Co-Country Managing Partner, China
Horace Lam has over 25 years’ experience of helping multinational and Chinese companies with all types of IP issues in China and overseas. He regularly assists Fortune 500 companies in developing and executing IP strategies tailored to their Asian businesses.
He leads a strong team of dedicated IP lawyers with full Greater China coverage across Beijing, Shanghai and Hong Kong, and throughout Asia.
Horace has broad experience advising on complex IP matters, including pan-Asia brand protection strategies, global trademark portfolio management, cross-border IP litigation, infringement and enforcement, multi-jurisdictional technology, knowhow transfer and licensing matters, and complex IP structuring and transactions.
He has managed numerous IP disputes in China and other parts of Asia, including licensing, trademark, copyright, patent, confidential information, trade secrets and design rights matters. He also advises clients on IP issues relating to R&D collaborations, and inventor ownership and remuneration issues.
Horace's IP experience extends across a range of industries, including consumer products, luxury goods, hospitality, aerospace, automobiles, tobacco, spirits and beverages, oil and gas, high-technology, computer and software products, and telecommunications.
In recent years, he has advised an American multinational technology company on a full range of brand and trademark matters for several of its high-value business units and brands on a global basis, with a specific focus on Greater China and Asia. This has included advising on strategy and trademark filings, oppositions, cancellations and enforcement.
Horace has also recently advised a leading UK pharmaceutical company on the management and protection of its consumer healthcare and vaccine brands in China. He assisted the company in taking numerous actions to protect and enforce some of its highest-value brands, and in winning a series of civil litigations against one of the most serious single infringers before the highest court in China, the Supreme People's Court.
Horace’s experience includes advising:
- An American multinational technology company on the full range of brand and trademark matters for several of its high-value business units and brands on a global basis, with a specific focus on Greater China and Asia. This included advising on strategy and trademark filings, oppositions, cancellations and enforcement.
- A leading UK pharmaceutical company on the management and protection of its consumer healthcare and vaccine brands in China, assisting the company in taking numerous actions to protect and enforce some of its highest-value brands in China and in winning a series of civil litigations against one of the most serious single infringers before the highest court in China, the Supreme People's Court.
- A number of hotel chains on a range of matters including:
- a wide range of branding matters, from prosecution and infringement to domain name and commercial intellectual property issues, throughout China;
- all brand protection-related matters in China, including trademark filings, oppositions, cancellations and more, through to administrative, civil and criminal enforcement actions, and successfully obtaining a well-known trademark recognition for a client in China;
- all brand issues relating to the launch of new hotel brands and outlets, and commercial intellectual property matters including domain name recovery and actions against cybersquatters;
- localisation and commercialisation of businesses in China; and
- various intellectual property matters including the acquisition of intellectual property rights in other jurisdictions, digital marketing, loyalty and privacy matters in Asia.
- Ping An Insurance (Group) Company of China Limited in connection with its global patent filing strategy, and trademark prosecution and infringement matters within and outside of China.
- The world's largest publicly traded oil and gas company; devising and handling a China-wide anti-counterfeiting program, including successfully pursuing parallel cross border litigations, criminal actions and administrative enforcement programs, successfully obtaining a well-known trademark recognition via civil litigation in China, and assisting the client with all trademark related prosecution and advisory matters in China.
- A Danish multinational toy maker on IP issues relating to its proposed entertainment project in China, including copyright subsistence and protection, trademark ownership and licensing, content protection, distribution, regulations and compliance.
- The most-watched sports league in the world on copyright protection against the unauthorised live-streaming of its matches in China, submissions on the draft amendments of the Copyright Law to the State Copyright Administration in connection with infringing devices that offer live broadcasting and playback of its matches, as well as submissions to the HK SAR government on proposed amendments to the Copyright Ordinance of Hong Kong in connection with streaming.
- A British free-to-air television network on stopping the unauthorised broadcasting of one of its popular online programmes based on copyright infringement.
- A Chinese multinational technology company, specialising in internet-related services and products and artificial intelligence, on open source related compliance and licensing issues of its driverless car platform, including review of its open source policy, compliance of third party licensing terms, and licensing of its own proprietary codes under the Apache terms.
- An Australian not-for-profit enterprise, which conducts research, development and marketing along the worldwide supply chain of Australian wool, on IP issues relating to the licensing of its course materials regarding wool innovations, management and manufacturing to Chinese universities.
- Logitech, the leading Switzerland-based global manufacturer of computer peripherals and software, on several intellectual property infringement matters relating to its trademarks, designs and patents covering various award-winning products such as the BOOM speaker, the SPOTLIGHT presentation pen and the LOGITECH MX MASTER and Evo-RX mice.
- A global Belgian materials technology company on several patent infringement matters across China, Japan and Korea involving a chemical catalyst using battery material technology, including conducting investigations, assessing infringements and other issues, and advising the client on legal issues, procedure and strategy.
- A large Chinese state-owned company on an IP-driven deal with Deutsche Fußball Liga, covering issues relating to football match broadcasting rights and co-establishing football training centres in China.
- The operator of one of the world’s largest game developers and publishers on compliance issues with regard to the launch of sweepstakes in 31 jurisdictions around the world (including the US, the majority of the EU and a large number of countries in Asia Pacific), including issues relating to product design, compliance with anti-gambling laws, risk assessment and mitigation measures.
- Chinese (Cantonese)
- Chinese (Mandarin)
- University of New South Wales, B. Com (Finance) with merit and LL.B.
Awards and recognition
- Leading individual and recommended lawyer in Intellectual Property, China, The Legal 500 Asia Pacific 2014-22
- IP Star, Managing Intellectual Property 2014-21
- Gold Band, World Trademark Review (WTR) 2020-22
- Named one of The World's Leading Trademark Professionals, WTR 2019
- Band 2 lawyer in Intellectual Property, China, Chambers Greater China Region 2014-22
Publications and media
- Landmark ruling could turn the tide against trademark hijackers in China, WTR, 14 July 2022
- Chinese court rules in first NFT copyright infringement case, Lexology, 9 June 2022
- China’s Campaign to Strengthen IP Enforcement, Insight Magazine, AmCham Shanghai, 24 September 2021
- Trademarks Co-Existence Agreement: China, Practical Law China
- Trademark Assignment Agreement (Pro-Assignor): China, Practical Law China
Memberships And Affiliations
- Member of the International Trademark Association (INTA)
- Former Chair of the China Sub-committee, Anti-Counterfeiting and Enforcement Committee, INTA
My latest insights
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18 May 2023 .3 minute read