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Editorial

Index of tables

  1. Intellectual property: foreign firms
  2. Other recommended firms
  3. Leading individuals
  4. Next generation lawyers

Leading individuals

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Next generation lawyers

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Who Represents Who

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Baker McKenzie FenXun Joint Operation Office is noted for both contentious and non-contentious IP matters, where it provides ‘clear and to-the-point advice’. Many of the partners in the Greater China team are located in the Hong Kong office, which expanded through the hire of legal manager Clifford Borg-Marks in 2016. Andrew Sim is a key name in Beijing, who heads the regional enforcement team; he and Loke-Khoon Tan secured a major achievement for Starbucks before The Supreme People’s Court in obtaining three trade mark recognitions for “Starbucks” and “Starbucks in Chinese” marks in Classes 3 and 19. In Shanghai, Clement Ngai has a strong practice in the technology and pharmaceuticals sectors. In the Hong Kong office, Shih Yann Loo and Isabella Liu are also singled out for praise.

The ‘highly reliable and very professional’ IP team at Bird & Bird has been operating in Greater China for over 20 years and currently comprises over 40 professionals, including five partners, spread across the Hong Kong, Beijing and Shanghai offices. In the life sciences and healthcare sectors, where it has a strong international reputation, the team has experience across the full business cycle, including portfolio management, IP licensing and transactions and privacy issues. Other clients turning to the team in 2016 and 2017 included companies operating in the transport, TMT and food and beverage markets, several of which were recent client wins. Recommended partners include ‘great litigator’ Ted Chwu, ‘great strategist’ Matthew Laight and ‘excellent lawyer’ Christine Yiu, who is noted for her ‘strong knowledge of the Chinese legal system’.

FIRMS IN THE SPOTLIGHT

Chang Tsi & Partners

Client-Centric: Unlike other law firms whose business is divided by functional units, our client managers act accountable for all enquiries regarding intellectual property. On the other hand, we aim to train our client managers to run their units like mini law firms that require both professional and managerial skills. Such structure also created an environment to build trust which is crucial for legal professionals.

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The ‘outstanding’ IP department at Hogan Lovells International LLP is ‘very attuned to the needs of in-house counsel’. The Greater China team comprises approximately 40 fee-earners, including three partners and a ‘very strong support team of associates’. In IP litigation, the team ‘delivers a clear analysis of the situation, both in terms of the legal aspects and the strengths and weaknesses of the case’. The firm’s dispute resolution capabilities were enhanced in 2016 through the approval of an association in the Shanghai Free Trade Zone, branded Hogan Lovells Fidelity. Eugene Low, ‘excellent attorney’ Katie Feng and the ‘incredibly bright, analytical, strategicDeanna Wong comprise the partner-level team, following the departures of William Fisher (to DLA Piper) and Rae Yan (who quit private practice). Counsel Helen Xia is also recommended.

The ‘wonderful’ IP practice at DLA Piper is ‘very cost effective among international firms’. It has a broad office network as well as relationships with leading law firms in emerging markets, and the workload includes actions against infringers, transactional IP matters, anti-counterfeiting programmes, and IP licensing and franchising issues. The group made a significant hire in April 2017, bringing in William Fisher, who was previously at Hogan Lovells International LLP. Strong praise is also levelled at Horace Lam, who is ‘client-focused, thorough and strategic’, and ‘strong communicatorYan Zhao, who is dual-qualified in New York and China. Edward Chatterton is a key contact in Hong Kong.

Jones Day’s ‘very responsive and knowledgeable’ department stands out for its impressive track record in complex IP litigation, representing both multinational clients in inbound disputes and Chinese clients in outbound disputes. Several new hires have joined the Hong Kong office: in 2016, former Supreme People’s Court judge Yunchuan Zhou and Albert Wang, formerly at Fangda Partners, were added to the team, and in 2017, the group was further bolstered by the arrival of Lily Zhang from Bird & Bird. Among the department’s recent highlights was its successful representation – under the leadership of Haifeng Huang and Michael Vella – of Qualcomm in its assertion of 17 patent cases against Meizu Technology; the cases settled in December 2016. Tony Chen is also recommended.

Rouse’s IP group is ‘outstanding’ and has ‘excellent understanding of the Chinese business and legal context’. It excels in patent infringement and enforcement, where household name and multinational brands turn to the experienced team for investigations and litigation. Its team of over 260 professionals is spread across the firm’s Beijing, Shanghai, Guangzhou and Hong Kong offices. Linda Chang manages the department’s operations in China from the Shanghai office; key contacts include August Zhang, who has longstanding experience in trade mark, copyright, trade secret and unfair competition matters, and Carol Wang, whose practice takes in copyright, brand and design protection and patent prosecution and litigation. Also recommended are Tim Smith and Australia-qualified consultant Charlotte Trinh.

The team at AWA Asia is ‘sensible and timely in its advice’. Its Hong Kong and Beijing offices opened in February 2015, when it was joined by practice head Ai-leen Lim, previously at Bird & Bird. The firm represents clients based in China and elsewhere in Asia, as well as North American, European and Latin American companies. It recently represented a major brand with global operations on PRC trade mark oppositions and invalidation. Counsel Rhonda Tin is also recommended.

CMS stands out for its strong life sciences practice, where leading multinationals turn to the team for a variety of matters, including contentious and non-contentious IP. Other clients span the TMT, retail and food and beverage sectors. Practice head Nick Beckett and Ulrike Glueck are names to note.

Deacons’ team receives plaudits for its ‘strategic, practical and clear’ advice, and is a ‘pleasure to work with’. The Hong Kong office is home to the majority of the department’s key partners, including co-heads Annie Tsoi and Charmaine Koo, while its trade mark agency in Beijing is another draw. Rodney Goh is also recommended. Dora Si made partner in January 2017.

Freshfields Bruckhaus Deringer has a strong IP practice in Greater China and further afield. The Hong Kong-based Richard Bird often advises major multinational and Chinese clients on the IP aspects of multi-jurisdictional transactions.

Boutique firm MMLC Group continued to act for its longstanding clients, which include leading players in the fashion, technology and food and beverage industries, and also received instructions from new clients. The team recently advised one of its repeat clients on a significant criminal IP counterfeiting matter in Eastern China. Matthew Murphy heads the practice, which is based in Beijing.

Mayer Brown JSM is particularly strong in complex IP disputes, and has a niche in defending Chinese clients in International Trade Commission (ITC) litigation in the US. It further expanded its Hong Kong-based team at associate level through the hires of Vivian Or from Wilkinson & Grist and Amita Kaur Haylock from Bird & Bird; in another significant development, it hired Hester Qiu as head of its Beijing IP agency. The highly experienced Gabriela Kennedy heads the practice from Hong Kong, where Rosita Li is also based.

Orrick, Herrington & Sutcliffe LLP’s three-partner team is spread across the Beijing and Shanghai offices, and excels in representing Chinese clients in litigation in the US. In particular, Yufeng Ma is one of the few lawyers in the market with substantial experience in IP litigation before the ITC. The firm’s strong multinational client base also means it has vast experience representing the interests of foreign companies in IP matters in China. Xiang Wang heads the team and Shelley Zhang is another key contact.

Ropes & Gray LLP is known for its transactional IP practice, where it advises leading technology and life sciences companies on cross-border M&A, joint ventures and commercial agreements. Practice head Geoffrey Lin draws on over 12 years of experience on the ground in China; he recently advised Chinese client Netease on its license from Swedesh video game developer Mojang to develop and distribute the Minecraft game in China.

Under the leadership of Beijing-based partner Scott Palmer, the team at Sheppard, Mullin, Richter & Hampton LLP acts for a range of multinational companies in trade mark disputes, patent infringement claims and non-contentious (including transactional) IP matters. The team recently advised a US-based internet company on its market entry into the PRC.

Simmons & Simmons’ client base reflects the firm’s sector focuses on retail, TMT, financial services and pharmaceuticals, where it represents many well-known brands. For key client Johnson & Johnson, a team – led by Beijing’s George Chan – has been providing advice on trade mark filings, oppositions and invalidations. Hong Kong-based John Slater jointly heads the practice alongside Chan. In Beijing, senior IP trade mark executive Sophie Zhao and of counsel Xun Yang are also recommended.

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