Catherine Zheng
Catherine Zheng

Catherine Zheng

Partner

LOCATION:
Hong Kong
DIRECT:
+852 2825 9617

Catherine Zheng

Partner

LOCATION:
Hong Kong
DIRECT:
+852 2825 9617


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Catherine specialises in China intellectual property protection strategy and contentious matters. A native Chinese speaker from Shanghai, Catherine studied law at Fudan University and then Chemistry and Law in Canada, qualified in Canada, New York and Hong Kong. She is fluent in both Mandarin and Cantonese as well as English. After spending 9 years in North America studying and practising in an IP firm in Ottawa, she joined Deacons in 2000. 

As head of the patents & designs group, she has extensive experience in all aspects of complex intellectual property litigation and enforcement work in China with a particular focus on patent validity and infringement issues. For the past 14 years, she has successfully represented a large number of local and international companies in litigation at all levels of the PRC courts and actions before the different levels of administrative bodies.  In particular, Catherine advises on complex patent litigation matters and has won high profile patent litigation cases in the Higher People’s Court of Guangdong Province and the Supreme Court of China.

Catherine is also deeply experienced in the protection of trade marks, copyright, trade secrets and confidential information and domain names, as well as IP portfolio management and IP-related commercial transactions, including the exploitation of IP rights, technology transfer issues, conducting due diligence and drafting documentation.   

Catherine’s expertise with both the Chinese and Western worlds of commerce and business lend her a singular advantage in cross-border matters. 

Advising and representing a multi-national group of companies in a series of  patent invalidation and infringement actions in China  relating to several major patent litigations involving circuit breaker technologies in the US.

Advising and conducting a trademark enforcement programme involving a number of brands in the PRC for a well-known US listed fire and safety company and associated companies.  The enforcement programme is part of an on-going effort to eliminate counterfeits of various flow control products in the PRC.  

Acting for the world’s largest online trading platform on trademark portfolio management and enforcement matters on the internet in China, including negotiation for the acquisition of trademarks.

Representing a large US hotel and entertainment chain on the strategic protection of its brand in China, including registration, opposition, cancellation, administrative and Court actions.

Advising an international advertising company in relation to alleged copyright infringement of a musical piece by a French composer.  The alleged infringement was related to a musical composition that was used in the sound track for an advertisement involving a famous mobile phone brand and was extensively broadcasted in the PRC.

Catherine is a regular speaker on PRC IP issues and, in particular, has been actively involved in giving seminars to Mainland companies on expanding their businesses internationally and to foreign companies on China IP issues.  She has also visited many major Chinese cities to speak at seminars organised by various Hong Kong and Chinese trade commissions to promote cross-border business opportunities and economic co-operation under CEPA. 

Memberships

Ordinary Member, The Hong Kong Institute of Trade Mark Practitioners Limited

Committee Member, The International Trademark Association (INTA)

Member, The American Intellectual Property Law Association (AIPLA)

Committee Member, Asian Patent Attorneys Association (APAA) 

Member, The Pharmaceutical Trade Marks Group (PTMG)

Member, The European Communities Trade Mark Association (ECTA)

Education

LLB, Osgoode Hall Law School, York University, Canada (1998)

BSc (Hons in Chemistry), Dalhousie University, Canada (1995)

Law School of Fudan University, China (1991)

Publications/Articles

“OEM after PRETUL – Beijing IP Court finds that OEM constitutes use in non-use cancellation proceedings”, Expert Guides (Aug 2016)

Interviewed and shared views on “Beijing Higher People’s Court, Guidelines for the Hearing of Network-Related Intellectual Property Cases” by China Law & Practice (Jun 2016)

“The Beijing IP Court - Review of the First Year”, Bloomberg BNA World Intellectual Property Report (Jun 2016)

Accolades

IAM Patent 1000

  • Gold Tier Individual in Patent Litigation in Hong Kong (2018)
  • Leading Individual in Patent Transactions in Hong Kong (2018)
  • Gold Tier Individual in Patent Litigation and Transactions in Hong Kong (2017)
  • Silver Tier Individual in Patent Litigation and Transactions in Hong Kong (2016)

Managing IP

  • World’s Top 250 Women in IP (2016 - 2018)
  • Trade Mark Star in China (2016 - 2018)
  • Patent Star in China (2016 - 2018)
  • IP Star in China (2014 - 2015)
  • IP Star in China - “Expert of experts in Chinese IP Law” (2014)

World Trademark Review 1000 (WTR 1000)

  • Gold Tier Individual in Prosecution and Strategy in Hong Kong (2016 – 2019)  
  • Silver Tier Individual in Enforcement and Litigation in Hong Kong (2019)
  • Recommended Individual in Transactions in Hong Kong (2019)

 Euromoney Legal Media Group’s Asia Women in Business Law Awards

  • Best in Patent and Trade Mark Prosecution in Asia (2016)
  • Best in Patent and Trade Mark Prosecution in Asia – Finalist (2015 - 2018)

China Law & Practice Award

  • IP Lawyer of the Year Finalist (2017)

Euromoney Legal Media Group’s Expert Guides

  • Leading Trade Mark Lawyer in Hong Kong (2016 - 2018)
  • Leading Patents Lawyer in Hong Kong (2017)

 Chambers & Partners

  • Leading IP Individual in China (2016 - 2019)  

 Who's Who Legal

  • Leading Patents Lawyer in Hong Kong (2016 - 2018)

 Asia IP Experts

  • Leading Trade Mark Lawyer (2014 – 2018) 
  • Leading Enforcement Lawyer (2014 – 2018) 
  • Leading Litigation Lawyer (2015 – 2018) 
  • Leading Patents Lawyer (2014 – 2018) 
  • Leading Licensing & Franchising Lawyer (2014)

Euromoney Legal Media Group’s Expert Guides

  • Leading Women in Business Law in Hong Kong (2018)
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