Winnie Tam SC, JP

  • Senior Counsel, Hong Kong Bar
  • Barrister-at-Law, England & Wales
  • Deputy Head of Chambers, Des Voeux Chambers

Year of call

  • 1984 (Hong Kong)
  • 1988 (UK Bar)
  • 2006 (Hong Kong Inner Bar)

Practice areas

International Arbitration
Technology Transfer Disputes
Commercial Litigation
Investment Disputes
Mediation
 

Profile

Winnie was awarded the title of Senior Counsel by the Chief Justice of HKSAR in 2006. She was elected to serve as the Chairman of the Hong Kong Bar Association between January 2015 to January 2017 and in that capacity spearheaded a number of significant reforms.

In 2015, she was appointed as a Recorder of the Court of First Instance, High Court of the Hong Kong SAR. In her capacity as a Deputy High Court Judge and then Recorder, she has adjudicated on a wide range of civil and commercial matters. She is fully bilingual in Chinese and English, and has an excellent command of Putonghua and written Chinese. Winnie has broad experience in commercial especially intellectual property litigation. For a selected list of cases she has been involved in, and a list of the recent speaking engagements, please visit the website www.dvc.hk. Published reviews of her work by other members of the legal industry are extracted below.

In 2016, she was honoured as an Overseas Bencher of the Middle Temple Society.

Winnie is a panel arbitrator of the HKIAC’s Intellectual Property Specialist Panel, a CIETAC panel arbitrator, a member of the Expert Committee of the Hi-tech and IP Arbitration Committee of the South China International Arbitration Commission (SCIA), a panel arbitrator of  SCIA, and a fellow of the Hong Kong Institute of Arbitrators. She is a WIPO panel mediator, JAMS panel mediator and a CEDR-accredited mediator. In her capacity as a leading intellectual property barrister she has been invited to join a working group of the Department of Justice on the arbitrability of intellectual property rights, and has contributed to the drafting of a bill presented to LegCo in December 2016.

Winnie has been appointed presiding arbitrator and co-arbitrator in cases involving international commercial and joint-venture disputes, international intellectual property disputes, international gaming rights licensing disputes and foreign investment disputes in the PRC. She has been appointed as arbitrator in arbitrations to be conducted both in English and in Chinese. She has acted as leading cousel and co-counsel in international arbitrations and court actions in aid of international arbitration. 

 

  • Appointed presiding arbitrator in an arbitration under HKIAC Rules 2013. The dispute arose from a joint venture between a Hong Kong company and a major machinery manufacturing company from Northern Europe to the value of USD 200M in which technology transfer was the crux of the parties' dispute. Issues involve complex international issues as well as issues on China law and Hong Kong law.
  • Appointed as presiding arbitrator under the ICC Rules working with leading international arbitrators in the region. The claim is one on licensing and development of software to the value of USD 100M.
  • Appointed as co-arbitrator by the Shenzhen International Arbitration Centre (formerly SCIA) in a cross-border sale of goods dispute worth roughly RMB 30M. Complex issues of company insolvency law are involved. The arbitration is conducted under SCIA Rules.
  • Appointed as co-arbitrator to work with international arbitrators in the region in a major dispute between a mainland Chinese company and Japanese companies arising out of an OEM manufacturing agreement. The core allegation is breach of confidence in technology relating to the making of machinery. The arbitration is under UNCITRAL rules. A large amount of technical information is involved. 
  • Appointed as lead Counsel to attend court to obtain ancillary relief in aid of arbitration in a case involving a dispute between the franchisor and licensee to a popular show.
  • Appointed as lead Counsel to represent a manufacturer of hi-tech apparatus in multiple number of disputes with its competitor in China. Acted as co-lead counsel with US patent counsel in two arbitrations under UNCITRAL rules for clients in the same group of companies. The core allegations related to infringement of multiple patents and use of confidential information by former technical employees. Emergency arbitration procedure was involved in one set of the proceedings.
  • Deputy High Court Judge (2011 - 2014)
  • Recorder of the Court of First Instance, High Court of Hong Kong SAR (2015 - )
  • Chairman, Standing Committee on Practice Development, Hong Kong Bar Association (HKBA)
  • Chairman, Standing Committee on China Practice Development, HKBA
  • Member, Committee on Intellectual Property, Committee on Arbitration, HKBA
  • Co-chair, Forum for Advocates and Barristers, International Bar Association (IBA) (2016 - 2018) 
  • Member, Policy Sub-Committee, Bar Issues Commission, IBA
  • Member, Committee on Emerging IP Rights, Asian Patent Attorneys Association
  • CIETAC Panel Arbitrator
  • HKIAC IP Panel Arbitrator
  • Shenzhen International Arbitration Centre, Panel Arbitrator
  • World Intellectual Property Organization, Panel Mediator
  • JAMS, Panel Mediator

 

  • Member, Law Reform Commission
  • Chairman, Communications Authority
  • Member, Chief Executive's Council of Advisers on Innovation and Strategic Development
  • Member, Advisory Committee on Corruption, Independent Commission Against Corruption
  • Member, Board of Trustees of the Hong Kong Jockey Club Music and Dance Fund
  • Member,  Board of Directors of the West Kowloon Cultural District Authority, HKSAR
  • Member, Hong Kong Tourism Board. 
  • Member, Qianhai Special Free Trade Zone Consultative Committee (PRC)
  • Member, Judicial Officers Recommendation Commission, HKSAR (2016 - 2018)
  • ABG Juicy Couture LLC v. Bella International Ltd – HCA 1764 of 2008
  • Acron International Technology Ltd v Chan Yiu Wai and Law Siu Chun - FAMV 13/2018
  • Alviero Martini SPA v. Bubble Retail Management Ltd – HCA 1937/2008
  • Apple Daily Ltd v. Oriental Press Group Ltd – HCA 1396/2009
  • Bruce James Stinson v. Gu Ming Gao – HCA 2352/2012
  • California Red Ltd v. Gold Typhoon Entertainment Ltd – HCA 2684/2008
  • China Construction Realty Ltd v. Lucky Dragon Ltd  – HCA 1237/2012
  • Chor Ki Kwong David v. Lorea Solabarrieta Cheung  – HCA 1870/2012
  • Christie Manson & Woods Ltd  v. Chritrs (Group) Ltd – HCA 1418/2011
  • German Pool (Hong Kong) Ltd v. Dong Woo Industrial Co Ltd – HCA 166/2008
  • Gmedia Technology (Beijing) Co Ltd v. Tencent Holdings Ltd - HCA 495/2017
  • Guccio Gucci SpA v. Cosimo Ludolf Gucci – HCA 1582/2008
  • Horner Resources (International) Co Ltd v. Savvy Resources Ltd – HCA 335/2010
  • Hugo Boss Trade Mark Management GmbH & Co KG v Britain Boss International Co Ltd - CACV 114/2015
  • L'Oreal (UK) Ltd, Yves Saint Lauren (YSL) v YLS Brands HK Ltd - HCA 2814/2017
  • Louis Vuitton Malletier SA v. Marco Leather Goods Ltd – HCA 1511/2009
  • M.G.X. Asia Ltd v. China Way Global Co Ltd – HCA 2001/2013
  • Menfond Electronic Art & Computer Design Co Ltd v. Wong Wang Tat Victor – HCA 293/2011
  • Midland Business Management Ltd v. Lo Man Kui  – HCA 1599/2010
  • Nerium Biotechnology Inc v. Nerium International, LLC – HCA 1188/2016
  • OPG Human Resources Ltd v. Apple Daily Ltd – HCA 481/2009
  • Oriental Food Industries Sdn Bhd v. Sze Hing Loong Development Ltd – HCA 2094/2011
  • Pan Chung Pat Wo Tong (HK) Ltd v. Law Yan Wai t/a Singapore Medicine Co –CACV 239/2013
  • In the matter of an application by Ping An Securities Ltd – HCMP 2788/2004
  • Ringier Print (HK) Ltd v. South China Media Ltd – HCA 2312/2009
  • Sky King Machinery Engineering Ltd v. Chun Wo Construction & Engineering Co Ltd – HCA 1918/2013
  • SNE Engineering Co Ltd v. Hsin Chong Construction Co Ltd – HCA 1466/2012 (26.3.2014)
  • Star TV Filmed Entertainment (HK) Ltd v. Golden Princess Amusement Co Ltd – CACV 61/2007
  • Stichting BDO v. Banco De Oro Unibank Inc – HCA 1162/2009
  • Talpa Global BV v. Star China Media Ltd and Meng Xiang Quang Yin Cultural and Broadcast (Shanghai) Co Ltd – HCMP 121/2016
  • Tsit Wing (Hong Kong) Co Ltd v. TWG Tea Company Pte Ltd – HCA 2210/2011, CACV 191/2013, FACV 15/2015, FAMV 6/2015
  • UMG Recording Inc v. Profit Chart Development Ltd  – HCA 472/2010
  • Vita Green Health Products Co Ltd v. Vitasoy International Holdings Ltd – HCMP 593/2014
  • Wind River Systems Inc v. Digital China Holdings - HCA 1550/2012
  • Xcelom Ltd v. BGI-Hong Kong Co Ltd – HCA 3089/2015

 

Selection Arbitration Cases

  • Acted as leading counsel in interlocutory hearing of a Court application in aid of arbitration in relation to a major media and entertainment dispute requiring urgent injunction
  • Acted as co-leading counsel in an arbitration under UNCITRAL Rules in a technology/patent dispute between two leading manufactures in Taiwan and Mainland
  • Acted as leading counsel in a hearing of an application for emergency arbitration under UNCITRAL Rules
  • Acted as Presiding Arbitrator in a USD$200 million claim on international joint venture agreement for manufacturing in China
  • Acting as co-arbitrator in a major arbitration between a Japanese company and a Chinese manufacturer including multiple mechanical engineering patents and trade secrets under UNCITRAL Rules
  • Acting as co-arbitrator in an arbitration under the SCIA rules involving a dispute between two companies one of which is in liquidation
  • Hong Kong Legal Services Forum, Qingdao, China (7-20.9.2014)   “Protecting Intellectual Property Rights”     
  • Business of IP Asia Forum (BIP Asia) 2014 (5.5.2014)  “Best Practices on IP Dispute Resolution through Mediation and Arbitration”
  • IPBA Conference Host Committee Session (8.5.2015) "One Country Two Systems: Opportunities for International Legal Professionals in Mainland China and Hong Kong” 
  • Intellectual Property Department, HKSARG, IP Mediation Workshop (23.5.2015) “Evaluative Approach in IP Mediation Practice” 
  • East China University of Political Science & Law, Shanghai (华东政法大学) (30.5.2015) 商業先發制人法律手段」- 資產國際追蹤及全: 資產禁止令; 證據保全:   證據搜查令;檔披露,詢問及其他中期措施 (Pre-emptive Remedies in Commercial Litigation)
  • Asialaw Asia-Pacific Dispute Resolution Summit (24.9.2015)  “Brand and Reputation Management : Protecting Your Organizations’ IP and Handling Disputes”
  • BIP Asia Forum 2015 (4.12.2015) “IP Arbitration and Medication: an Effective Alternative to Resolve IP Disputes”
  • Licensing Executives Society Seminar (25.4.2016) “A storm in a TWG Teacup”
  • 深圳律师协会论坛  (28.4.2016) “如何避免跨境知识产权纠纷与纠纷解决方法”
  • Hong Kong Mediation Council (3.6.2016) “Use of Mediation in Intellectual Property Disputes”
  • Hong Kong Trade Development Council “In Style-Hong Kong” Bangkok (5-7.10.2016) “Dispute Resolution on Intellectual Property Matters”
  • Union des Avocats (UIA) Annual Conference: Budapest (31.10.2016) “Arbitration of disputes in Sino-foreign Joint Ventures” (moderator of panel of speakers)
  • Legal Services Forum: Nanjing  (15.11.2016)  “Prevention and Strategy in handling Cross-border IP Disputes”
  • Hong Kong Institute of Arbitrators Seminar  (12.12.2016) “Mediation with Evaluative Elements and Techniques”
  • Chinese University: EMBA Forum (20.2.2017) "Leaders at Crossroads: Does 'Rule of Law Matter?”
  • Peking University : Guest Lecturer on  March to April 2017 “International Arbitration” in LL.M. degree course
  • 20th Commonwealth Law Conference – Melbourne  (20-24.3.2017) Speaker in “Advocacy Masterclass – Appellate Advocacy”
  • DVC Breakfast Seminar – “Crossroads in Intellectual Property Law (8.4.2017) Arbitration, Brexit and Recent HK Cases”
  • “Mediate First Pledge” 2017 Seminar on Mediation (13.6.2017) “Practical Tips in Mediating IP and Innovative Technology Disputes”
  • “中國對外投資趨勢及香港的角色”高峰論壇 (法律服務和爭議解決 (14.6.2017) 香港的角色和優勢)分論壇  :  “如何在國際商貿爭議中解決知識產權問題”
  • ICC – HKBA Joint Seminar on ICC Arbitrations  (4.9.2017)
  • IBA Annual Conference Sydney 2017 (10.10.2017) “The Role of Advocacy in Mediation and Arbitration”
  • Hong Kong Arbitration Week – Seminar hosted by CIETAC (16.10.2017) “That Eureka Moment - Breakthrough moments on conducting arbitration”
  • ADR in Asia Conference organized by HKIAC (17.10.2017) Plenary session speaker on “ Arbitration in a Changing World”
  • ICAC Chief Investigators’ Command Course (9.11.2017) “The Importance of Rule of Law”
  • DVC and HKU Symposium on IP Dispute Resolution (22.11.2017) “Charting the New Waters of 21st Century IP Dispute Resolution”
  • 深圳大学 - 港澳论坛第18讲 – 22.12.201 “跨境知識產權争议解决”
  • Hong Kong Institute of Arbitrators Seminar on Evaluative Mediation – 30.1.2018 “Issues relating to Evaluation Mediation in Hong Kong”
  • 北京「國家所需 香港所長-共拓一帶一路策略機遇」論壇 – 3.2.2018 “一带一路战略中的香港在协助国家在创新科技发展中走出去、与促进沿线国家文化艺术和旅游产业方面的融合发展的角色”
  • Department of Justice and Deacons – 22.3.2018 “Arbitration – An Effective Tool for SMEs to Resolve IP Disputes  
  • DVC Oxford – HKU Visiting Fellowship Series - Mayerbrown JSM – 24.3.2018 “Evolving IP Issues in Brand Protection in the Digital Marketing ERA”
  • Adjunct Professor of the East China University of Political Science and Law
  • Part-time Professor of the Shanghai University of Economics and Finance