The Legal 500

The ‘first-class’ An, Tian, Zhang & Partners is a full service boutique covering litigation, prosecution and enforcement relating to all forms of IP. In a landmark Chinese trade mark infringement case, Xiaodi (Andy) An and David Tian (who both give ‘practical assistance rather than just black letter law answers’) recently achieved Supreme Court confirmation for Sotheby’s of earlier court decisions regarding trade mark infringement and unfair competition in relation to an unregistered mark. The team is particularly well-regarded for its work in the pharmaceutical sector, and recently successfully settled a patent infringement case for biopharmaceutical company Gilead.

CCPIT Patent & Trademark Law Office has a long history in this practice area, having drafted some of the first patent laws for the region as well as being the first Chinese IP firm to handle foreign-related patent matters. Its team of patent and trade mark attorneys advise a diverse client base in the chemical, electrical, mechanical and finance sectors offering prosecution, litigation, transaction and consultation services relating to all aspects of IP. Practice head Hao Ma has technical expertise in electronic and electrical engineering, and president of the firm Li Yong is also recommended.

King & Wood advises on and implements IP management and protection strategies for multinational companies which have valuable portfolios of IP assets. Highlights in 2010 included acting in a retrial case in the Supreme People’s Court for Shanghai Zhonghan Chenguang Stationery Co Ltd, resulting in the first decision by the Court regarding the protection of a design under anti-competition laws. Li Yong leads the team, Yang Xiaoli has extensive experience in trade mark prosecution and enforcement, and Qiao Dexi is also recommended.

Liu Shen & Associates focuses largely on patent filing, prosecution and litigation. Highlights included acting for General Protecht Group in convincing the Local Federal Court of New Mexico that claimant Levition should withdraw its request to the International Trade Commission for an investigation into unfair practices in import trade and associated patent infringement proceedings in the Local Federal Court of California. Managing partner Michelle Ma leads the team which also recently gained several new high-profile clients including Volkswagon and Sanofi-aventis. Jianyang Yu is a leading figure in patents and life sciences.

Wan Hui Da Law Firm & Intellectual Property Agency strengthened its patent team in 2010, welcoming Yin Xintian from the State Intellectual Property Office of China, where he was head of legal affairs, and Qi Deshan as counsel, after his retirement as deputy head of the Patent Re-examination Board. Highlights in 2010 included acting for L’Oréal in a trade mark infringement case, which resulted in the highest award possible of RMB500,000 in damages. The team, which gives ‘sound legal and practical advice’, also successfully acted in a number of retrials in the Supreme People’s Court. The ‘excellent’ Shuhua (Mark) Zhang is experienced in patent litigation and the enforcement of IP rights in exhibitions and trade fairs. Founding partner Gang Bai is also recommended.

Chang Tsi & Partners has a comprehensive IP service and dedicated investigations team offering ‘clear and concise’ advice in contentious and non-contentious matters relating to trade marks, patents and copyright issues. Head of litigation Frank Liu acted as local counsel for JA Apparel on the enforcement of an order for destruction and collection of a $1.7m arbitration award issued in the US; one of the only cases where a Chinese court has confirmed an arbitration award issued by a US arbitration panel. Other clients include Kraft and Air China. Both Liu and Spring Chang are praised by clients for their ‘excellent trial skills’. Simon Tsi is also recommended.

China Patent Agent (H.K.) Ltd. houses a large team comprising trade mark and IP litigators, as well as patent attorneys and engineers specialising in chemistry, biotechnology and pharmaceuticals, electronics and electricity, mechanics and design. The team has intimate knowledge of IP-related laws in a wide range of countries and regions, allowing it to build strong relationships with all the major international and domestic IP associations and societies. To add to an impressive track record in litigation matters, the team notched up a number of wins in 2010 in trade mark and patent infringement disputes. Clients have included Tetra Laval, Pfizer and Beecham Pharmaceuticals.

Almost all of the patent attorneys and technical experts at China Sinda Intellectual Property Limited have a scientific or engineering degree. The large practice encompasses counseling and litigation in patents, trade marks, copyrights, integrated circuit layout designs, domain names, and unfair competition. Firm founder Lina Xie handles complex cases related to domain name, trade marks and unfair competition. Gary Zhang has strong experience in patent litigation along with a solid track record in piracy and counterfeiting cases.

At Global Law Office, China and US-qualified Huanzhong Chen has been busy advising on patent and trade mark infringements, as well as acting in litigation concerning trade secrets and unfair competition. Arbitration and litigation specialist Xiusong Xing acted as arbitrator under the SCC (Stockholm Chamber of Commerce) rules for a publicly listed SOE regarding disputes under a Technology License Agreement with a US company. Other IP clients have included IBM and Yahoo!.

The ‘excellent’ Hylands Law Firm has one of the largest full-service IP practices in China and a strong track record acting in domain name disputes, and acting for household names in counterfeiting cases, where it houses a special investigations team. Lian Yunze, has the ‘ability as co-leader of the firm to build a highly motived team of IP specialists’, and in 2010 had a number of successes advising Prada in a series of trade mark oppositions, and acting for Swissotel Management in a domain name dispute. Ma Xiaogang is a renowed IP expert in China.

Jun He Law Offices’ IP practice covers patents, trade marks, copyrights, trade secrets and unfair competition in a wide range of industries such as telecommunications, electronics, software, semiconductors, biotechnology, pharmaceuticals, electronics, and media. Ruixie Ran advises on IP-related matters in corporate and commercial transactions in China, and Zhaohui (Zoe) Wang has extensive experience dealing with IP matters in China and the US.

Highly regarded managing partner Samson Yu at Kangxin Partners, p.c. is a patent and trade mark attorney, as well as a registered US patent agent, and regularly acts for international Fortune 500 companies. The strong patent department is staffed by experts covering electronics, mechanics, and chemistry and life sciences. The team is well suited for IP litigation with a number of senior lawyers having worked in the State Intellectual Property Office (SIPO), the Provincial High Courts and Beijing’s IP Courts.

NTD Patent & Trademark Agency Ltd’s services cover the full range of contentious and non-contentious IP matters, which includes dealing with counterfeiting activities for world-famous brand owners and advising on IP-related aspects of licensing, franchising and distribution agreements. Christopher Shaowei is an experienced patent and trade mark attorney.

Yadong Wang at Run Ming Law Office is ‘highly capable of solving problems’ and has acted in many landmark cases for clients such as Yamaha, Daewoo, Chanel, Prada and Gucci. His recent work includes advising famous international pianist Li Yundi in a trade mark dispute. Wen Qin acted in a copyright dispute for the copyright holder of TV series “Hua Pi”, and Min Li has particular expertise in internet-related matters.

Xiang Kun Law Firm has specialist industry expertise in the electronics, luxury goods and services, IT, telecommunications, sports, and pharmaceutical sectors. Highly recommended managing partner James Luo has acted on a number of high-profile projects aimed at tackling counterfeiting and the team has recently been busy acting in enforcement proceedings and litigation against offending counterfeiters of top luxury brands including Louis Vuitton, Burberry and Gucci. The firm also has an association with Bird & Bird, for whom it conducts all Chinese trade mark and patent infringement cases.

National IP specialist HFG Intellectual Property Consulting Co Ltd is a full service firm fielding three offices in China and 11 partners. Founded by a team of intellectual property experts in 2000, the firm has built a leading reputation, and is continuing to expand its reach, particularly on the litigation side. It provides the full range of IP services including copyright, trade mark and patent matters, as well as assisting with anti-counterfeiting, unfair competition and domain names. Recent highlights include acting for Castrol, Hennessy and Radiodetection on trade mark infringement and unfair competition. The firm’s enviable client list also includes Amazon, AkzoNobel, BMW, Diesel and Philips. Tiger Zhao and Daisy Yao are recommended.

IP specialist Creatop & Co covers a broad range of matters including trade marks, patent and copyright litigation, trade secret protection, unfair competition and customs protection. With a client base comprising both domestic and foreign clients, the firm is regularly called upon for commercial investigations and court representation. Trade mark attorney Bin Sha is the firm’s executive partner.

Full-service firm Watson & Band is wellrecognised in the fields of mechanical engineering, electronics, physics, chemistry and biotechnology. It is regularly instructed on matters such as applications for patents, trade marks and copyrights, anti-counterfeit and related litigation. Shenmin Xu represented a Japanese company in the first litigation against a Chinese company, and was involved in the first patent infringement case between two foreign companies in China. Managing partner George Fu has extensive international experience.

Allbright Law Offices has a range of expertise and acts for both domestic and international clients including Nike, GE and Microsoft. The firm frequently prosecutes and defends on infringement cases, unfair competition actions, internet and technology-related disputes, franchise disputes, false advertising claims, trade secrets litigation and restrictive covenants and various other intellectual property claims. It also provides non-contentious advice. Senior partner David Chen heads the department.

Boss & Young Attorneys at Law has particular expertise in IP licensing. Although the bulk of its practice operates out of Beijing, the Shanghai office handles all its IP licensing issues. Recent work includes advising a digitial content security company in relation to configuration and licensing agreements, and advising a large French company on trade mark matters.

HaoLiWen PRC Attorneys advises on trade marks and patents and copyrights, and represents clients seeking administrative and judicial remedies for IP infringement. The firm has led negotiations over patent licensing regarding DVD players and served as legal counsel in various technology and music copyright licensing projects. Highlights included representing a NASDAQ-listed company on its IP protection in China, and advising a US company on its trade mark transferring strategies in a potential spin-off project. Additionally, it has acted for an international service company on the protection of cartoon images and a strategy for the registration of a trade mark series. Yan Zhang is the key partner contact.

Although headquartered in Shenzen, Shu Jin Law Firm’s Shanghai office includes Xianlan YI, who has considerable expertise in IP, particularly internet-related matters. The firm regularly assists private entrepreneurs, advising on the procurement of patents, protection, infringment and licensing. Other services include trade mark infringement investigation, unfair competition and trade secrets.

Baker & McKenzie remains a dominating force despite increased competition from local firms as the litigation trend in China grows. Clients say ‘the level of service is excellent’ and the team is ‘accessible and prompt’. The group acts for clients from various industries including pharmaceuticals and entertainment, and counts Harley-Davidson, Nokia, Hyatt, Bausch & Lomb and British American Tobacco among its impressive array of clients. It has recently been defending a large American chemical company in a patent litigation lawsuit filed by a Japanese company regarding infringement of a manufacturing process patent in China. For Bausch & Lomb, it acts as outside counsel for China in relation to trade marks. The firm is also advising many foreign multinational clients in patent issues relating to R&D activities in China, and was instructed by a global pharmaceuticals and healthcare client relating to product registration for one of its medical devices. It also acts for the client on trade mark matters. Practice head Loke-Khoon Tan is based out of the Hong Kong office, which is linked with the China office. In Beijing, Christopher Smith is a ‘”go-to” for all trade mark matters’ and ‘deploys his team and colleagues efficiently and promptly, even on short notice’. Also in Beijing is Scott Palmer, and Clement Ngai is a key figure in Shanghai.

Managing partner Matthew Laight heads the team at Bird & Bird, which is split between China and Hong Kong. The group has recently been growing, increasing the number of trade mark agent fee-earners in Beijing from one to three in the past twelve months. In Shanghai, it recruited Weishi Li from O’Melveny & Myers LLP, whose strong pharmaceutical background added weight to the firm’s already strong expertise in this sector. Additionally, Clifford Borg-Marks joined as special counsel in Beijing. Recent work examples include an instruction by a global pharmaceuticals company relating to a patent infringement case involving a Chinese pharmaceutical manufacturer. It is also advising Konami Digital Entertainment on a design patent infringement matter relating to an arcade game, and advised an importer of Goji berries when a supplier in China breached contract terms. The firm also acts for JCB and various food and beverage clients.

The China arm of global IP consultancy Rouse wins rave reviews from clients ‘convinced that you’ll never find more value for your money’. The group, which has offices in Shanghai, Beijing and Guangzhou, is lauded for its ‘very fast response times’. The team is described as ‘motivated, with great knowledge’. Linda Chang in Shanghai heads the practice, which includes Elliot Papageorgiou who provides ‘first class quality legal advice’, is ‘a creative thinker’ and is ‘down to earth, reasonable, practical and costs conscious’. Beijing-based consultant George Chan is ‘particularly reliable and efficient’ and is considered ‘one of the leaders in this area of law in China’. The firm has recently seen growth in IP litigation and patent strategy and prosecution.

Hogan Lovells International LLP’s IP practice comprises 30 fee-earners across its main Shanghai base and the correllating Beijing office; these are incorporated within the broader China/Hong Kong group. It offers the full range of contentious and non-contentious matters for its multinational client base, and is licensed to directly undertake trade mark work in China. Utilising its ‘proven experience and ability’, it is representing TRW Automotive on its IP right protection matters. Recent work for the client includes enforcing its IP rights against a Chinese infringer, and acting on a nine-month anti-counterfeiting campaign to clean up infringements in the China market. It also advises it on brand management, customs IP protection, company name hijacking, domain name disputes, trade mark portfolio management and product labelling. Also on the client roster are Exxon Mobil, Motorla, RIM and a number of other blue-chip companies. Beijing-based Deanna Wong and Shanghai-based Geoffrey Lin are recommended. Horace Lam left to go to Jones Day, and former managing partner Douglas Clark left the practice to become a barrister.

Jones Day ‘does an excellent job on patents and trade marks’ and recently recruited leading IP lawyer Horace Lam, previously of Hogan Lovells International LLP, to its Beijing office. The two key partners in Shanghai are Tony Chen and Michael Vella, however in 2011 Benjamin Bai left to join Allen & Overy LLP. The firm has a strong track record in litigation, acting with local firms both in courtroom and administrative actions. Current mandates include representing a leading US biotech company in dealing with IP issues relating to marketing products in China. This includes patent prosecution, patent invalidation, drug counterfeiting and trade mark infringement matters. It is defending a Shanghai-based biotech company in relation to antibody treatment of cancer and in a global patent prosecution, as well as advising the client in patent licensing discussions relating to a heart failure drug.

Simmons & Simmons has a combined Hong Kong and China practice, with newly promoted partner Lewis Ho the main contact in Shanghai. The group continues to flourish within the life sciences sector, acting for GlaxoSmithKline and Novartis among others, maintaining a steady flow of contentious matters. Recently, the Shanghai office has led advice to a European client on conducting patent searches, analysing competitors’ patents and preparing freedom to operate analysis in seven countries. Other work included commencing invalidation actions for a client before the Patent Review Board in China against two utility models registered by a Chinese individual, and advising a leading European pharmaceutical company on potential patent infringement action against a number of generic manufacturers in China. Non-pharmaceutical clients include Burberry and Lacoste.

Allen & Overy LLP’s IP practice is led by Benjamin Bai, who ‘has a good grasp of the law and gives pragmatic advice’. Bai joined the team in January 2011 along with counsel Helen Cheng and Beijing-based associate Jessica Zhu; all came from Jones Day. The group appears to have hit the ground running, with clients reporting a ‘much better than average service’.

Barlow Lyde & Gilbert’s practice is led by Richard Keady from the Hong Kong office. Clients include Panasonic, Chrome Hearts, Canon and Ferrari, and it has recently been handling a patent enforcement case for Dexas in China.

Deacons’ practice, led by Annie Tsoi in Hong Kong, has recently been representing a multinational group of US, French, Hong Kong and PRC companies in multiple cross-border patent litigation and administrative actions with claims exceeding RMB400m. Other work included advising a Silicon Valley-based security company on all IP issues relating to a cross-border asset transaction.

Freshfields Bruckhaus Deringer’s team is based in Hong Kong but much of its advice is focused on mainland China. Its expertise covers a range of industry sectors, including financial services; it is advising Kohlberg Kravis Roberts (KKR) on its Asia trade mark portfolio and on IP enforcement. Other mandates included advising a leading US fashion design house on managing its Asia trade mark portfolio. Connie Carnabuci heads the group.

Founded in Beijing by Matthew Murphy, MMLC Group is an IP boutique with an excellent reputation. The firm acts for an impressive line-up of blue-chip clients, and in addition it has a dedicated team for SME and start-up companies.

Orrick, Herrington & Sutcliffe LLP’s Xiang Wang leads a team in Beijing that worked in conjunction with the firm’s US office to advise Microsoft in one of the largest computer abuse cases in China. The case was brought against 278 domains registered to Chinese domain registrars. It is also representing Disney in the production of High School Musical: China, advising it on copyright, trade mark and merchandise strategy.

Pinsent Masons’ practice includes Shanghai-based Kening Li, and senior associate Jenny Luo in Beijing, former head of patents at Rouse. It is currently defending Garmin in a patent infringement suit by Innofidei relating to mobile TV products. Other clients include Australian toy company Funtastic.