The Legal 500

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.