, Barry was appointed to INTA’s Presidential Task Force 2023-24. This task force produced guidelines on how to positively engage the media on IP issues as well as to effectively communicate to non-IP stakeholders to increase understanding of the issues facing brands and to maximize the value of IP assets.
Barry was the Chairperson of the Intellectual Property Committee of the American Chamber of Commerce in Hong Kong in 1999 and 2000, and also the President of the active Hong Kong Institute of Trade Mark Practitioners (HKITMP). As a council member of the HKITMP Barry has been contributed to discussion papers on necessary amendments to the Companies Ordinance to protect brand names, filing submissions on possible amendments to the Copyright Ordinance to address the challenges created by the digital revolution as well as providing oral submissions to the Bills Committee of the Legislative Council on possible changes to the Sale of Goods Ordinance.
Barry has been a member of the Asian Patent Attorneys Association (APAA) for over 30 years and has attended their annual meetings for as many years, and updated peers on developments in HK law and practice. This has provided wonderful opportunities to visit cities throughout Asia (by the sea, near imposing mountains and with picturesque harbours), enjoy diverse cultures and develop personal relationships with delegates from the various member Asian groups and quests from all continents.
People business
Intellectual property rewards those who keep up with the law, are dedicated and devoted to clients’ interests, are outgoing and can engage people. Since the genesis of clients is being able to meet and forge personal relationships, I have collected numerous business cards from delegates and other speakers at conferences since the early 90’s. These cards are still kept in alphabetical order in metal boxes. Readers under 30 may have to visit a stationery shop or a museum to see such card boxes. Now scanning QR codes, transmitting details electronically and interacting through the ether is on the rise.
Asserting rights
The struggles of Homer’s Odyssey are somehow mirrored in the tensions between competing businesses with IP at the core. Cease and desist letters fly like ancient javelins, frank and vigorous discussions on blame and the strength of claims reflecting ancient horseback jousts, and trials leading to judicial decisions vindicating or dismissing claims bind parties like the ancient Gods.
The recent five or so years have witnessed economic and social turmoil. This has reduced budgets and appetites for court action. Whilst we are still sending C&D letters the emphasis is on settlement. Costly injunctions are being replaced by commercial discussions and concessions so the parties can focus on real business. The reduced appetite for court actions has meant gentler communications and amicable outcomes.
New business & Financial gains
Whilst litigation has eased off, the beauty of IP is that there are new issues filling the time and keeping us fresh. This comes from new technologies like artificial intelligence and expectations like sensitivity to the capture and use of personal data. These new areas tend to be handled by IP lawyers and those who make the time to read and understand the issues will be well placed to attract clients.
Barry takes pride in being at the forefront of such legal developments. When animation (moving) trade marks were allowed for registration Barry secured the first registration for this type of "non-traditional" trade mark. This enhanced the portfolio of a major local client who understood the value of trade mark protection and was willing to invest funds to secure a global portfolio. The extensive portfolio was part of the strategy we planned with management to support a vision for the unfettered growth of the business in every developed economy and also emerging market. By the time most registrations were in place 18 months later the invested value of the insurance business had grown from about US$2.1 Billion to about US$4 Billion. This increase in value eclipsed the $ funds committed to trade mark protection.
Accolades
Barry’s expertise is recognized in his inclusion in multiple editions of the Guide to the World's Leading Experts in Trade Mark Law and every edition of the Hong Kong WHO's WHO of the Law. Barry has also been recognized as one of Hong Kong's leading lawyers in the e-business sector in AsiaLaw-Leading Lawyers – The Definitive Guide to Asia 's Leading Lawyers. In 2005, 2006, 2007 and 2008 Barry was also identified by the Leading Lawyers Survey as one of Asia's leading business lawyers. Asia IP listed Barry as an IP expert in 2022 and he more recently received the Finance Monthly Legal Award in the Intellectual Property category in 2023. The World Trademark Review described Barry as a “well-published thought leader on intellectual property” and a recommended expert in the field.
Under Barry's leadership the boutique IP practice was recognized by Managing Intellectual Property as having being one of the top ten intellectual property practice groups in Hong Kong. The” Lawyer Monthly” publication, “The Legal 100 Asia” magazine and the “Corporate International” publication recognized Barry’s practice as the "Intellectual Property Law Firm of the Year – Hong Kong" throughout the 2010’s.
The future
The boutique practice was an ideal platform for Barry and his team to showcase their talents to international businesses interested in Hong Kong and China. Hong Kong has been progressively integrating with the larger Chinese economy. The development of Hong Kong is being more heavily influenced by mainland policy and economic developments. It was therefore natural and important for our IP and Technology practice to align with a China based group with expertise in administrative, commercial, corporate finance, dispute resolution real estate, tax and many other specialities across numerous offices in China. The next chapter of Hong Kong’s growth is also China’s future.
A symmetry has been achieved ... originating from the leading national patent and trade mark attorneys in Australia, to the pioneering global western law firm in HK, to managing a renowned local boutique, and now joining an immense Chinese practice that will showcase his expertise to a new audience. Barry looks forward to building his practice by his focus on excellence, being able to explain complex legal issues to clients, providing practical solutions, and demonstrating his commitment to the interests of existing and future clients.
Barry’s journey is a testament to the possibilities available to professionals who strive to be at the leading edge of legal practice, have a sense of adventure, are energised when addressing new issues and industries, and derive joy from helping others to protect their commercial interests and enhance the value of their businesses.
