The Legal 500

There is ‘no doubt’ that Baker & McKenzie has a ‘very strong IP presence in Hong Kong’. Led by Loke-Khoon Tan, the team not only assists clients with all aspects of portfolio management and commercial IP, but also offers expertise in anti-piracy, enforcement and IP litigation. High-profile clients include Nokia and Microsoft, and the firm is advising Polo Ralph Lauren on both local and international aspects of trade mark portfolio management, registration and anti-counterfeiting. Life sciences and pharmaceuticals are growth areas for the IP team, for which Isabella Liu is the key driver. Liu was promoted to partner in 2011.

‘The cream of the crop in the IP field’, Bird & Bird is ‘highly responsive, commercially attuned and demonstrates market leadership in its quality of advice’. Hong Kong and China managing partner Matthew Laight leads the IP team, which handles contentious, non-contentious and regulatory mandates. Recently it advised TVB and TVB Pay Vision on three copyright tribunal cases relating to royalty disputes with the 4 major music publishers (Sony BMG, Warner Bros, Universal Music and EMI) and the Hong Kong Recording Industry Alliance. Clients single out Ai-Leen Lim, who delivers a ‘high level of professionalism’ and has a ‘deep understanding of her clients’ needs’.

Although widely recognised for its trade mark filing expertise, Deacons handles the whole spectrum of IP law across Hong Kong and China and is praised for its competitive fees. Led by Christopher Britton, the seven-partner group has seen an increase in privacy instructions and recently advised an internet search provider on such issues, as well as other licensing, copyright and general IP matters. Charmaine Koo is recommended for entertainment cases and has extensive experience advising on IP aspects related to the film, music and publishing industries. Lindsay Esler retired in December 2010.

‘Excellent in all areas of IP’, Hogan Lovells is praised for its response times, ‘very good advice’ and ‘sound knowledge of the law’. The firm is highly regarded for portfolio management and patent work, but is also strong in brand enforcement, where it continues to advise longstanding clients Nintendo, adidas and Jack Daniel’s. In 2011, the firm further expanded its client base, through gaining management of Caterpillar’s Asia-wide IP portfolio. Noteworthy practitioners include Henry Wheare (‘he has an excellent legal brain and is commercial and practical in his advice’) and Gabriela Kennedy (‘friendly and client-orientated’).

Jones Day offers ‘prompt responses and attentive client care’, and handles commercial IP, litigation, and portfolio management. Recent work includes successfully representing a heavy equipment manufacturer in a technology licence arbitration; and winning a trade mark and unfair competition court case in China for a US-based multinational pharmaceutical company. Anita Leung is praised as ‘very helpful and efficient’ and, while based in Hong Kong, Chiang Ling Li solely handles China IP instructions. Peggy Cheung is also recommended.

Wilkinson & Grist maintains its reputation as a top Hong Kong filing firm for trade mark, design and patent applications and portfolio management. The team is also strong in IP litigation, and recently issued court actions for Koninklijke Philips Electronics NV and Volkswagen AG relating to trade mark infringement and passing-off by suspected shadow companies. Other clients of the firm include Coca-Cola, Heinz and IKEA. Practice head Anne Choi and Yvonne Chua are highly regarded.

The ‘excellent’ Freshfields Bruckhaus Deringer handles patent, trade mark and copyright matters as well as IP aspects of commercial dealings. Recent work includes trade mark and branding advice relating to the launch of the Tesco/Legou co-branded credit card with Bank of Communications; and managing KKR’s Asia trade mark portfolio. Connie Carnabuci is an ‘excellent IP transactional lawyer’, and Peter Yuen is recommended for contentious work. New clients include Dyson, Japan Tobacco International and Blackstone.

Mayer Brown JSM has a broad practice in Hong Kong, highly regarded for filing and IP litigation. Kenny Wong handles both commercial and contentious IP, but also has niche expertise in the entertainment sector; while Benjamin Choi, who was recently promoted to partner, handles trade mark and enforcement work for clients such as Sevens Town (the owner of the Rubik’s Cube), Shell, and Abercrombie & Fitch.

Praised for its ‘excellent service and in-depth advice’, Reed Smith Richards Butler has a strong contentious IP practice and is recognised for enforcement work in the luxury goods and computer software sectors. The team, led by Steven Birt, recently expanded its workload through new client instructions from French and Italian clothing brands. Birt delivers ‘practical and commercial advice on every aspect of IP law’.

Simmons & Simmons is well known for trade mark filing and IP litigation, and although the firm continues to develop its focus on the life science sector, it also acts for clients such as Burberry, Cathay Pacific Airways and Lacoste. John Slater is highly regarded and is representing Noble Group in a worldwide registration trade mark program, covering 30 jurisdictions.

Boutique firm Yu & Partners in association with Rouse Legal provides an all-round IP service to its clients, with particular expertise in managing enforcement programmes, commercial IP and filings across the region. The group is working closely with Hong Kong Customs for Sony Ericcson on all its anti-counterfeiting work in Hong Kong. Chris Vale is recommended.

Barlow Lyde & Gilbert ‘offers a more personalised level of service, while always delivering timely responses and high-quality advice’. Led by the ‘approachable and helpful’ Richard Keady, the team is acting for Philips Electronics in four different patent infringement cases involving public listed companies in Hong Kong.

Ling Ho is the key contact at Clifford Chance, which is recommended for IP portfolio management, enforcement and litigation cases. An impressive client roster includes Nokia, Goldman Sachs, Aston Martin and Pfizer.

Counsel Jezamine Fewins is recommended for IP at Clyde & Co, advising a variety of international clients from industries including luxury goods, tobacco, cosmetics, textiles and toys. Fewins handles a range of IP mandates, but also helps develop protectable and strong brands in the areas of licensing and franchising.

There have been significant changes to the DLA Piper IP group since the former team left for Norton Rose Hong Kong in 2010; the ‘knowledgeable and reliable’ Edward Chatterton leads a new team of seven associates across Greater China. Key clients include Gap and HSBC, where the firm is advising on significant trade mark matters.

IP specialists Ella Cheong (Hong Kong & Beijing) houses trade mark lawyers, patent and design professionals and technical experts who act for international, regional and local corporations, as well as government agencies, on all aspects of IP. Ella Cheong is the key contact.

Norton Rose Hong Kong recently welcomed the entire IP group from DLA Piper. Justin Davidson is one of the key new appointments, specialising in contentious and non-contentious IP. Clients include Crocs, Crabtree & Evelyn and Constellation Wines.

Rebecca Lo & Co focuses on IP and technology-related matters. Team head Rebecca Lo is recommended.

Sit, Fung, Kwong & Shum’s two-partner department acts for domestic and international companies on a range of IP matters. CK Kwong and Jeffrey Hung are recommended.

Barry Yen heads up the IP department at So Keung Yip & Sin, which assists local and international clients from industries such as telecoms, technology, fashion, personal care and retail.

Chloe Lee leads the IP team at Stephenson Harwood, which recently expanded, through the arrival of two specialist associates. The growth of the group in recent years means it is now is able to handle more complex matters, such as advising a leading Chinese manufacturer in patent and copyright litigation spanning Asia, Europe and South Africa.