How long have you been with
Alibaba? Where were you previously?
I’ve been at Alibaba
since March 2009. Before that I was a Senior Associate with the
U.S. law firm Troutman Sanders’ Hong Kong office,
and before that a local Hong Kong firm, So Keung Yip & Sin.
In all of these positions, my practice involved intellectual
property and information technology.
How big is your team and
what are your responsibilities?
I was the first lawyer at Alibaba
who was tasked to exclusively deal with all IP issues except
for patents. Initially we had a very small team, just myself
and one paralegal. At first, our responsibilities were mainly
trademark and domain name applications around the world,
excluding mainland China.
The role has grown since then. In
addition to Alibaba’s global trademark and domain
name portfolios, our team is also responsible for the
company’s copyrights, enforcement work,
technology, licensing and IP advisory in M&A projects and
transactions. I have also been leading the team in working on
the new gTLD matters since 2010. Our team now has 10 members
consisting of four qualified lawyers including myself, four
paralegals with legal assistant and legal secretary.
Four of our team members are based
in mainland China and the rest are based here in Hong Kong. We
basically handle all of Alibaba’s IP, except for
patents; there is another team consisting of patent attorneys
based in mainland China which handle the day-to-day patent
In addition to maintaining
Alibaba’s portfolios, we also provide support when
intellectual property is involved in other situations, such as
in licensing and M&A deals.
We also manage administrative
actions, litigation and arbitration matters that arise. We use
outside law firms for these cases, as well as online platforms
like MarkMonitor and WebTMS to help manage our portfolios,
conduct online watch services, brand monitoring and enforcement
work, but of course we have to analyze the merits of the cases,
send out cease-and-desist letters and consider instructing
external firms to handle complicated matters should they
Does your team also handle
matters involving the intellectual property of those using
Alibaba’s services, such as brand owners asking to
have counterfeits pulled off of Taobao?
We did assist with some of those
matters, but preliminarily that work is usually handled by
lawyers in that particular business unit and our product
security team. My team is responsible for handling
Alibaba’s own intellectual property prosecution
and enforcement work.
What are some of
Alibaba’s big brands?
Our biggest brand is of course
ALIBABA (阿里巴巴) itself, which is the
name of the group of companies, but also of our business to
business marketplace (www.alibaba.com). TAOBAO
(淘宝), our customer-to-customer marketplace is
also a big brand for us. TMALL (天猫), ALIEXPRESS,
聚划算 (Juhuasuan, a group purchasing
service), ALIYUN / ALIBABA Cloud Computing
(阿里云), ALIPAY (支付宝, a
third-party independent payment solution), are also our
We have many more brands and
marks, ranging from core brands to product brands to defensive
brands, but these are probably our biggest ones.
You mentioned the new gTLDs.
What plans do Alibaba have for them right now?
several of the new gTLDs with our brands, including .alibaba,
.alipay, .tmall, and .taobao. Our initial reason for
registering them was mostly to defend our brands, but I think
the company is going to think of other ways to use them as
The company is also actively
involved in the ICANN meetings and sharing, and treasures every
opportunity to focus and share views on Internet security,
domain matters, Internet governance and related matters, both
from a brand owner perspective and an Internet user
Did you register any
No, not at this time, but that
might be something to consider in the upcoming round in the
Which jurisdictions are the
biggest for Alibaba?
Our IP portfolio covers about 150
countries. Mainland China is our biggest market and about half
of my team’s work. After mainland China, Russia,
the U.S., and the EU are probably the biggest. We have
significant B-to-B and B-to-C marketplace operations in those
While we have some trademarks that
are unique to China, many of them are also international, such
as ALIBABA, TAOBAO, TMALL, ALIPAY AND ALIEXPRESS.
What are some of the
IP-related challenges that you face? Do you face the same sorts
of problems in different countries?
We face more challenges in the
Middle East and Russia than in other regions.
With Russia, perhaps
it’s the geographical proximity, but we find
ourselves often working with our Russian attorneys. There have
been several companies there claiming to be Taobao or Alibaba
exclusive resellers, which may arise because of language
barriers with the users and also some of the challenges in
enforcement. We have had success in both revoking trademarks
that infringe on our IP and also in recovering domains, such as
With the Middle East, our problems
tend to stem from the Alibaba story, which is obviously very
well known there. Therefore, not only do a lot of people use
the exact or similar trademark, but we have also faced
oppositions on the basis of the story. These oppositions have
failed however, in part because this company is so well known
as a global marketplace.
In addition, a couple of years
back we had quite a few cases in India where our brands were
being used for other services like food and catering. However,
we have been successful at opposing such registrations and
enforcing against these uses.
In China, we have been working
hard in securing well-known status for our core brands in
Chinese, including 阿里巴巴 (ALIBABA),
淘宝 (TAOBAO) and 支付宝 (ALIPAY)
marks, which helps with protecting them and the enforcement
What qualities do you look
for in outside counsel and service providers?
Most importantly, we look for
expertise and efficiency. We have our businesses on the
Internet, so we need counsel who understand our markets, keep
up with the changes in the laws and are fast and
Price is important to us of
course, and when we look for help in managing our portfolios,
we usually are able to obtain a favorable discount given the
volume of work we have.
That said, we are not necessarily
chasing after the absolute lowest price. As long as the price
is reasonable, I am fine with it. I was at a large U.S. firm,
so I understand that good legal work is not always the
cheapest, and can be worth it.
English language skills are
important as well. For countries like Japan and India, we look
for lawyers that can write well in English, because
that’s how we communicate with them.
What activities do you
recommend for INTA delegates visiting Hong Kong for the first
For those in Hong Kong or the
region for the first time, I would recommend that they take
advantage of the proximity to mainland China and try to learn
as much as possible, by trying to meet the people and getting
to know the culture. People have their own way of working in
China, so learning about that will be very helpful.
For leisure, I would recommend
sites like The Peak or Lantau Island for some good sightseeing.
I think that while some people will want to do things like go
to Disneyland, this is also an opportunity to try to experience
some more unique Chinese things.