China > Foreign firms > Intellectual property
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Intellectual property: Foreign firms
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Baker & McKenzie’s ‘pragmatic, proactive and responsive’ intellectual property practice has traditionally been strongest on anti-counterfeiting, but has developed into a well-rounded IP service. Highlights include securing a victory for Porsche in groundbreaking litigation in the PRC involving the protection of copyright in architectural designs. Another notable engagement was defending International Nutrition in a RMB500,000 trade mark infringement lawsuit brought by Nestlé. Beijing partner Chris Smith receives plaudits for his ‘excellent commercial approach, sound knowledge of trade-marks and Chinese law and language’.
Rated for ‘great experience and profound industry knowledge’, Bird & Bird’s China IP practice provides ‘professional advice with high efficiency’. The practice acted for Nokia in its global litigation with Qualcomm, led Motorola’s enforcement actions against infringers in China, and advised on the strategic protection, enforcement and use of Ian Fleming’s ‘James Bond’ trade marks in China. Hong Kong and China managing partner Matthew Laight is praised as ‘a fantastic IP lawyer’ while the ‘excellent’ Ai-Leen Lim manages the firm’s subsidiary trade mark agency in Beijing.
Lovells LLP’s ‘highly respected IP group’ comprises 50 lawyers in China and Hong Kong, with strength in depth across the IP spectrum. Key engagements included acting for Qualcomm in their global patent litigation against Nokia, and providing Unipath with patent assessment, trade mark portfolio, and IP protection advice. Shanghai partner Douglas Clark is rated as ‘a really good lawyer, with deep knowledge of China’, while Beijing-based Horace Lam is also considered to be ‘top notch’.
Clients say that at Rouse & Co. International, ‘the lawyers give that little bit extra’ - they have ‘superb subject-matter expertise’, and are ‘extremely responsive and commercially pragmatic’. The IP team represented a multinational confectionary manufacturer in over 10 sets of civil proceedings in China in 2008, and represented automobile clients in criminal action against counterfeit auto parts in Xiapu of Fujian, resulting in prosecution and a RMB1.15m fine. George Chan ‘has particularly good trade mark and China IP knowledge’.
Gide Loyrette Nouel A.A.R.P.I.’s IP group is ‘very good to work with. Responses are immediate, and advice is succinct and outlines best options’. Engagements included advising Parfums Christian Dior on enforcement raids on glass bottle factories selling design-infringing packaging and design and trade mark-infringing bottles. The practice also acted for Veolia in CIETAC arbitration regarding illegal registration of two domain names containing the term “veolia”. Huang Zhen is recommended for ‘expert advice, friendliness and trustworthiness’.
Jones Day is ‘particularly strong on patents’ but covers the full gamut of IP services. The practice was engaged by Nokia as the lead counsel defending the three patent infringement suits brought by Qualcomm in China. Other highlights were advising GlaxoSmithKline on IP strategies for China, and defending a Chinese company in section 337 patent proceedings before the US International Trade Commission. Benjamin Bai is commended for his ‘amazing response times’, while Anthony Chen is ‘very good, very thorough’.