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Cheng Tan

Cheng TanSenior Associate

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I am an IP lawyer with expertise in procurement, enforcement and commercial exploitation of brands, designs and copyright. My experience covers IP acquisition and related contentious issues, settlement agreements and licensing in a variety of industries, some of which include finance, technology, motorsports, beverage, clothing and retail. Much of my work has an international element. I also counsel on IP Rights of brand assets used on the internet.

I am an IP lawyer with expertise in procurement, enforcement and commercial exploitation of brands, designs and copyright. My experience covers IP acquisition and related contentious issues, settlement agreements and licensing in a variety of industries, some of which include finance, technology, motorsports, beverage, clothing and retail. Much of my work has an international element. I also counsel on IP Rights used on the internet.

I have been mentioned in the inaugural 2011 World Trademark Review 1000 as “adding depth to the group”. I have contributed to various publications including Trade Mark World, World Trade Mark Review, quoted in IP 360 on trade marks and geographical indications. I was also a contributory editor to the Trade Mark Law of Informa Professional Academy (2007-2009).

I am a member of the International Trade Mark Association (INTA) and the European Communities Trade Mark Association (ECTA). I also serve in the Law Committee of ECTA.

Intellectual Property

I started practising as an IP lawyer back in 1997 with experience in conducting anti-counterfeiting raids for software companies. I have advised and drafted contracts involving telecoms providers across different jurisdictions, sponsorship agreements in motorsports and franchising agreements. Of late my experience has been focussed on strategic advice on brand and design management, enforcement and commercialisation.

Brand Management

Working with the Trade Marks team, we assist private individuals to major corporations in the acquisition of trade marks, be it UK or worldwide, coordinate proceedings, act on brand securitisation transactions, licensing programmes or advising on major global re-branding exercise.

I have also handled design disputes and managed pan-European action relating to these.

I am happy to advise on copyright, image rights and issues arising from misuse of brands on the internet.

Trade Marks & Domains

I am experienced in dealing with trade mark prosecution and contentious matters. I handle cross border contentious proceedings often having to coordinate simultaneous litigation and opposition proceedings, yet, where appropriate I negotiate corresponding settlement of cases.

In handling portfolios, I have conducted global IP audits, advised on IP management and transfer pricing. I also provide advice relating to the registration, enforcement and protection of clients’ online IPR.

Advertising & Marketing

I act for brand owners and agencies on advertising campaign clearance and advise on and manage associated legal risks. With new media and technology being increasingly used, effective management and enforcement of intellectual property rights becomes ever more important. I advice on global IP clearance, filing programmes and risk management for the successful delivery of advertising campaigns.

Being involved with how clients use technology to reach their audience provides me with the insight needed to advise on the IP issues arising from the campaigns.

Media & Entertainment

I have a particular interest in the overlaps in IP protection in converging economies. Working with clients in these industries, I provide practical legal advice on IP rights in commercial contracts and disputes arising from these.

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