Alicia Ma practices in the area of intellectual property law, with particular focus on trade mark and copyright protection, enforcement and commercialization in both contentious and non-contentious matters. Her clients include companies in a range of sectors including consumer goods, food and retail, fashion, technology, entertainment, and life sciences.
- Reviewing and negotiating IP license agreements for a leading mobile voice and data services operator in the Middle East region where the client is seeking core IP assets (including the web platform, mobile applications and the brand name) from its business partner for the setup of a joint venture company in the Kingdom of Saudi Arabia.
- Providing on-going assistance with one of the world’s largest tobacco companies on contentious and non-contentious trade mark matters across the region, including handling clearance searches, trade mark prosecutions, and advising on filing strategies, as well as advising on disputes with third party trade marks and infringement matters.*
- Advising on enforcement strategies and actions on trade mark and copyright infringement matters, including on administrative complaints before local authorities as well as potential civil and criminal proceedings, for a world famous social media conglomerate.*
- Assisting a leading subscription streaming service and production company with trade mark oppositions, cancellations proceedings and potential enforcement actions against third parties’ use and registration of trade marks incorporating indicia of its most popular TV shows.*
- Managing global trade mark portfolio for all brands and handling domain name and trade name disputes infringing on trade mark rights for a company that operates leading bespoke classifieds portals in the Middle East and North Africa, South Asia and Southeast Asia regions.*
- Working on IP due diligence for a buyer in the acquisition of a Chinese textile company, including but not limited to conducting a gap analysis on existing portfolio and infringement assessments against third party rights.
- Negotiating on behalf of a Chinese licensee for a global trade mark license from a Dutch multinational conglomerate for its house brand.
- Working for a US educational training service provider on a range of commercial agreements for assigning and licensing core intellectual property assets, including copyright, trade mark rights and technology know-hows, to a joint adventure company with a major state-owned Chinese company.
- Providing assistance to a not-for-profit global association of investment professionals with copyright infringement matters, including in civil proceedings.
- Advising one of the largest international hotel-chain on nation-wide trade mark infringement matters in China, including on domain name disputes, administrative complaints before local authorities and potential civil proceedings.
- Managing the trade mark portfolio and advising on disputes with third party rights, including in oppositions and invalidation proceedings on a daily basis, as well as advising on enforcement strategies involving administrative and civil proceedings, for one of the largest pharmaceutical companies.
- Whilst working as an in-house counsel, coordinating compliance review of various e-commerce and AI related new projects, products and functions that involves advertisement regulatory, open source licenses, data privacy, export control in multiple jurisdictions. *
- Whilst working as an in-house counsel, regularly delivering trainings on protection of intellectual property assets, including on the mechanism on trade secret protection, internal processes for reporting of potential patentable technologies and copyright and trade mark registrations, as well as on data privacy and export control rules. *
* Denotes experiences at a law firm / company other than DLA Piper.
- Chinese (Mandarin)
- Georgetown University, LL.M, 2016
- University of International Business and Economics, LL.M, 2012
- 2020-2022, associate, Dubai based IP boutique firm
- 2018-2020, legal counsel, Alibaba Group
- 2013-2018, associate, DLA Piper (Beijing Office)
- 2011-2013, intern & paralegal, Beijing Office of a US based international law firm