EN

Steven Birt

Partner

My practice is split between Intellectual Property portfolio strategizing and management; IP litigation at court and administrative opposition cases at the Trade Marks Registry (TMR), and in the drafting of documents and advisory work relating to the commercialisation of IP rights.  I have experience in all aspects of IP in the greater China region, in contentious and non-contentious matters, from both a regulatory and enforcement perspective.  My practice also extends into data privacy, gaming, media and entertainment law.

 

phone
+852 2841 6933
mail
[email protected]

My non-contentious IP practice includes representing clients in registering and managing their portfolios of trademarks, patents, designs and domain names in Hong Kong, China and worldwide, counselling on copyright protection (including preparation of software and website related agreements and content), and in the licensing, franchising and distribution of IP rights and properties.  My practice includes advising on media, entertainment contracts, gaming, information technology matters and personal data (privacy).

My litigation cases typically involve seeking injunctive relief as an end-game, but many have involved interlocutory applications for injunctions, preservation of evidence (including Norwich Pharmacal applications) and search and seizure (Anton Piller) orders.  The China related work typically involves counselling clients on IP protection and enforcement strategies, including investigations into infringers and raid actions against retailers and factories, registration of IP rights before the relevant registries, and securing Customs protection thereafter.

I am a Council member and former President (term 2005-2007) of the Hong Kong Institute of Trade Mark Practitioners, Council member of the Intellectual Property Committee of the Law Society of Hong Kong, Member and Subcommittee member of the International Trademark Association (INTA), Member of the International Association for the Protection of Intellectual Property (AIPPI), Member of the Asian Patent Attorneys Association (APAA) and an APAA Emerging Rights Committee member, as well as being a Notary Public.  Through my engagement with the above bodies, I have been involved in several government consultations and lobbies for changes in the law.

I have been consistently recognised for IP work by my peers in international published rankings and was inaugurated into the Legal 500 Hall of Fame in 2020 for Intellectual Property in Hong Kong. I have been recognised by Asia Pacific Legal 500 as a Leading Lawyer in the area of Intellectual Property 2001-2021 inclusive (2017: providing ‘wide and in-depth IP knowledge’ and ‘practical solutions’); by The World’s Leading Trademark Professionals, WTR 1000 (2010-2021), in 2016 as “True-blue litigator and general IP counsellor Steven Birt adds value with his keen regulatory insight.” and 2021 as an “excellent lawyer with a clear understanding of IP laws and a keen intellect, and a strong advocate for his clients’ interests.”  Further plaudits include “excellent service and in-depth advice” and “practical and commercial advice on every aspect of IP law.”

Career Highlights

I have conducted a wide range of IP litigation in Hong Kong (and in China as instructing counsel), including court and TMR proceedings in relation to:

  • Trademark infringement,
  • Copyright infringement,
  • Patent infringement,
  • Passing-off,
  • Trade Secrets and theft of Confidential Information,
  • Domain Names and Cyber-squatting issues and online counterfeiting,
  • Company name hijacking (shadow companies);
  • Trade Mark opposition, cancellation and revocation, and
  • Patent invalidity proceedings.

My clients come from various business sectors and there is no industry specific focus.  Local clients include clothing manufacturers and brand licensees, banks, retail brands, household electrical appliance designers and manufacturers, and other participants in the fast-moving consumer goods (FMCG) sector.  I also have an extensive international network of law firms and trade mark and patent agents whom entrust me with the IP registrations, commercial agreements and disputes matters for their international clients, which include many household names.