Intellectual property in Hong Kong

Baker McKenzie

Baker McKenzie provides on-the-ground support in Hong Kong and Beijing through its joint operation with PRC law firm FenXun Partners. The strength of this relationship was evidenced by the firm’s recent representation of Starbucks against a Quanzhou company before the Quanzhou Intermediate Court. The firm has a strong track record advising large international brands on portfolio management, technology transfers and licensing transactions, as well as high-level disputes and litigation. Practice head Loke-Khoon Tan, who is a name to note for dispute resolution, acts for clients in China and further afield internationally. Ruby Chan is recommended for advice on brand protection, trade mark applications, prosecutions and registrations. Andrew Sim recently transferred from the Beijing to the Hong Kong office.

Practice head(s):

Loke-Khoon Tan

Testimonials

‘Their detailed analysis can facilitate us to make effective decisions on what would be best for our company and to maximise the protection we can have.’

‘They leverage experience in other markets to resolve any issues that we may have.’

‘Baker McKenzie is a reliable legal partner to us.’

‘The team always come with helpful advice and solutions when they update us.’

‘They are responsive and attentive.’

‘Strong experience and multijurisdictional capability.’

‘Good commercial acumen.’

‘They have great deal of experience with trade mark issues.’

Key clients

Argenx

Diageo

International Fruit Genetics

Louis Vuitton Malletier

Moet Hennesy

Pernod-Ricard

Rémy Cointreau

Sony

Starbucks

The Procter and Gamble Company

Volvo

Work highlights

  • Successfully defended Starbucks in five trade mark infringement lawsuits filed by a Quanzhou company before the Quanzhou Intermediate Court.
  • Advised a large number of the world’s leading and most well-known brands on the regional and global management and protection of their IP portfolios and the enforcement of their IP rights.

Bird & Bird

In May 2020, Shanghai-based Christine Yiu and Hong Kong-based Hank Leung were promoted to lead the China IP group at Bird & Bird. The firm is active in contentious and non-contentious matters for high-profile international brands across the Asia-Pacific region. It advises clients on trade marks, patents, trade secrets, copyright and designs, commercial matters and also litigation. Leung is recommended for brand protection and transactional IP in China and beyond. Matthew Laight advises clients in the electronics, pharmaceutical, IT, media and food and beverage sectors. Alison Wong acts for life sciences and healthcare companies on regulatory issues. Counsel Victor Tse is a patent attorney with contentious IP expertise and a scientific background.

Practice head(s):

Christine Yiu (Shanghai); Hank Leung (Hong Kong)

Key clients

Merck KgaA

Riot Games

Helen of Troy

Shanghai Tang

International Olympic Committee

Work highlights

  • Advised Merck KGaA on a trade mark infringement and unfair competition litigation against MSD Animal Health (Shanghai) Trading Co., Ltd in China.
  • Managed Riot Games’ extensive trade mark portfolio in Hong Kong and China, and assisted the client with protection of its game characters and e-sport league properties.
  • Managed and handled Helen of Troy’s trade mark, design and patent applications and registrations in Hong Kong.

Deacons

Hong Kong firm Deacons has a well-established track record in the local market and it handles contentious and non-contentious IP work for large international corporates, as well as domestic clients. Its in-house patent prosecution team includes patent attorneys who are qualified in Europe, the UK, Australia and China; they work closely with IP litigation lawyers to provide advice on cross-border infringement and enforcement matters. Annie Tsoi, who is dual-qualified in Hong Kong and England & Wales, jointly leads the team with Charmaine Koo, who has recently acted as lead partner in a number of litigated disputes. Koo also handles commercial IP work, including cybersecurity and data privacy. Patsy Lau is recommended for advice on the protection of large international trade mark portfolios. Jeffrey McLean utilises his technical background to assist with the technical and patent aspects of contentious matters. In October 2020, Benjamin Choi left for Oldham, Li & Nie.

Practice head(s):

Annie Tsoi; Charmaine Koo

Testimonials

‘The attorneys have a very good working relationship with the clients.’

‘We’ve found the outcome of patent prosecution has been greatly improved since we started using Deacons.’

‘Jeffrey Maclean is a great guy to work with, he’s very knowledgeable about Chinese law and we find him very easy to interact with.’

‘Jeffrey Maclean is keen to understand the technology and help us get the best patent protection possible.’

‘The team has very diverse expertise and knowledge.’

‘The lawyers are also able to provide useful advice on our specific business needs, exploring different options to address the risks and needs.’ 

‘They are very personal and responsive to your enquiries.’   

‘The team members are professional, efficient and can be trusted to carry out their work well.’ 

Key clients

Alibaba Group

Chow Tai Fook

FWD Group

Google

Lan Kwai Fong Group

Nestle

Ping An Group

The Hong Kong Polytechnic University

4M Industrial Development Limited

Work highlights

  • Successfully represented Google in an appeal against the Privacy Commissioner in Hong Kong regarding “Right to be Forgotten” (“RTBF”).
  • Acting for Alibaba in proceedings commenced in Hong Kong by cosmetics supplier Mary Kay against three Alibaba companies
  • Acting for the Ping An Insurance group of companies in court actions, including as a plaintiff in a court action for passing off against a company listed in Hong Kong which changed its name to a very similar company name and stock short name; and as a defendant in relation to an earlier court action instigated by the same Hong Kong listed company accusing it of trade mark infringement of its Chinese and English characters and passing off.

Mayer Brown

Mayer Brown acts for clients in the financial services, manufacturing, retail, luxury and fashion, hospitality and telecoms sectors, among others. Its team excels in managing the IP portfolios of top international brands. In addition, it is also strong in copyright, media and transactional IP matters, as well as licensing transactions and disputes. Gabriela Kennedy, who heads up the Asia IP and TMT group, is recommended for contentious and non-contentious work, including litigation, licensing, strategic advice and portfolio management. Amita Haylock handles trade marks, copyright, designs and patents, and has considerable experience of infringement proceedings relating to software and electronics.

Practice head(s):

Gabriela Kennedy

Other key lawyers:

Amita Haylock; Michelle Yee

Testimonials

‘Mayer Brown runs a very well-integrated firm.’

‘I wouldn’t ever hesitate to recommend Gabriela Kennedy to any company or creative individual looking to protect their rights in Asia.’

‘I have recommended Gabriela Kennedy many times and others are as impressed and appreciative of her skills, as we are.’

‘Amita Haylock’s persistence, diligence and exceptional commitment delivered a successful outcome for us.’

‘Amita Haylock never lost her focus or belief in her ability to tackle the issues successfully.’

Key clients

Adidas

Adobe

Airport Authority Hong Kong

Alexandre de Paris International

Arup Group Limited

Asia Video Industry Association

Charlotte Tilbury

Cummins

Composers and Authors Society of Hong Kong

Dairy Farm (Jardine Matheson & Company Ltd)

Entertainment One

Fast Retailing Co., Ltd

Hong Kong Jockey Club

Hang Seng Bank

Henderson Land

Jack Daniel’s

Jimmy Choo Hong Kong Limited

Lane Crawford

LOTTE Corporation

LVMH Fashion Group

Mandarin Oriental Hotel Group Limited

Nautilus

Nestle

Nvidia Corporation

Ocean Park Corporation

PCCW Limited

Philips International B.V.

Renault Groupe

Riley Cillian Hong Kong Limited

San Miguel Brewing International Limited

Sino Group

Swire Group

Sun Hung Kai Properties

Soho House

Television Broadcasts Limited

The Mentholatum Company

The Murray Hotel

Toys “R” Us (Fung Group)

The Robinson Group Limited (Kim Robinson)

T. Rowe Price International Ltd

WTT

Wynn Resorts

Zhejiang Medicine Co.

Work highlights

  • Managing a trade mark portfolio for Nvidia & Mellanox.
  • Handled PRC trade mark oppositions and advised on PRC trade mark licensing and enforcement matters for one of the world’s leading tire manufacturers.
  • Appointed by the Hong Kong Science and Technology Parks Corporation (“HKSTPC”)to assist with the drafting of a set of 21 IP and privacy-related legal document templates for start-ups under its Incubation Programmes and Leading Enterprises Acceleration Programme.

Norton Rose Fulbright

The IP team at Norton Rose Fulbright acts for a range of multinational companies in Asia and across the globe, with key areas of focus including the acquisition of IP rights, as well as exploitation, use and enforcement. It also handles commercial IP matters, such as M&A, restructuring and competition issues. Practice head Justin Davidson, who is dual-qualified in Hong Kong and England & Wales, advises on both contentious and non-contentious matters; he has recently seen an uptick in patent litigation instructions in China. Associate Phoebe Poon is fluent in English, Cantonese and Putonghua, and is recommended for trade mark portfolio work.

Practice head(s):

Justin Davidson

Other key lawyers:

Phoebe Poon; Maggie Chong; Stanley Ng

Testimonials

‘The team has always been able to quickly understand the major structure of the case, locate the key issues and give creative opinions.’

‘Justin Davidson indeed impressed us as a smart and diligent professional.’

‘Justin Davidson is highly efficient and good at communication.’

‘Justin Davidson knows the cultural and legal differences in different countries/regions well and makes the client understand the best option in each one.’

‘Justin Davidson is able to provide detailed and thorough responses to our questions and advice in a very short period of time.’

‘Maggie Chong and Phoebe Poon are impressive in their professional skills.’

Key clients

Logos Ltd.

BNP Paribas

Multiple life sciences corporations including: GSK

CSIRO

Hyla

DFB Pharma

Immunex

NLS Pharma

Samson Clinical

Curozone Ireland Limited

Key Bioscience AG

Tillotts Pharma AG

Jacobson Pharma Corporation

BioSurgical S.L

Crown Worldwide Holdings Ltd.

GlaxoSmithKline (GSK)

ASTRI (Hong Kong Applied Science and Technology Institute)

City University of Hong Kong

Work highlights

  • Advising Logos of Australia on China trade mark issues.
  • Won a competitive pitch and were appointed as global managers of BNP Paribas trade mark portfolio.
  • Regularly providing patent prosecution and patent advisory services in relation to technology for clients in the life sciences industry.

Wilkinson & Grist

Operating out of Hong Kong and Beijing, Wilkinson & Grist is well placed to handle a broad range of IP matters across the region. Under the leadership of Andrea Fong, the practice continues to act for internationally recognised brands, as well as local businesses, on contentious and non-contentious issues, including protection of trade mark, design and patents, enforcement, IP portfolio management, litigation and transactions. Mena Lo is a name to note for licensing agreements and IP rights portfolio planning and protection strategies.

Practice head(s):

Andrea Fong

Other key lawyers:

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

Key clients

Inter IKEA Systems B.V.

7-ELEVEN Inc.

Johnson & Johnson

Adidas International Marketing B.V.

The Coca-Cola Company

Dyson Limited

Samsonite

Academy of Motion Picture Arts and Sciences

Galaxy Entertainment Group

Richemont International SA

Universal Music Limited

Costco Wholesale Corporation

Kao Corporation

Bloomberg

Kraft Foods

Dr. Ing. h.c.F. Porsche Aktiengesellschaft

Genting Hong Kong Limited

Novartis

Exxon Mobile Corporation

Yahoo Inc.

Work highlights

  • Advising Costco Wholesale Corporation on conducting clearance searches and on filing strategies in China.
  • Advising Coca-Cola on trade mark clearance work and on prosecuting and maintaining a portfolio of nearly 1,000 trade mark registrations and applications in Hong Kong.
  • Advising Johnson & Johnson on the management of more than 2,000 trade mark registrations and applications in Hong Kong.

Jones Day

Jones Day is frequently instructed to handle cross-border prosecutions, litigation and transactional work across the Asia-Pacific region. It advises large multinational corporates on inbound disputes, IP transactions and China portfolio strategies. Shanghai-based partner Tony Chen co-heads the team with Haifeng Huang, whose practice is split between Hong Kong and Beijing. Huang is recommended for disputes and transactions involving patents, trademarks, copyrights and technology licences. Chiang Ling Li left for Tiang & Partners.

Practice head(s):

Haifeng Huang; Tony Chen  (Shanghai)

Testimonials

‘The team has a good sense of issues and how to advise clients.’

‘I work with Haifeng Huang. He is very practical, down to earth and persistent in resolving problems for us. He has good insights of legal issues and is good at advising us on the strategy that we should take to address the issues.’

Key clients

Moody’s Corporation

Educational Testing Service

VMI Holland B.V.

Hangzhou Hikvision Digital Technology Co., Ltd.

Incyte Corporation

Work highlights

  • Successfully represented Moody’s Corporation before the Hangzhou Internet Court in a precedent-setting case relating to the disputed domain “Moodys.cn”.
  • Serving as global trademark counsel to Educational Testing Service (“ETS”) and notably enforces ETS’s rights in China in domain take downs.
  • Representing VMI Holland B.V. in its ongoing dispute with Safe-Run relating to IP infringement and patent hacking.

Rouse Legal Hong Kong

Rouse Legal Hong Kong advises large international brands on consulting, portfolio management, dispute resolution, trade mark protection and management, global enforcement and anti-counterfeiting matters. The Hong Kong team works closely with its counterparts in China and South East Asia, making it well-placed to handle matters across Asia-Pacific. Rachel Tan specialises in brand clearance and protection, and enforcement before the Chinese trade mark authorities and administrative courts. Tan jointly leads the group with Douglas Clark, Chris Vale, Adelaide Yu, Theresa Mak, Mary Man and Chad Dowle.

Other key lawyers:

Carrie Yu

Testimonials

‘The team have been tremendous partners in our efforts in Asia.’

‘Their wide network of associates on the ground gives them the ability to advise on individual jurisdictional issues, as well as how issues impact regional strategies.’

‘Their guidance is always clear, concise and considers our business goals as well as trade mark issues.’

‘We rely heavily on their expertise to deliver the best possible outcomes for our clients.’

‘Rachel Tan set a high service bar when she took on our portfolio more than five years ago.’

‘We appreciate their research, insights and knowledge as well as the ability to put all of those into effective practice.’

‘Highly effective and independent outside counsel that understands the business and the goals of the trade mark department.’

Key clients

MARS, Inc.

Tencent Technology (Shenzhen) Co., Ltd.

Universal City Studios LLC

Jaguar Land Rover Limited

Western Digital Technologies, Inc.

HP Inc.

Babyzen

Daniel Wellington AB

Salvatore Ferragamo S.p.A

Shiseido Company Ltd.

Spin Master Limited

PT Wings

Inspire Brands Asia Pte. Ltd. / AnytimeFitness Asia

Yue’s Tongren Pharmaceutical TechnologyGroup Co., Ltd

Work highlights

  • Assisted Babyzen with its patent infringement case against the defendant and known infringer Hebei New Speed Toys Co., Ltd.
  • Acted for Anytime Fitness in actions for breach of Franchise agreements including bringing two arbitrations in Hong Kong.
  • Advising Yue’s Tongren Pharmaceutical Technology Group Co., Ltd. on the appeal against two opposition decisions of the Registrar of Hong Kong Trade Marks.

Clifford Chance

The Hong Kong IP team at Clifford Chance, which is integrated into the firm's Greater China practice, comprises of IP specialists and commercial lawyers from the corporate and litigation and dispute resolution departments. It demonstrates strong capabilities across a full spectrum of contentious and non-contentious matters. The workload includes advice on the IP aspects of transformative projects, dispute resolution and transactions, as well as employment-related matters. Ling Ho leads the IP group in Asia and also heads up the litigation and dispute resolution practice in Hong Kong.

Practice head(s):

Ling Ho

Testimonials

‘Strength in depth, very responsive, good communicators, clear strategic recommendations.’

‘The IP team led by Ms Ling Ho has always been a professional team. They anticipate issues that clients may run into, and at the same time, have clients’ interests in mind, including cost. They try to work out a cost-efficient solution.’

‘Ling Ho and her team actually care about their clients and they are genuinely interested in building a long term relationship. Their advice is clear and practical and risk based, thus providing useful assistance in helping clients in making their decisions.’

Clifford Chance’s Hong Kong IP team distinguishes itself from peers with its high-profile magic circle expertise, which combines with a street-smart working approach.’

Over the years, Ling Ho has always impressed me deeply with her sharp insights into the IP issues in question, and ability to deliver sound judgements and advice accordingly.’

Ling Ho is responsive, pragmatic, business minded, easy to work with.

CMS

In 2020, CMS established a full-service IP practice, which has a notably strong capability in trade mark and patent filings. The team is led by Jonathan Chu, who works closely with colleagues in Beijing and Shanghai to offer a joined-up approach to Greater China work. Chu is experienced in IP enforcement, global licensing, technology transfer, IP due diligence, transactional work and portfolio management.

Practice head(s):

Jonathan Chu

Testimonials

‘CMS delivered a high standard of quality services.’

‘They are proactive in identifying and analysing business opportunities related to our intellectual property.’

‘Resourceful, flexible, and able to offer tailor-made solutions.’

‘Johnathan Chu is commercial, has broad legal expertise, is flexible and open to feedback.’

‘Johnathan Chu is accommodating and interested in building long-term business relationships.’

‘Jonathan Chu is able to quickly identify key issues and what he says at the negotiation table counts because of his credentials.’

‘A pleasure to work with.’

‘They are pleasant, fun and have a unique ability to truly understand what your needs are.’

Key clients

American Express

Beigene

Baidu

China Resources Snow Brewery (Liao Ning) Company Limited

Decathlon

Dentsu

Dior

Emerson (Control Techniques)

EFG Bank European Financial Group S.A.

FDG Electric Vehicles Limited

Hitachi

Hot Toys Limited

Kate Spade

NatWest Bank

MiniSo

Samsung

Tapestry Inc.

Teva/Actavis

The Royal Bank of Scotland Group plc

UPS

Xiaomi

Work highlights

  • Acting for Baidu Online Network Technology in actions in the High Court of Hong Kong for passing-off and trade mark infringement of client’s house mark “Baidu” in Hong Kong.
  • Handling the trade mark portfolio for Teva Pharmaceutical and Actavis.
  • Advising a Hong Kong-listed entertainment company regarding the non-fungible token (NFT) project in connection with its film catalogue.

DLA Piper

With a presence in the PRC, DLA Piper’s Hong Kong IP team is well placed to handle cross-border mandates for large international brands entering the Chinese and wider Asian markets. The practice has a strong focus on trademark work and is well equipped to handle strategy, trademark prosecution, and trademark litigation and enforcement work. Edward Chatterton heads the team and is recommended for brand protection matters.

Practice head(s):

Edward Chatterton

Other key lawyers:

Liam Blackford; Joanne Zhang

Key clients

McDonald’s Corporation

Five Guys Enterprises

Moet Hennessy

Manolo Blahnik International

Avon Products Inc.

Orkla

Pokerstars

Papa John’s

Gweilo

HSBC

G&W Distilling

Gemological Institute of America (“GIA”)

Efes

Work highlights

  • Providing HSBC with ongoing advice in relation to the full range of trademark and brand protection matters across Asia.
  • Advising on Avon’s trademark portfolio in China and Hong Kong, including providing filing strategy for house mark and core brands, regular monitoring of third party hijacks, enforcement action plan against hijackers/infringers, and handling all proceedings before the China Trademark Office, Trademark Review and Adjudication Board, and Chinese courts.
  • Advising Manolo Blahnik on all of its trademark matters globally.

Hogan Lovells

The intellectual property, media and technology (IPMT) team at Hogan Lovells is led by Eugene Low, who is a partner of the Hong Kong, China and Vietnam practices. He also heads the firm’s video gaming and e-sports practice. Low acts for clients in litigation and regulatory investigations, and also advises on commercial IP matters. Counsel Andrew Cobden is recommended for pharmaceutical patent work and acts for a number of large international pharmaceutical companies; he is experienced in advising on the regulatory issues of clinical trials. Senior associate PJ Kaur is recommended for trade mark portfolio management, enforcement and litigation.

Practice head(s):

Eugene Low

Testimonials

‘All-rounded IP firm with excellent knowledge and in-depth expertise in trade mark matters. From senior practitioners who excel at strategising to junior solicitors who maintain a firm grasp on the details of a case, this firm has everything that a commercial client can hope for.

‘Eugene Low displays superb client care and management skills. He is also a brilliant presenter who can think out of the box. PJ Kaur (associate) has sound IP knowledge and is regarded widely as a rising star in her field.’

Key clients

Merck

Federation of Swiss Watch Industry

Work highlights

  • Advising Merck & Co., Inc. on a major cross border litigation concerning rights in the MERCK trade mark and trade name.

Stephenson Harwood

Stephenson Harwood handles cross-border litigation and transactional work for international brands in the IP space. The practice works closely with its counterparts in the PRC and further afield internationally to provide wide geographical coverage across Asia. Jezamine Fewins left the team in January 2022 to join Lewis Silkin.

Other key lawyers:

Nathalie Sit; Vivian Lau

Testimonials

‘The company’s patent attorneys are very experienced.’

‘Work quality and efficiency are high, consultations are responded to quickly, and they can give effective advice in a timely manner.’

‘The firm has in-depth research on the relevant laws and regulations of Hong Kong’s intellectual property protection, which can help clients better protect their rights and interests in the Hong Kong Special Administrative Region.’

 

Key clients

GSK

Asia Standard Hotel Group Limited

Korn Ferry

Utmost Worldwide Limited

Bell Textron Inc.

Biocoat Incorporated

DIVA INTERNATIONAL INC.

PONY AI INC.

BigHit Entertainment Co. Ltd.

Azores Life Science, LDA

Work highlights

  • Representing GSK, the British multinational pharmaceutical company in respect of an application to revoke three registered designs of a mainland pharmaceutical company, Chia Tai Tainqing Pharmaceutical Holdings Company Limited on the grounds that their inhaler designs are not novel and are substantially similar to that of GSK and existing prior art at the date of the application.
  • Assisting Asia Standard Hotel Group Limited with registering its trade marks in the United States and Canada where in both jurisdictions applications have been vigorously opposed by entities which are offering hotel and temporary accommodation.
  • Assisted Korn Ferry in managing and restructuring its trade mark portfolio in Hong Kong following a list of complex transactions and group restructuring.

Dorsey & Whitney LLP

Dorsey & Whitney LLP handles brand formulation, maintenance, management and protection work across Greater China. The team draws on the strength of its international network to advise on a range of IP matters, with a focus on trade mark work. Practice head Janet Wong is recommended for trade mark portfolio matters and IP transactions.

Practice head(s):

Janet Wong

Other key lawyers:

Lilian Shi; Eileen Xu

Testimonials

Professional and not only have unique opinions on legal viewpoints, but also make various different suggestions and guidance according to our actual needs and the actual situation of the market.

Key clients

Chow Tai Fook Jewellery Co., Ltd, Hearts on Fire Company

Mayo Clinic

Janchor Partners Limited

World Trade Centers Association

Two Sigma Investment, LP

Feel the World, Inc. DBA Xero Shoes

Pattern, Inc.

Microsaic Systems Plc

Wisemen International Limited

Pu Tien Holdings Pte Ltd

Mayo Clinic

Perry Street Software, Inc.

Narciso Rodriguez Corporation and NR Class 3, LLC

Tecovas, Inc.

OrbusNeich Medical Company Limited

Work highlights

  • Assisted Mayo Clinic with successfully opposing a number of objectionable PRC trade mark applications and conducting raid actions in multiple cities in China against a notorious group of infringers manufacturing and distributing MAYO NUTRITION branded healthy drinks
  • Assisted World Trade Centers Association with successfully obtaining a favourable first instance court decision in Ningbo and an even more favourable court appeal decision in Zhejiang High Court against Taizhou World Trade Center Co. Ltd and others on the basis of unfair competition. The defendants were jointly liable for damages of RMB 3 million, which is the maximum amount of statutory damages available under the current Chinese Trademark Law.
  • Assisted CHOW TAI FOOK with monitoring and taking down a vast number of infringing CHOW TAI FOOK branded jewellery items from a popular online shopping platform in Southeast Asia, including Indonesia, Taiwan, Vietnam, Thailand, Philippines, Malaysia and Singapore.

ELLALAN

Specialist IP firm ELLALAN attracts a strong flow of contentious and non-contentious mandates from clients, including prosecution, enforcement, litigation, advisory and commercial work. Its team has expertise in trade marks, patents, copyright and designs. The main contacts are Alan Chiu, Ella Cheong, Rosita Li, Charles To and Valerie Suen.

Testimonials

‘ELLALAN has deep technical expertise, but sets itself apart from other firms with outstanding commerciality and value for money.’

I’ve known Alan for many years and worked on many cases with him. He has a rare talent for coming up with solutions no one else has thought of.

Alan is a very nice and patient guy and always can put himself on my shoes to work out a tailor-made legal solution for me.’

The team is well structured and organized. We have been working with them for years and it is a great experience. Attorneys at ELLALAN have in-depth knowledge of trademark laws and we can fully rely on their expertise that always comes with good results.

Alan and Valerie are very responsive through emails and their advice is always useful and informative.

Key clients

Alibaba Group Holding Limited

Hong Kong Recording Industry Alliance Limited (“HKRIA”)

Hong Kong Karaoke Licensing Alliance Limited(“HKKLA”)

LVMH Group

PANDORA A/S

SMCP Asia Ltd.

Ocean Park Corporation

Vivienne Tam

Wong Lo Kat

Sage International Group Limited (Sun Entertainment)

Star Plus Legend Holdings Limited

Gogo Tech Limited

Cainiao

Swire Properties

Sotheby’s

Moncler

PuraPharm International (HK) Limited

Work highlights

  • Handling the Global IP Portfolio Management and Enforcement (except Mainland China) for Alibaba Group.
  • Representing HKRIA and its wholly-owned subsidiary HKKLA in the landmark and long drawn copyright licensing dispute before the Hong Kong Copyright Tribunal between Hong Kong Karaoke Licensing Alliance Limited (representing multinational music labels such as Universal Music, Song Music, Warner Music etc.) and Neway (Hong Kong’s biggest karaoke chain).
  • Handled the IP enforcement portfolio for brands under the LVMH Group including Louis Vuitton, Celine, Emilio Pucci, Kenzo, Loewe and Givenchy in Hong Kong, covering a wide range of legal issues – including trademark, copyright and design registration infringement.

Gallant

Gallant advises a range of clients, from start-ups to Fortune 500 companies, on IP filing and prosecution, portfolio management, due diligence on corporate deals, and also litigation, arbitration and mediation matters. Rebecca Lo heads the team with over 30 years’ experience in IP matters; she often leads on local counsel matters for large international law firms.

Practice head(s):

Rebecca Lo

Other key lawyers:

Clement Lam; Emily Chick 

Key clients

Apple Inc

AT&T

De Beers

Hong Kong Exchanges & Clearing Limited (and group companies such as The Stock Exchange of Hong Kong Ltd. and Hong Kong Futures Exchange Ltd.)

LVMH Fragrance Brands

Monster Energy Company

National Basketball Association

Parfums Christian Dior

Salvatore Ferragamo SpA

Velcro BVBA

Work highlights

  • Working with many international firms, providing local law IP services in their IPO, M&A and other commercial deals.
  • Engaged by 2 universities and a statutory board if Hong Kong to provide IP services involving drafting/advising on IP and e-business contracts.
  • Handling the IP portfolio many international brands – filing and prosecution as well as contentious proceedings relating to their IP portfolio – not only for Hong Kong but for some clients also in other jurisdictions.

Minter Ellison

Minter Ellison acts for international brands in litigation concerning trade marks, patents and design and copyright infringement issues. It also handles commercial and contractual matters, such as global licensing deals and other transactional work. Team head Steven Birt is experienced in a range of contentious and non-contentious matters, including regulatory and enforcement issues.

Practice head(s):

Steven Birt

Other key lawyers:

Andrew Chan

Key clients

Duracell

Crocodile Garments Limited

Treasury Wine Estates

Bodum AG

LKK Health Group

Work highlights

  • Acting for Crocodile Garments Limited in its protection of trade mark rights through pursuing trade mark opposition in Hong Kong.
  • Acting for Treasury Wine Estates in its protection of famous trade mark rights through pursuing trade mark opposition in Hong Kong.
  • Acting for Duracell in relation to an Internet monitoring program to identify and act against illicit counterfeiting activities on the internet, particularly in relation to online marketing of counterfeit goods and unauthorised product postings on online trading websites.