The Legal 500

Headed by Loke-Khoon Tan, Baker & McKenzie’s ’excellent’ five-partner practice is widely recognised as equally strong across trade mark, patent and copyright matters. Recent highlights include acting for LVMH Group in relation to a $3.5m enforcement action against a global syndicate with ties to Kong Hong. On the patent and copyright side, Shih Yann Loo advises global pharmaceutical companies on various infringement matters. Isabella Liu is noted for her expertise within the life sciences sphere. Other clients include Nokia and Microsoft.

At Bird & Bird, Matthew Laight’s team advises on both non-contentious and contentious matters in key sectors such as life sciences, IT and sports. Recent mandates include advising Philip Morris, Monster Energy and Agilent Technologies on portfolio, advisory and enforcement work. Contentious matters include anti-counterfeiting investigations, and patent infringement disputes. The team recently welcomed Richard Keady, who was head of IP at the now-defunct Barlow Lyde & Gilbert.

Deacons’ hugely experienced Christopher Britton heads six-partner the practice, which includes China-focused partners Charmaine Koo and Annie Tsoi. The work undertaken for its impressive client base spans generic drug clearance programmes, online copyright infringement, patent litigation and trade mark filings. Sectors covered include healthcare, media, retail and manufacturing.

Hogan Lovells’ practice is headed by the ’excellent’ Henry Wheare and Gabriela Kennedy. Recent highlights include advising Alibaba.com on domain name and trade mark hijacking matters, and acting for Burberry in a trade mark infringement, copyright infringement and passing-off case. The team also performs portfolio management for clients including H&M, Caterpillar and Motorola. Deanna Wong is ’knowledgeable, intelligent and easy to work with’.

Jones Day’s IP practice handles unique and strategic instructions, such as patent licence arbitrations, trade secret matters and portfolio acquisitions. The group is made up of four partners: Anita Leung, who is focused on transactions, enforcement and portfolio management; Haifeng Huang and Chiang Ling Li, who are key contacts for China-related matters; and Peggy Cheung, who undertakes all non-contentious and contentious work. Its client base is predominately made up of multinational companies with bases in Hong Kong or China.

Wilkinson & Grist undertakes the full range of IP transactions, including the drafting of patents, worldwide management and enforcement of patent and trade mark portfolios, and internet-related matters such as domain name registrations. The group also has a strong litigation offering. Practice head Anne Choi and Yvonne Chua are recommended. Other clients include Heinz, The Coca-Cola Company and IKEA.

Freshfields Bruckhaus Deringer’s Connie Carnabuci is widely known as a leader in the field of IP, and she continues to lead the ’excellent’ Hong Kong practice with the aid of newly promoted partner Mark Parsons, and counsel Richard Bird, ’who drafts wonderfully’. Carnabuci recently led on a transaction for PepsiCo in relation to its strategic alliance in China with Tingyi-Asahi Beverages Holding Co, while Bird acted for Merck on the IP aspects of its joint venture with Simcere Pharmaceutical. Other clients include Novartis, Tesco and Rothschild.

Mayer Brown JSM’s ’exceptional’ team is praised for its strength in depth, as well as its ability to service large corporate companies. Department head Kenny Wong handles both commercial and contentious IP, and also has niche expertise in the entertainment sector. Benjamin Choi manages a number of patent and trade mark portfolios. Wong recently defended a Swiss watchmaker in a passing-off and copyright claim by Cartier in Hong Kong, and is acting for a European bank in a copyright enforcement matter concerning the institution’s logo.

Norton Rose Hong Kong’s practice has gone from strength to strength since Justin Davidson (a ’safe pair of hands’) and his team moved from DLA Piper. The practice is praised for its ’deep resources’, and services a large number of multinational companies such as Crabtree & Evelyn, Crocs and Siano Mobile Silicon. Davidson’s team recently won a mandate from Prudential to manage the company’s brand enforcement programme in 130 countries.

Reed Smith Richards Butler’s team is noted for its expertise in enforcement matters, and has a strong client base in the luxury goods and computer software sectors. Team head Steven Birt is ’quick, efficient and practices with total common sense’.

At Simmons & Simmons LLP, experienced team head John Slater undertakes a range of trade mark work, including passing-off claims, infringement matters and portfolio management. The group acts for clients across various sectors, including Cathay Pacific, Bacardi, Sanofi and Lacoste.

IP boutique Yu & Partners in association with Rouse Legal undertakes the full range of work for clients such as Intel, Diageo and Sony Ericsson. Chris Vale heads the practice, and is supported by executive Adelaide Yu. In 2012 Yu advised Reckitt Benckiser Group in relation to counterfeit Durex products, and acted for Honda and Land Rover in regard to shadow company cases. In 2012 Vale successfully registered the Whiskas cat device trade mark for Mars.

Clifford Chance offers ’superb quality’, and practice head Ling Ho gives ’clear, strong, thoughtful advice. She is very good at pursuing a smart strategy and she offers really excellent client service’. In 2012 Ho acted for Cartier in a passing-off claim against Raymond Weil, and successfully defended against a revocation claim concerning a Marlboro Light trade mark registration in Hong Kong.

Jezamine Fewins is the key contact at Clyde & Co. She undertakes trade mark oppositions, filings and infringement work, and has recently advised on a patent licensing transaction.

DLA Piper has undergone a reshuffle since the departure of Justin Davidson and his team to Norton Rose Hong Kong. The practice is now headed by Edward Chatterton, and includes new arrival Scott Thiel, who has relocated from the London office. Recent work includes trade mark prosecutions, oppositions and cancellations on behalf of Vodafone and Avon, and trade mark portfolio and opposition work for HSBC. The firm’s international presence has been ’invaluable’ to clients.

IP boutique Ella Cheong (Hong Kong & Beijing) continues to be well respected in the market. It covers the full range of patent, trade mark and copyright work. Ella Cheong, Coral Toh and Wubin Yan are the driving forces behind the practice.