Next Generation Partners

Firms To Watch: Intellectual property

Loeb & Loeb LLP‘s IP practice head Lewis Ho routinely advises pharmaceutical and biotechnology companies on their IP assets, with further partner-level support provided by Benjamin Qiu, whose broad practice includes IP portfolio building, licensing and protection work.
Independent Hong Kong law firm Tiang & Partners recruited China IP specialist Chiang Ling Li as partner from Jones Day in August 2021 to develop the firm’s IP practice.

Intellectual property in Hong Kong

Baker McKenzie

Baker McKenzie‘s IP group has longstanding experience in advising several of the world’s best-known brands on the management, protection and enforcement of IP assets. The practice houses specialists in portfolio management, technology transfer and licensing transactions. It also conducts IP audits, provides patent validity and infringement opinions, and assists with litigation and transactional IP work. Asia-Pacific IP and technology group head, Isabella Liu, who in addition to her global life sciences clientele, advises businesses from other sectors on IP asset protection. Also key to the group, Loke-Khoon Tan assists brands with high-stakes IP litigation and advisory matters; Maria Smith heads the Hong Kong and regional brand protection and enforcement team; Andrew Sim heads the IP enforcement and litigation practice in Hong Kong; and Ruby Chan ‘sorts out exactly what clients need‘. Special counsels Grace Wong, Kenny Cheung, David Wu, Bertha Ho and James Lau all have active IP practices.

Practice head(s):

Isabella Liu

Other key lawyers:

Loke-Khoon Tan; Maria Smith; Andrew Sim; Ruby Chan; Grace Wong; Kenny Cheung; David Wu; Tiffany Conley; Bertha Ho; James Lau

Testimonials

‘Baker McKenzie is extremely supportive and helpful in the trade mark work for new brands – clients are in good hands.’

‘Baker McKenzie’s global capabilities facilitate the resolution of any trade mark issue.’

This team operates at a very high level – no matter the issue or the urgency, it is always able to perform.

Key clients

ChildLife

Louis Vuitton Malletier

Rockit Global

Work highlights

  • Acted for ChildLife in successfully obtaining a landmark interlocutory injunction from the Hong Kong High Court against its former distributor, marking the first-ever preliminary injunction issued in Hong Kong against passing-off in China.
  • Assisted Rockit Global with filing an administrative complaint against unauthorised label changes on imported Rockit apples.
  • Represented Louis Vuitton in successful administrative litigation proceedings against a Chinese leather company, which applied to register a mark that is similar to the LV logo.

Bird & Bird

Bird & Bird‘s China and Hong Kong IP group acts for some of the world’s leading brand names, while also assisting small and medium businesses protect their IP assets. The team’s specialisms cover trade marks, patents, trade secrets, copyright and designs, and it has a strong reputation for both strategic commercial IP advice and IP litigation. The firm is also well known for its industry expertise, particularly in technology and innovation-driven sectors such as life sciences and healthcare, retail and consumer, and media, entertainment and sports (including e-gaming). Matthew Laight heads the Asia-Pacific IP group from Hong Kong, where Hank Leung assists with brand and product design protection, enforcement and monetisation matters. Also in Hong Kong, APAC life sciences and healthcare leader, Alison Wong, specialises in multi-jurisdictional IP litigation; and Victor Tse is a 2021-promoted IP consultant. Christine Yiu is the key IP partner in Shanghai.

Practice head(s):

Christine Yiu; Hank Leung

Other key lawyers:

Alison Wong; Victor Tse; Ted Chwu; Rieko Michishita; Dorie Wong; Matthew Laight

Testimonials

‘Proven to be an invaluable collaborator, working tirelessly to protect and restore trade mark rights.’

‘Its work ethic, concise advice, responsiveness, respect and professionalism make navigating the tricky IP landscape in China easier to navigate.’

‘Hank Leung is an incredible trade mark lawyer. He uses his knowledge of China IP law, and ability to think out of the box, to help clients get the best results.

‘‘Hank Leung is a clear and succinct communicator – this allows clients to make decisions easily and quickly.’

Key clients

Anker Innovations Technology

Anycubic

Aphria

Estee Lauder

Helen of Troy

Hong Kong Trade Development Council

International Olympic Committee

Li & Fung

Riot Games

SmartMore Corporation

Work highlights

  • Advised the IOC on its global IP portfolio.
  • Advised Anycubic on its global IP risk management and IP filings, including global trademark infringement risk analyses and patent prosecution in Europe.
  • Manages Riot Games’ extensive trade mark portfolio in Hong Kong and China.

Deacons

Long-established Hong Kong law firm Deacons works for several of the world’s best-known brands on both their trade mark portfolios and complex prosecutions. It also houses a dedicated patent team, comprising patent attorneys who are qualified in Australia, China, Europe and UK. Another strength is IP litigation, while sector strengths for the group include consumer goods, financial services, TMT, life sciences, luxury goods, hospitality, entertainment, and electrical, electronic and mechanical manufacturing. The IP department is co-led by court litigation specialist Charmaine Koo, and Annie Tsoi, who also heads the China IP practice group. Also integral to the team are trade mark portfolio protection expert Patsy Lau; Jeffrey McLean, who is experienced in the technical and patent aspects of contentious matters; and Hong Kong and New Zealand-qualified Kelley Loo. Emmy Chow is a partner as of January 2022, while Theresa Luk and Eliza Siew are the senior associates to note.

Practice head(s):

Charmaine Koo; Annie Tsoi

Other key lawyers:

Patsy Lau; Jeffrey McLean; Kelley Loo; Emmy Chow; Loretta Lau; Amy Chung; Theresa Luk; Eliza Siew

Testimonials

‘The team is very knowledgeable in its areas of expertise, and provides sound and professional advice.’

‘Very efficient and always responsive to our enquiries and requests. Excellent partners to work with!’

‘Deacons always provides the most detailed analysis and every possible solution.’

‘With its carefulness, clients are confident that cases do not accidentally miss any deadline.’

‘Patsy Lau is great for her tailor-made solutions.’

‘Great experience when working with Loretta Lau, Annie Tsoi, Patsy Lau and Emmy Chow.’

Key clients

Ping An Group

Google

Alibaba Group

Hong Kong Science and Technology Park

PCCW

Reckitt Group

Work highlights

  • Acting for the PCCW Group in patent infringement court proceedings, brought against it by a US entity, Two-Way Media, in the Hong Kong Court of First Instance.
  • Acting for Alibaba Group in IP infringement proceedings, commenced in Hong Kong by a US cosmetics supplier.

Rouse & Co. International (Overseas) Limited

Working closely with leading global brands, Rouse & Co. International (Overseas) Limited is sought out for the full range of IP services, from advisory work, portfolio management, disputes, trade mark protection and management, to commercialisation, global enforcement and anti-counterfeiting. On behalf of clients from the FMCG, luxury goods, TMT and manufacturing sectors, the Hong Kong team also has extensive experience in working with Hong Kong Customs on border seizures and inland raids. The firm fields several experienced practitioners, including ‘extraordinary lawyerRachel Tan, who heads the global trade marks group; Hong Kong trade mark leader Theresa Mak; and IP protection and enforcement specialist Adelaide Yu. Other experienced principals are Chad Dowle, an international portfolio management specialist; global head of dispute resolution Douglas Clark; trade mark and IP expert Chris Vale; and global formalities head of the Hong Kong trade mark practice, Mary Man, who ‘provides thoughtful, practical guidance‘.

Practice head(s):

Rachel Tan; Douglas Clark; Chris Vale; Adelaide Yu; Theresa Mak; Chad Dowle; Mary Man

Other key lawyers:

Carrie Yu; Mina Li

Testimonials

The Rouse team has deep knowledge of jurisdictions and its guidance is invaluable as clients move into new markets.

Communications are clear, concise and formatted in an easy-to-read way that works equally well for clients’ legal departments and marketing groups.’

‘Clients come to rely upon the firm’s great research and knowledge.

Key clients

MARS

Jaguar Land Rover

Western Digital Technologies

HP Inc

Tencent Technology (Shenzhen) Co

Vans, Inc

Babyzen

Daniel Wellington AB

Salvatore Ferragamo

Shiseido Company

Spin Master

Phase Scientific International

Yue’s Tongren Pharmaceutical Technology Group Co

Work highlights

  • Acted for Babyzen in securing a patent litigation win, in relation to the wheel braking system for strollers.
  • Acted for Yue’s Tongren Pharmaceutical Technology Group Co in an appeal against two opposition decisions of the Registrar of Hong Kong Trade Marks.
  • Assisted Tencent Technologies (Shenzhen) Co with online enforcement matters, in relation to the misuse and/or infringement of its IP rights.

Mayer Brown

Mayer Brown‘s IP team is active in several sectors, such as financial services, construction, manufacturing, retail, luxury and fashion. It also houses industry specialists in real estate, hospitality and TMT. The group handles hundreds of IP disputes each year, including company hijacking cases and complex IP litigation and arbitration, many of which involve insolvency issues and cross-border elements. It additionally advises global brands on strategies for the enforcement of their rights, including customs seizures, administrative actions and litigation through the courts. Co-leader of the firm’s global IP practice, Gabriela Kennedy, is sought out by technology start-ups, media companies and universities to advise on their IP policies, IP sharing platforms and establishment of R&D centres. Also integral to the Hong Kong office, Amita Haylock‘s track record includes high-profile copyright and patent infringement proceedings involving software and electronics. At counsel level, Michelle Yee is Asia brand management head.

Practice head(s):

Gabriela Kennedy

Other key lawyers:

Amita Haylock; Michelle Yee

Testimonials

‘Gabriela Kennedy and counsel Michelle Yee offer professional advice on IP cases, including TM applications, office actions, TM assignments and court appeals.’

‘Michelle Yee has both strong professional knowledge and a network for her dealings with IP cases in the PRC. Michelle is also highly approachable.’

Key clients

adidas

Clorox

Wynn

Cummins

P&G

Nvidia & Mellanox

South China Morning Post

Abercrombie & Fitch

Sun Hung Kai Group

Kodak

Mastercard

Visa

Uniqlo

Jack Daniel’s

Clifford Chance

Clifford Chance‘s Greater China and Asia-Pacific IP group comprises IP specialists and commercial lawyers from the firm’s corporate and litigation teams. The team is consistently instructed on a broad array of IP matters, including the IP aspects of clients’ business-critical projects, along with technology adoption, transactions, disputes, and day-to-day support. Contentious and non-contentious IP specialist Ling Ho heads the IP group in Asia from Hong Kong, which features Thomas Walsh, who acts in cases with substantial IP elements, and experienced senior associates Iris Mok and Dianna Shao. In Shanghai, Lei Shi specialises in IP work, particularly PRC-related matters.

Practice head(s):

Ling Ho

Other key lawyers:

Lei Shi; Thomas Walsh; Yi Yang; Iris Mok; Dianna Shao; Haoyang Zhang; Justin Luo

Testimonials

‘Clifford Chance’s IP team stands out from its peers because of its high-profile international experience and sharp insights into clients’ business objectives.’

‘Expertise, thorough, quality work, professional and trustworthy.’

The team has abundant resources and can quickly allocate such resources.’

‘The service quality is very good, the feedback is fast, and the work efficiency levels of partners and lawyers are high.

‘One foot in HK, one in PRC, and with knowledge of both legal systems. Able to explain clearly and in a pragmatic manner the pros and cons of a case, so as to make the right decision.’

‘Ling Ho can always be relied upon to provide excellent professional advice – upfront and no beating round the bush, with good problem-solving skills and excellent IP knowledge and expertise. Ling’s legal expertise is not confined to just IP – she can be relied upon in other areas too. Highly recommended.’

Ling Ho consistently impresses clients with her rich experience, high level of attention to detail, and delivery of professional services.’

Ling Ho has rich experience in the IP space, and can quickly understand the core business demands of clients, providing effective legal solutions – very hands-on and the responses are very timely. She is not only proficient in the legal profession, but also has very good business thinking.

DLA Piper

With ‘deep expertise in IP law globally‘, DLA Piper’s Hong Kong practice is particularly active in trade mark work, covering advisory matters, strategy, licensing, transactions (including franchising), and prosecution, litigation and enforcement issues. It also acts in relation to patents, domain names and trade secrets. Brand protection and enforcement specialist Edward Chatterton, who ‘gives clear and commercial advice‘, leads the Hong Kong IP team. At of counsel level, Elizabeth Wong heads the Hong Kong trade mark prosecution group, while IP litigator Chris Liu, whose career encompasses both US and international experience, is a February 2022 recruit from Jones Day.

Practice head(s):

Edward Chatterton

Other key lawyers:

Elizabeth Wong; Chris Liu; Joanne Zhang; Wilson Lung; Liam Blackford

Testimonials

‘DLA Piper is set up to service multinational clients, and to have one main point of contact directing global IP exercises, along with a network of DLA Piper offices.’

‘The IP team is consistent in terms of quality when performing these exercises.’

‘DLA has a significant global platform and deep expertise in IP law globally.’

‘It has a fantastic network of experts that can provide commercial, clear and succinct advice.’

‘Edward Chatterton gives clear and commercial advice on a variety of IP rights in different territories across Asia. He coordinates legal counsel in various territories, and provides transparency and consistency on costs and billing, which is incredibly valuable for clients’ business.’

‘Of counsel Elizabeth Wong provides an excellent service with practical advice and extreme responsiveness. Elizabeth is also able to advise on blockchain industry specific matters, which are more complex given these do not naturally fall within existing trade mark categories – highly professional, responsive, and extremely meticulous and conscientious with billing.’

Key clients

HSBC

Orkla

Five Guys

Enjin Pte

Manolo Blahnik International

Avon Products

PokerStars

Hillhouse Group

Gemological Institute of America

Corinthia Hotels

Snap-On

Verizon Media

Papa John’s

Gweilo

Vocation Brewery

Work highlights

  • Providing HSBC with ongoing advice in relation to trade mark and brand protection matters across Asia.
  • Advising Norwegian conglomerate Orkla on IP and brand protection issues in China.
  • Advising Five Guys on IP and brand protection matters in Hong Kong, the PRC, Taiwan and Macau.

Jones Day

Jones Day‘s China offering spans IP prosecution, litigation and transactions in Europe, US and Asia-Pacific. The firm has notable technology and life sciences sector credentials, as well as its own domestic IP agency in mainland China, which eliminates the need for local agents. Dividing his time between Hong Kong and Beijing, Haifeng Huang‘s practice covers disputes and transactions involving patents, trade marks, copyrights, trade secrets and technology licenses. In Shanghai, Tony Chen is experienced in China-related cross-border IP matters, while Guoping Da acts in IP enforcement and infringement actions. Former partner Chiang Ling Li recently joined Tiang & Partners.

Practice head(s):

Tony Chen; Haifeng Huang

Other key lawyers:

Guoping Da

Key clients

Velodyne Lidar

Tineco Intelligent Technology Co

Moody’s Corporation

Educational Testing Service

Hangzhou Hikvision Digital Technology Co

Leadermed Health Group

East Penn Manufacturing Co

WikiMedia Foundation

Huadong Medicine Co

Zhongze Therapeutics (Cayman) Holding

Norton Rose Fulbright

Norton Rose Fulbright‘s Greater China team is consistently sought out by major Asia-Pacific and global companies to advise on IP rights. Its specialisms cover the registration of patents, trade marks and designs, along with IP-related licensing, use and enforcement work. It also litigates IP classes before Hong Kong and China’s courts and tribunals. Team leader and IP law expert Justin Davidson regularly advises on the protection and exploitation of IP portfolios, and is increasingly active in relation to patent litigation. At associate level, Stanley Ng’s practice covers patents, design rights, copyright, confidential information, trade marks and domain names.

Practice head(s):

Justin Davidson

Other key lawyers:

Stanley Ng

Testimonials

‘The team understands the structure of cases very quickly, locates the key issues, and gives creative opinions and advice. It also responds very quickly.’

‘Justin Davidson impresses clients. He is a smart and diligent professional, who is highly efficient and good at communication. He is also able to provide detailed and thorough responses and advice in a very short period of time. He understands clients’ needs and knows how to fulfil them.’

Key clients

Logos

BNP Paribas

Louisville Research Foundation

Combat Medical Holdings

EON Surgical

Gentex Corporation

CSIRO

Hyla

DFB Pharma

Immunex

NLS Pharma

Samson Clinical

Curozone Ireland

Key Bioscience

Tillotts Pharma

Jacobson Pharma Corporation

BioSurgical

Crown Worldwide Holdings

Global Futures & Options

ASTRI (Hong Kong Applied Science and Technology Institute)

City University of Hong Kong

Work highlights

  • Appointed as global manager of BNP Paribas’ trade mark portfolio.
  • Manages the global trade mark portfolio of Crown Worldwide.
  • Assists ASTRI with patent prosecution and patent advisory services, in relation to its technologies.

Wilkinson & Grist

Working from both Hong Kong and Beijing, Wilkinson & Grist‘s sizeable IP practice group comprises Hong Kong lawyers and PRC legal counsels, along with patent and trade mark agents. The team’s service offering includes IP protection and enforcement matters, whether through administrative actions or court proceedings; and advising on IP strategy and the exploitation of different rights. It also assists with domain name registrations/disputes, actions against cyber squatters, and internet-related infringements. IP head Andrea Fong focuses on IP portfolio management and strategy, and the exploitation and enforcement of IP rights. Mena Lo and Annie Tsoi also have longstanding IP practices.

Practice head(s):

Andrea Fong

Other key lawyers:

Mena Lo; Florence Lam; Shireen So; Priscilla Chan; Annie Tsoi

Key clients

Inter IKEA Systems

7-ELEVEN

Johnson & Johnson

Adidas International Marketing

The Coca-Cola Company

Dyson

CK Asset Holdings

Samsonite

Academy of Motion Picture Arts and Sciences

Galaxy Entertainment Group

Richemont International

Universal Music

Costco Wholesale Corporation

Kao Corporation

Bloomberg

Kraft Foods

Dr Ing h c F Porsche Aktiengesellschaft

Genting Hong Kong

Novartis

Exxon Mobile Corporation

Yahoo

Work highlights

  • Advising portfolio clients, such as Galaxy, Johnson & Johnson, Inter-Ikea, 7-Eleven, Porsche and Novartis on trade mark clearance, application and maintenance work, as well as enforcement and anti-counterfeiting matters.

CMS

CMS‘ Hong Kong-based IP team has notable patent and trade mark prosecution capabilities. The group’s sector-focused expertise comprises life sciences, TMC, entertainment and consumer goods, along with hospitality, automotive, fintech, and food and beverage. Heading up the firm’s IP practice in Hong Kong, ‘brilliant and tireless attorneyJonathan Chu‘s broad practice covers IP enforcement, global licensing, IP due diligence for commercial transactions, and global IP prosecution and portfolio management work. Candy Tong and Mengyi Chen are experienced senior associates.

Practice head(s):

Jonathan Chu

Other key lawyers:

Candy Tong; Mengyi Chen

Testimonials

‘CMS’ specialist IP team comprises a leading bench of talent, experience and global capabilities.’

‘The team is very well rounded and knowledgable in the IP space. CMS understands and implements the perspectives of US clients and counsel.’

The advice is always on point, on time, and accurate. Moreover, its client service is second to none.

Key clients

Teva Pharmaceuticals

NatWest Group

Bank of England

UPS

Hot Toys

Samsung

Orange Sky Golden Harvest

Baidu

IHG

Bitmain

Royal Bank of Scotland

American Express

Gamestop

Tapestry

Decathlon

Yunnan Baiyao

Xiaomi

Work highlights

  • Assisted an entertainment company and film studio with the protection of its IP rights in films.
  • Advising a UK university on its IP rights agreement, and other documents, for its collaboration with a Hong Kong university on life sciences research.
  • Representing a global logistics company in a multi-jurisdictional dispute with a serial infringer, including litigation in the High Court of Hong Kong and proceedings in the Trade Marks Registry.

Dorsey & Whitney

Dorsey & Whitney‘s ‘strong‘ IP practice fields experts in trade marks, copyright, advertising, patents, and trade secrets. Head of the firm’s Greater China IP group, Janet Wong, is a specialist in brand protection strategies, trade mark portfolios and IP-related transactions, including the acquisition, franchising and licensing of IP rights. Also a a key member of the IP team, Lilian Shi is experienced in trade mark prosecution, anti-counterfeiting and contentious IP matters. Both Wong and Shi ‘do an excellent job‘.

Practice head(s):

Janet Wong

Other key lawyers:

Lilian Shi

Testimonials

‘Always on time, and with great information at a great price.’

‘The individuals are hardworking and dedicated to making clients’ business successful.’

‘Dorsey & Whitney continuously provides clients with invaluable insights and knowledge during really tough international litigation.’

‘The services and knowledge that the firm brings to clients are immeasurable, thanks to its global presence and experience in this area.’

‘Proficient in all areas of trade mark law, with the capabilities to manage portfolios and enforcement work in a creative and cost-effective manner.’

‘A strong team with all the expertise needed in one place, including a network in both South East Asia and mainland China.’

‘Janet Wong and Lilian Shi do an excellent job in relation to handling and responding to numerous trade mark enforcement and prosecution matters.’

‘Janet Wong is very helpful and quick to attend to clients’ legal needs.’

Key clients

Chow Tai Fook Jewellery

Mayo Clinic

Two Sigma Investment

Samsonite IP Holdings

SDI Technologies

Feel the World

The Burmax Company

Chongqing Terminus Technologies Co

Wisemen International

Swipe (Hong Kong)

Novalearn

Work highlights

  • Represented a long-term client in infringement matters in different provinces in mainland China.
  • Advised a Chinese pharmaceutical company on a due diligence matter, which related to a portfolio of patent filings and concerned an IPO’s restructuring.
  • Represented a long-term client in a significant victory that resolved a six-year long dispute with another global group.

Hogan Lovells

Hogan Lovells‘ Hong Kong-based IP, media and technology practice is headed up by Eugene Low, who is particularly focused on IP and data privacy work. Low also assists clients with the registration, enforcement and commercialisation of IP assets. Providing key support is counsel and IP litigator Andrew Cobden; and at senior associate level, PJ Kaur assists with strategic brand protection, as well as trade mark portfolio management, enforcement and litigation.

Practice head(s):

Eugene Low

Other key lawyers:

Andrew Cobden; PJ Kaur

SIPS – Simone Intellectual Property Services

SIPS – Simone Intellectual Property Services‘ IP practice is highly experienced in the registration, enforcement and licensing of IP rights. The Hong Kong practice is headed by Helen Tang, who also handles PRC and regional matters; managing partner Dan Plane focuses on PRC work, but additionally assists with regional anti-counterfeiting and enforcement issues; and founding partner Joe Simone advises exclusively on PRC matters, while retaining overall strategic responsibility for certain clients’ Hong Kong, Macau and Taiwan-related IP matters.

Practice head(s):

Helen Tang; Dan Plane; Joe Simone

Other key lawyers:

Grace Chen; Mai Lin

ELLALAN

Full-service law practice ELLALAN is particularly focused on the technology, entertainment, life sciences, fashion and luxury sectors. Mainland China clients additionally benefit from the firm’s Beijing IP agency, which assists with overseas IP work. Alan ChiuElla CheongRosita LiCharles To and Valerie Suen are key names.

Other key lawyers:

Alan Chiu; Ella Cheong; Rosita Li; Charles To; Valerie Suen

Eversheds Sutherland

Eversheds Sutherland‘s IP practice spans advisory, prosecution, litigation and transactional work. Asia IP head and IP strategist Cedric Lam (at Dorsey & Whitney until 2018) has particular expertise in IP-related deals and dispute resolution. He also routinely advises on the IP aspects of life sciences, along with patents and franchise issues.

Practice head(s):

Cedric Lam

Other key lawyers:

Sum Lam; Winnie Ho; Koon-yiu Tse

Key clients

BioNTech

UK Secretary of State for Defence

CDE Global

Entertainment One

Jordan Outdoor Enterprises – Realtree

Cardiologs Technologies

Corcym

Work highlights

  • Advised a biotech company on multiple IP and technology transfer arrangements.
  • Counsel to a global apparel brand on IP issues.
  • Served as lead IP litigation strategist to a global e-scooter manufacturing and distribution group, in IP and distribution disputes with its Chinese joint venture partner.

Gallant

In addition to its assistance with registrations and enforcements, Gallant‘s practice covers negotiations, audits, and the due diligence for M&A deals and IPOs. Former partner Rebecca Lo, who has extensive IP experience, is a consultant as of March 2022, while Emily Chick is the firm’s litigation and dispute resolution head.

Practice head(s):

Rebecca Lo; Emily Chick

Other key lawyers:

Clement Lam

Testimonials

The IP team headed by Rebecca Lo is a strong team that is able to provide practical and helpful advice to clients.’

‘Rebecca Lo is a very experienced IP law practitioner.’

Work highlights

  • Managing the IP portfolio of a large number of brands, including registering their trade marks in Hong Kong and other jurisdictions, and handling opposition, revocation and invalidation proceedings.
  • Representing the plaintiff, a property development, investment and management company, in a High Court action against an online shopping mall operator for trade mark infringement and passing-off.
  • Assisting a statutory body, established by the Hong Kong Government, with preparing its response to the Hong Kong Government’s consultation on amendment of the copyright law regime of Hong Kong.

Lewis Silkin

In 2021, Lewis Silkin recruited trade mark, design and copyright infringement expert Jezamine Fewins, from Stephenson Harwood to head up its Hong Kong and Asia-Pacific IP practice, which advises multinationals on IP and commercial IP issues.

Practice head(s):

Jezamine Fewins

Key clients

New Elect Investment Holdings

Xero Limited

Urban Armor Gear

Ann Cooley

Diva International

Azores Life Science

NetBit Asia

Cheah Investments

Work highlights

  • Advised GSK (British multinational pharmaceutical company) on an application to revoke three registered designs of a mainland pharmaceutical company.
  • Assisted Xero (globally known for online accounting software) with the issuance of two opposition proceedings.
  • Assisted Diva International with the registration of various marks that incorporate the word DIVA.

Minter Ellison

Minter Ellison regularly acts in litigation over trade marks, patents, design, copyright, passing-off, and domain names. The team is also increasingly active in the registration and management of IP portfolios. Department head Steven Birt is highly experienced in Greater China-related IP work, while associate Andrew Chan is an enforcement specialist.

Practice head(s):

Steven Birt

Other key lawyers:

Andrew Chan

Key clients

Big Agnes

Tunbow Electrical

Natural Insulation Products Incorporation

Duracell

Crocodile Garments

Work highlights

  • Acting for Tunbow Electrical in relation to its monitoring programme to identify potential infringements of its design and/or patent rights, particularly in relation to coffee machines.
  • Acting for Duracell in relation to an internet monitoring programme to identify and act against illicit counterfeiting activities on the internet.
  • Acting for Crocodile Garments in its protection of famous trade mark rights.

OLN IP Services Limited

The IP group of Hong Kong law firm Oldham, Li & Nie , OLN IP Services Limited, has significant experience in the publishing, clothing, jewellery, catering and travel industries. Vera Sung leads the IP team in Hong Kong and China, while consultant Benjamin Choi specialises in trade mark and branding strategy matters.

Practice head(s):

Benjamin Choi; Vera Sung

Other key lawyers:

Evelyne Yeung

Testimonials

Fast and detailed responses.

Vera Sung is responsive and very good at problem solving.

Robin Bridge & John Liu

Robin Bridge & John Liu regularly assists with IP acquisitions, along with exploitation and enforcement work. The firm also owns a Beijing IP agency that handles trade mark-related matters. Department head Anthony Tong has a substantial IP litigation practice, while Anthea Loo has fashion, luxury, consumer goods and pharmaceutical sector expertise.

Practice head(s):

Anthony Tong

Other key lawyers:

Anthea Loo

Testimonials

Very reactive firm, super sharp and pleasant to work with.

Anthony Tong is an excellent professional, who is friendly, responsive, accurate, and reasonable about fees.

Anthony Tong is always responsive and helpful.

Key clients

Allergan

Cartier International

Van Cleef & Arpels

Piaget

KAWS HOLIDAY

Cosmetic Warriors

Rockefeller Capital Management

Walton International

Giordano International

Oettinger Davidoff

The Pacific Cigar Company

K11 Group

The College Board

Colourpop Cosmetics

JD.com

Zwilling J A Henckels

Bumble Holding

Work highlights

  • Led a team of Singaporean attorneys in successfully discharging an ex parte injunction to shut down an exhibition (KAWS HOLIDAY: Singapore).
  • Successfully cited two individual defendants for contempt, in relation to the breach of a disclosure order obtained on behalf of Cartier, Van Cleef & Arpels and Piaget.
  • Represented Allergan in a worldwide dispute over the ownership of the JUVEDERM trade mark.