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The ‘very strong and experienced’ six-partner team at Baker McKenzie is active across the spectrum of non-contentious and contentious IP work including on the commercialisation of IPR, trade mark portfolio management and copyright-related issues. As well as involvement in purely local matters, the Hong Kong office acts as a hub for the coordination of Asia Pacific matters and regularly works closely with practitioners from Beijing and Shanghai. Shih Yann Loo frequently assists clients in IP litigation both in Hong Kong and China; he is currently defending an international cosmetics company in a trade mark infringement and passing-off claim brought by a joint venture partner. Team head Loke-Khoon Tan handles work for many global brands in the luxury goods and fashion industry and is particularly noted for his PRC-related work; he successfully represented Pernod Ricard in a major criminal counterfeiting case relating to the manufacturing and selling of fake spirits including well-known brand Cognac Martell. China IP expert Clifford Borg-Marks recently re-joined the firm as a consultant and strengthens the team, which includes ‘excellent’ trade mark lawyerMaria Smith and brand protection expert Ruby Chan.

In alignment with its firm-wide IP expertise, Bird & Bird’s Hong Kong office provides an ‘excellent service’ on litigation and commercialisation issues (including licensing, franchising and clearances), both in the context of cross-border work – where it is able to leverage the firm’s broad international network – as well as Hong Kong matters. With three partners based in Hong Kong, who work closely with practitioners in Beijing and Shanghai, the firm provides a cohesive offering to many significant global brands including Phillip Morris and Monster Energy. Led by Alison Wong, the team has a ‘market-leading reputation for patent litigation’, and regularly handles regional disputes in the hi-tech and pharmaceuticals sectors, in particular. Wong is also well versed in the commercialisation of IPR in the life sciences sector and regularly negotiates research and development (R&D) agreements and technology licensing contracts for biotechnology and pharmaceutical companies. Team head Matthew Laight has strong market visibility in Asia Pacific and, as well as advising on commercial transactions involving high-value IP assets, is also regularly instructed by clients to lead high-stakes and multi-jurisdictional trade mark and patent disputes. Other recommended practitioners include Ted Chwu, who specialises in IP litigation involving consumer electronics and software; counsel Hank Leung, who has particular expertise in the commercialisation of IP assets; anti-counterfeiting expert Andrew Robinson; and senior associate Victor Tse, who is also a patent attorney.

A ‘prominent player in the market’, Deacons’ seven-partner team benefits from deeply entrenched ties with local Hong Kong entities, as well as regional Asia Pacific and international clients, and has the critical mass to handle the full spectrum of contentious and non-contentious work for an impressive proportion of leading global brands. Patsy Lau heads the firm’s thriving trade mark prosecution practice and coordinates the trade mark portfolios of an impressive roster of large multinationals and regional clients, as well as leading on any enforcement actions that may be required to protect them from infringement. Charmaine Koo also has a leading reputation in the market.

A longstanding presence in the local market, Mayer Brown JSM’s ‘knowledgeable and responsive’ team handles a wide range of contentious and non-contentious IP work for a loyal cadre of local blue-chip corporates, as well as international clients. It is praised for ‘providing insightful advice in many jurisdictions’ by virtue of its vast network of offices. Team head Gabriela Kennedy is regularly at the forefront of the most significant matters handled by the team and is representing Alibaba in numerous trade mark and domain name disputes. Kennedy is also working alongside colleagues in Germany to devise a global anti-counterfeiting strategy for international fitness equipment manufacturer Nautilus, designed to curb at source the exporting of counterfeit fitness equipment from China to foreign countries. As part of her broad IP practice, which includes contentious and non-contentious work, Rosita Li advises on the commercialisation of IPR including a significant volume of IP licensing matters for clients. The team is rounded out at a partner level by Benjamin Choi, who is ‘very strong on trade mark prosecution matters’ for local and international clients. The arrival in March 2017 of senior associate Vivian Or from Wilkinson & Grist further enhances the team’s capability on the trade mark prosecution and enforcement front. Other clients include Swire Group, Cummins and Adidas.

Hogan Lovells provides a ‘comprehensive and responsive service’ on matters including trade mark oppositions and infringements, copyright issues and personal data matters for local and international clients, such as Caterpillar, H&M, Burberry and Hong Kong Trade Development Council. Eugene Low provides ‘practical and precise advice’ and is particularly noted for his copyright expertise; he continues to represent Nagravision as plaintiff in litigation surrounding copyright infringement and circumvention of security software, and has obtained a Mareva injunction for Nagravision. The ‘exceptional’ Andrew Cobden has niche expertise in acting for pharmaceutical companies in patent matters; he is representing Otsuka Pharmaceutical in enforcing two of its “second medical use” invention patent protection on an antipsychotic drug. ‘Vastly experienced’ counsel Henry Wheare is ‘very well respected’, particularly for matters at the intersection of IP and competition law. Kenny Wong (also counsel) handles conventional IP/IT work, and also maintains a niche entertainment practice acting for A-list artistes, film directors, film production companies, and record companies.

Particularly prolific on behalf of technology and life sciences companies, Jones Day’s two-partner full-service IP practice regularly works in unison with practitioners out of Shanghai and Beijing and provides a ‘strong service’ to clients across the gamut of IP matters, including patent and trade mark litigation. Splitting his time between the firm’s Hong Kong and Beijing offices, Haifeng Huang is regularly involved in complex multi-jurisdictional patent litigation and is defending Intematix against a patent lawsuit filed by Mitsubishi Chemical Corporation before Shenzhen Intermediate Court. As well as handling discrete IP mandates including those relating to copyright, trade mark and trade secrets, Chiang Ling Li is also regularly engaged in IP-related issues associated with corporate/M&A mandates handled by the firm; he recently provided the IP and regulatory advice to XIO Group in relation to its $510m acquisition of Lumenis.

Working closely with colleagues in China, the five-strong team at Rouse Legal Hong Kong provides a ‘superb soft IP offering’ on Greater China matters and is noted for its ability to effectively coordinate regional trade mark filing programmes for international clients. Theresa Mak is advising Wrigley Company on its trade mark portfolio and IP protection strategy in Hong Kong and Macau. The team is also praised for its ‘excellent customs work’, which frequently sees it working with customs officials on border seizures and conducting inland raids. Adelaide Yu and Chris Vale are also recommended. Other clients include MARS Inc, Jaguar Land Rover and Samsonite.

Long-established independent Hong Kong firm Wilkinson & Grist is ‘very strong at trade mark filing work’ and manages the IP portfolios of many multinational corporations across Hong Kong, China and other Asian jurisdictions. Andrea Fong is ‘very well known’ in the market and, along with Florence Lam, is acting for Coca-Cola on trade mark and design prosecution work, as well as advising on the IP issues surrounding new marketing campaigns and on enforcement activities. Other clients include Adidas, Philips, Johnson & Johnson and Universal Music.

Although it has a smaller team than many ranked firms and derives less work on a standalone basis, Clifford Chance’s IP offering provides an invaluable resource on M&A deals handled in the region involving IP-rich targets and sellers. In addition to handling the IP elements of corporate work handled by the firm, team head Ling Ho also has a good reputation for trade mark infringement and unfair competition, as well as portfolio management work. Senior associate Alice Tang handles trade mark and copyright-related work in the consumer goods sector.

DLA Piper’s cross-office IP practice in Hong Kong and the PRC sees it handling some high-profile IP work for numerous multinational corporates including Five Guys, Fitbit, and AOL. Edward Chatterton heads the Hong Kong team and is noted for his brand protection and enforcement advice across the spectrum of IPR. Chatterton continues to provide brand protection advice to Pokerstars, and is also acting for McDonald’s across a range of IP matters in Hong Kong and China, including advising the client on the restructuring of its IP licensing and franchising structure in China in preparation for the divestment of its Hong Kong, China and Macau businesses to Citic and Carlyle. Senior associate Elizabeth Wong regularly advises clients on the commercialisation of their IPR and has experience acting for multinational corporates on licensing and franchising agreements.

Able to tap into the firm’s vast global network, which includes coverage across Asia Pacific, Europe and North America, Norton Rose Fulbright’s Hong Kong office handles inbound and outbound prosecution, enforcement, transactional and strategic IP work for an impressive range of global companies. Team head Justin Davidson is ‘strong across the spectrum of IPR’, although he continues to be most active in the trade mark arena, where he handles a mix of prosecution and enforcement work for clients including GSK (which he advises on the management of its trade mark portfolio and renewals in Hong Kong). On the patent front, Davidson acts for many life sciences clients including Biotempus, Endogene, and ST Reproductive Technologies. Senior associate Maggie Chong is also recommended.

At Freshfields Bruckhaus Deringer, team head Richard Bird advises clients across a range of IP matters including on the commercial aspects of IP matters, such as those relating to R&D collaborations, licensing and distribution agreements, and on contentious matters relating to patents and trade marks. Bird also regularly provides the IP input on major corporate transactions handled by the firm including its work for Creat Group Corporation on its acquisition of the Bio Products Laboratory and for Hutchison Telecommunications on the $1.86bn sale of Hutchison Global Communications.

Independent Hong Kong law firm Oldham, Li & Nie provides an ‘excellent level of service’ to local SMEs and corporates across a range of IP issues including trade marks, patents and copyrights. Team head Vera Sung provides ‘proactive and concise advice’ and successfully represented a telecoms company in its efforts to prevent an Indian company from trade mark and passing off infringement. The team was also bolstered by the return in October 2016 of litigator Stephen Chan following a short stint at Gall. Other clients include Chelsea Football Club, Sony Music Entertainment and Green Spot International.

At Reed Smith Richards Butler, Steven Birt has substantial IP expertise and is representing Duracell US Operations in a trade mark, copyright infringement and passing off action before the Hong Kong High Court against a domestic company accused of re-packaging Duracell batteries in counterfeit packaging. Birt also continues to act for the Sixty Group in the registration and enforcement of its IPR in Hong Kong and China.

Led by Jezamine Fewins and Jonathan Chu, Stephenson Harwood’s ‘responsive and cost-effective’ team is particularly accomplished at handling IP litigation. Having successfully secured a judgment in Hong Kong for a Singapore-listed company against a Hong Kong company for trade mark infringement and passing off, Fewins also ensured that connected counterfeiting operations were successfully closed down in China. The arrival in August 2016 of IP litigator Chu from a local Hong Kong firm strengthens the firm’s IP capability for clients across a range of sectors including entertainment, manufacturing, energy, media, retail and life sciences.

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