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Editorial

Index of tables

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

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Who Represents Who

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CCPIT Patent and Trademark Law Office’s ‘top-notch’ practice is recommended for complex patent and trade mark matters, including registration, protection, enforcement and litigation. Illustrating its strength, Lili Wu successfully represented Baidu in patent invalidation proceedings relating to its Chinese language input method and acted for Abbott Laboratories and its Chinese subsidiary in a design patent infringement case, obtaining a preliminary injunction. In other work, Hao Ma assisted YKK with trade mark litigation before the People’s Supreme Court; and Gang Hu and Ling Zhao handled a trade mark infringement case for a leading global petroleum company.

The ‘absolutely first-class’ team at Chang Tsi & Partners is praised for its ‘thorough approach and practical advice, and deep understanding of Chinese intellectual property law and practice as well as client business needs’. Its client roster features a number of multinational household names, such as Intercontinental Hotel Group, Tiffany & Co, Air China, Amazon and Honeywell, as well as domestic companies. The practice covers trade mark and patent prosecution and enforcement matters, and further expanded its footprint through the establishment of Shenzhen and Hong Kong offices in 2017. The team represented a Chinese internet company in a number of high-profile patent infringement disputes, and acted for a US manufacturing client in an unfair competition and trade mark infringement case against a Chinese company. Spring Chang is highly recommended for advising multinationals in trade mark protection cases, and jointly leads the team with ‘fantastic’ founding partner Simon Tsi.

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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China Patent Agent (H.K.) Ltd. handles contentious and non-contentious matters for a mix of multinational and domestic clients. Recent highlights include successfully representing Shueisha in a trade mark invalidation case and acting for Geobrugg in patent infringement proceedings against a Chinese company. Hong Kong-based Tina Tai and Beijing-based Rachel Zhang are the key names to note for patent and trade mark work respectively. Other key contacts include Xiangling Zeng, Bruce Tang, Shanshan Du, Jingchao Wang and Yanfeng Xiong.

Fangda Partners is best known for handling high-profile IP litigation in multiple jurisdictions. Among its recent caseload, Gordon Gao and Fang Qi represented basketball player Michael Jordan in a series of cases against Qiaodan Sports Company for the latter’s use of Jordan’s name. Gao and Alexandra Yang acted for New Balance in trade mark retrial proceedings before the Supreme People’s Court and other trade mark infringement and unfair competition actions before Jiangsu High People’s Court. Other highlights include acting for Watson Pharmaceuticals in a patent infringement case brought by Eli Lilly and Company before the Jiangsu High People’s Court and Supreme People’s Court, defending Meizu Technology in the fair, reasonable, and non-discriminatory terms (FRAND) license and patent infringement case filed by Qualcomm, and handling a number of trade secret and copyright disputes. Dixon Zhang focuses on IP advisory work and litigation, as well as anti-monopoly disputes involving IP and technology licensing issues. Richard Lin and James Hu are also recommended.

King & Wood Mallesons’ broad IP practice spans prosecution, licensing and enforcement matters; the firm acts for clients in the pharmaceutical, semiconductor, chemical and automobile sectors, among others. In 2016, patent and trade mark attorney Xianjie Ding successfully represented Jaguar Land Rover in a high-profile infringement case against Guangzhou Fenli Fooods and Wan Mingzheng, resulting in Jaguar Land Rover’s three marks being recognised as well-known trade marks by Guangzhou Intermediate People’s Court. Jing Xu and Mingfei Sun represented Christian Louboutin in patent infringement cases against three domestic beauty product manufacturers relating to the design patents of lipstick products. Other main contacts include Beijing-based Nongfan Zhu, who is recommended for patent infringement and trade secret disputes, patent specialists Yong Li and Wenping Chen, and Shanghai-Based Miao Qu, who focuses on contentious matters.

Wanhuida Peksung was formed as a result of the merger between Wan Hui Da Law Firm & IP Agency and Peksung Intellectual Property in November 2016. The team handles a diverse range of IP matters and has particular expertise in anti-counterfeiting issues. Recent highlights saw Gang Bai representing a leading fast moving consumer goods manufacturer in a large-scale anti-counterfeiting campaign; Hui Huang assisting General Mills Food Asia with administrative litigation against Trademark Review and Adjudication Board (TRAB)’s decision regarding a trade mark opposition case; and Jiancheng Jiang successfully representing Celltrion in obtaining invalidation approval from the Patent Reexamination Board (PRB) regarding a Chinese patent owned by Genetech. Other clients include 3M, CITIC Group, Honeywell International, Microsoft and Procter & Gamble.

Zhong Lun Law Firm’s ‘excellent and responsive’ IP team is singled out for its ‘well-tailored and commercially astute advice’. It comprises lawyers and patent and trade mark attorneys, and handles matters across a range of industries, with a strong focus on the TMT sector. In 2016, Jihong Chen represented Bluestar Group in a trade secret infringement case against Nantong Wangmao before the Supreme People’s Court; acted for Ty in a multi-jurisdictional copyright infringement case; and assisted Yulong Computer Communication Technology (Shenzhen) with patent infringement litigation and invalidation proceedings filed by TD-SCDMA. Ping Gu defended Ninebot in an investigation filed by Segway claiming the infringements of patent, design patent and copyright, and is acting for Beijing Sogou Technology Development in a series of patent invalidation and administrative disputes with Baidu. Dongxiao Ma, Helen Cheng and Zhen Qian are also recommended, as is Jimmy Huang, who provides ‘excellent legal advice and business-savvy IP strategy’.

Boutique firm An, Tian, Zhang & Partners primarily focuses on trade mark work, and the ten-partner team acts for well-known multinational clients in a range of matters including filing and prosecution, portfolio management and litigation. It recently represented Mazda Motors in multimillion-RMB trade mark litigation against its former licensee Guangzhou Mazda Trading. Other clients include Daimler, Boy Scots of America, ASICS and State Development & Investment Corporation. David Tian, Virginia Zhao and Yang Guo are names to note.

AnJie Law Firm acts for a mix of multinational corporations and Chinese internet giants – including Alibaba Group, Tencent and Youku – in high-profile patent litigation; it also has a growing presence in the cybersecurity and privacy space. The team is representing Perfect World Investment & Holding Group in a series of trade mark, copyright infringement and unfair competition cases against a number of gaming companies, and is advising National Basketball Association (NBA) on the protection of its trade mark and collective image rights. Other highlights saw practice head Jing He advising Universal Parks & Resorts on the licensing aspects of establishing of Universal Studios Beijing; James Ma handling trade secret misappropriation litigation and patent infringement cases; and Li Wu and Hao Zhan assisting a SOE with a series of cross-border cases involving trade secret misappropriation, patent disputes and potential patent infringement against a US company. Kefeng Zhao and Binxin Li are also recommended.

Lifang & Partners strengthened its IP practice when it hired Chunxuan Li from Hengdu Law Firm, Haidong Yu from an in-house role, Manxia Xu from King & Wood Mallesons and Yuanyuan Zhang from PRB. Other names to note include Guanbin Xie, who combines his IP practice with expertise in antitrust issues; Roy Liu and Yajun Huang, who focus on patent and trade mark prosecution respectively; and Bin Zhang and Xi Sun, who specialise in IP litigation. Recent highlights include representing American Superconductor in three actions before the Beijing and Hainan Courts concerning copyright infringement and trade secret misappropriation; representing Samsung in patent disputes with Huawei Technologies; assisting Adobe Systems and Autodesk with an action for software copyright infringement against a smart mobile and social web gaming company; and acting for Heinz in a series of trade mark oppositions.

Liu, Shen & Associates’ ‘very strong’ team includes over 50 partners and primarily focuses on patent and trade mark filing and prosecution. However, the practice also has experience in IP licensing transactions. Clients include Pfizer, Siemens, Li-Ning, Lenovo, SanDisk and Boehringer Ingelheim. Recent highlights include successfully assisting Xiamen Set Electronics with patent invalidation proceedings against Anhui Changsheng Electronics. Wu Yang, Jianyang Yu and Li Song are names to note.

NTD Patent & Trademark Agency Ltd recently represented Wrigley in the retrial of a trade mark dispute, filed by Nanjing Yahui Duofen Daily Chemicals, at the Supreme People’s Court. The team also handles a large number of patent and trade mark filings and prosecutions, as well as IP licensing, copyright and software matters. Christopher Shaowei and Xiaohua Wang are recommended for patent and trade mark work, respectively.

Unitalen Attorneys at Law’s clients range from SMEs to Fortune 500 companies, which it represents before the Chinese Trademark Office and TRAB, as well as in jurisdictions outside of China. Recent highlights include successfully representing Shanghai Oriental Glasses in administrative litigation and the following appeal before Beijing Higher People’s Court against Guangzhou Oriental, and handling the administrative litigation concerning WeChat’s trade mark opposition. Deshan Li, Yujing Hou, Chunde Run and Yazhou Zhang are recommended.

Watson & Band handles a range of IP licensing transactions, filings and prosecutions, and is particularly recommended for handling high-profile patent and trade mark litigation. George Fu acted for a fashion retailer in a trade mark infringement case regarding the bad faith registration of a trade mark. Jean Yang has a solid record of representing domestic and multinational companies in trade mark infringement cases, copyright litigation and trade secret disputes.

Allbright Law Offices is particularly experienced in contentious IP and enforcement matters, including administrative, civil and criminal actions; it also handles trade mark, patent and copyright registrations and licensing agreements. Among its recent workload, Minxuan Liu successfully represented a Fortune 500 multinational company in a series of administrative proceedings challenging PRB’s patent invalidation decision, and acted for China UnionPay in a high-profile trade mark infringement case. Xiang Gao advised Meizu Technology in a number of patent infringement matters initiated by Qualcomm, involving 3GPP-related standard-essential patents (SEPs) and patents in the field of wireless communication.

Co-effort Law Firm LLP is recommended for contentious matters with notable expertise in the fields of copyright infringement, domain name disputes and trade secret issues. Recent highlights include cases involving a combination of antitrust and IP issues, and handling a multimillion-RMB copyright dispute in the gaming space. IP litigator Minjian You heads the team, which also includes Gang Fu, Xiaoqing Zhu and Lingna Zhang.

Hylands Law Firm handles non-contentious and contentious matters for a range of media and entertainment sector clients including CCTV animation and Blizzard Entertainment. The team has recently handled a number of copyright infringement disputes in the film and television industry. Xiaogang Ma and Qun Xiao are recommended.

The team at JunHe LLP is adept in prosecution, enforcement and anti-unfair competition matters, among others. It recently defended Sogou in a patent case filed by Baidu and assisted Phillips 66 with an appeal before Beijing IP Court concerning a TRAB decision. The patent team is jointly led by James Zhu, who splits his time between San Francisco and Shanghai, and Zoe Wang. Qiang Ma and Jessica Xu head up the trade mark group.

Boutique firm Kangxin Partners, p.c. has dedicated domestic patent, foreign patent and trade mark practice groups, which advise on prosecution, enforcement and transactional matters. Recent highlights saw the team acting for a range of luxury brand owners in patent invalidation matters and trade mark disputes. Shirley Dong, Samson Yu, Jianwei Han and David Zhang are names to note on the patent side, and trade mark specialist Gloria Wu is also recommended.

Lawjay Partners’ team is focused on trade mark, copyright and unfair competition litigation before Chinese courts. Key names to note include managing partner James Luo, who counts Louis Vuitton, Microsoft and Nokia as clients, and trade mark specialist Thomas Huang, whose practice also extends to administrative raid actions.

Zhongzi Law Office handles the full range of IP matters with notable strength in the patent arena, where key names include Bonan Lin, Chengen Duan and Xiaoguang Yang. Xuemin Chen focuses on trade mark, domain name protection and copyright matters.

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