Charmaine Koo
Charmaine Koo

Charmaine Koo

Partner

LOCATION:
Hong Kong
DIRECT:
+852 2825 9300

Charmaine Koo

Partner

LOCATION:
Hong Kong
DIRECT:
+852 2825 9300


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Charmaine is Co-head of Deacons Intellectual Property Department and Head of the IP Litigation and Enforcement, Commercial IP and Entertainment and Media Practice Groups.  She is admitted as a solicitor in Hong Kong, Canada and England and Wales.  She is also qualified as a barrister in Ontario, Canada.  Charmaine has a BSc in biology from the University of Toronto, an LLB from Queen’s University, an LLM from Cambridge University and a Diploma in IP Law and Practice from the University of Bristol.  

Charmaine’s practice covers all aspects of IP work including anti-counterfeiting strategies and enforcement of IP rights.  She advises on complex IP enforcement advice and litigation and has won a number of high profile court cases resulting in ground-breaking decisions in the Hong Kong IP field.   

Charmaine advises on all aspects of commercial IP including the structure of commercial transactions and documentation.  Charmaine has extensive experience advising on copyright, data protection and personal data privacy and information technology. 

Charmaine also regularly advises on compliance and regulatory issues relating to marketing and advertising and represents many of the world’s leading advertising and PR companies.   

As one of Hong Kong’s leading entertainment lawyers, Charmaine represents many major US and Asian film studios, international music publishers, record companies and television networks, independent producers, distributors, sales agents, financiers and talent on transactional and contentious issues.  Charmaine was previously in-house counsel for one of the world’s largest entertainment and media companies.

Successfully acted for Tsit Wing (Hong Kong) Company Limited in its long-running and hard-fought dispute with TWG Tea Company Pte Ltd regarding their use of various TWG trade mark in Hong Kong since 2011. We secured success in the Court of First Instance in July 2013, in the Court of Appeal in October 2014 and in the Court of Final Appeal in 2016. This is one of very few IP cases that has gone to the Court of Final Appeal in Hong Kong.   The matter involves complex issues of Trade Mark law and both sides engaged well-known QCs from the UK to argue their cases in court. This case was voted by Managing IP Magazine as the “Hong Kong case of the Year 2013”.

Acting for Guccio Gucci S.P.A. in a trade mark infringement and passing off action against use by one of the founder’s family members of the brand name as part of his own name in a competing new business and successfully obtained interlocutory injunction against the defendants.

Successfully obtained an urgent interim interlocutory injunction for Talpa, the creator of the well-known television singing contest "The Voice", as the Plaintiff, in proceedings concerning the television show “The Voice of China – Zhong Guo Hao Sheng Yin (中国好声音)” against Talpa’s former licensees of “The Voice of China” in China, Hong Kong and Macau. The show is one of the most successful television programs ever and has become a worldwide success. The matter involves complex cross-border strategy. 

Advising a leading international search engine provider on setting up of local search site and compliance with major laws in Hong Kong including IP laws, advertising and other laws and assisting in the lobbying of the proposed legislative changes to the Copyright Ordinance regarding ISP liability.

Advising on all production legal work including drafting relevant documents for a major US Studio in connection with a multi-million dollar film production in Hong Kong and the PRC such as agreements for production services, crew and equipment, costume design, corporate guarantees, director of cinematography.   Advising on PRC and Hong Kong approval and production issues and on litigation in connection with the purchase of a local language film library.

Charmaine is a prolific speaker on a wide range of IP issues, and is the author of the Hong Kong chapters of “Patent Litigation Global Guide”, “Copyright Litigation Global Guide” and “Data Protection & Privacy (Third Edition) published by Thomson Reuters. She is also a contributing author to the Hong Kong chapters of “International Licensing” published by BNA International Inc., the author of “International Advertising Law” published by Globe Law and Business, as well as the Hong Kong Chapter of the International Independent Film & Television Alliance's Arbitration Award and Enforcement Guide.

Memberships

President, Licensing Executives Society of China, Hong Kong Sub-Chapter (2017)

Vice Chairman, Head of Legal Committee of Licensing Executives Society China, Hong Kong Sub-Chapter (2013 - 2014)

Council Member, The Hong Kong Institute of Trade Mark Practitioners

Member, The International Trademark Association

Member, The Asian Patent Attorneys Association

Member, The Law Society of Hong Kong

Member, The Law Society of England and Wales

Member, Licensing Executives Society of China, Hong Kong Chapter

Education

Dipl. Intellectual Property Law and Practice, University of Bristol, UK 

LLM, Cambridge University, UK 

LLB, Queen’s University, Canada 

BSc, University of Toronto, Canada

Accolades

Managing IP

  • World’s Top 250 Women in IP (2016 - 2018)
  • Trade Mark Star in Hong Kong (2016 - 2018)
  • IP Star in Hong Kong (2015)

 World Trademark Review 1000 (WTR 1000)

  • Gold Tier individual in Prosecution and Strategy in Hong Kong (2016 – 2019) 
  • Recommended Individual in Transactions in Hong Kong (2018 & 2019)

 Legal 500

  • Tier 1 Leading IP Individual in Hong Kong (2016 – 2019)

 Chambers & Partners

  • Band 1 Leading IP Individual in China (2017  2019)
  • Band 2 Leading IP Individual in China (2016)
  • Leading IP Individual in Hong Kong (2009 – 2015)

 Asia IP Experts

  • Leading Media & Entertainment Lawyer in Hong Kong (2014 – 2018)
  • Leading Trade Mark Lawyer in Hong Kong (2014 – 2018)
  • Top 50 Licensing Lawyers in Asia (2015)
  • Leading Copyright Lawyer in Hong Kong (2014)

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

  • Best in IP Litigation in Asia (2013 & 2018)
  • Best in IP Litigation in Asia – Finalist for four consecutive years (2014 – 2017)
  • Best in TMT in Asia – Finalist (2012 – 2013)

 Euromoney Legal Media Group’s Expert Guides

  • Leading Trade Mark Lawyer in Hong Kong (2009, 2012 – 2018)
  • Leading Media Lawyer in Hong Kong (2015 – 2017)
  • Leading Technology, Media and Telecommunications Lawyer in Hong Kong (2008, 2010, 2011)
  • Leading Women in Business Law in Hong Kong (2015 – 2018)

 Who's Who Legal

  • Leading Sports and Entertainment Lawyer in Hong Kong (2013 – 2018)
  • Leading Data Lawyer in Hong Kong (2018 & 2019)
  • Leading Telecommunications, Media & Technology Lawyer in Hong Kong (2016 & 2017)
  • Leading Trade Marks Lawyer in Hong Kong (2012 – 2018)

 Asialaw Profiles

  • Market Leading IP Lawyer in Hong Kong (2017 & 2018)
  • Leading IP Lawyer in Hong Kong (2009, 2012 – 2013, 2016)
  • Leading IT, Media & Telecommunications Lawyer in Hong Kong (2009, 2012 – 2013)

IAM Patent 1000

  • Silver Tier Individual in Patent Litigation in Hong Kong (2018)

 Media Law International

  • Tier 2 Leading Individual in Media Law Practice in Hong Kong (2016)
  • Tier 2 Leading Individual in Media Law Practice in China (2016)
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