Intellectual property in Hong Kong
With twelve partners focusing on IP matters based out of Hong Kong and mainland China, Baker McKenzie has the critical mass to handle a significant volume and range of work, from advice on the commercialisation of IPR and portfolio brand management issues, through to IP due diligence associated with M&A handled by the firm. Team head Loke-Khoon Tan has particular expertise advising retail and consumer goods clients on the protection and enforcement of their IPR in mainland China. Working alongside Beijing-based lawyers (including local law qualified practitioners by dint of the firm's joint operation with FenXun Partners), Tan has recently handled numerous criminal actions for global brands, including Pernod-Ricard and Starbucks, against counterfeiters. Ruby Chan excels at handling brand protection issues, including advice to clients on brand clearance before product launch or market entry, as well as overall protection strategies across multiple jurisdictions.
Other key lawyers:
Procter & Gamble
Louis Vuitton Malletier
International Fruit Genetics
- Advised Starbucks in relation to the criminal action against six criminal suspects for manufacturing and selling counterfeit fake coffee products.
- Advised Pernod-Ricard with regards to a criminal case concerning three individuals who sold counterfeit spirits in their jointly owned cigar and liquor store. Among these counterfeit products, six of the client’s brands, namely Martell, Chivas, Ballantine, Hennessey, Remy Martin and Johnnie Walker are affected.
- Successfully assisted Procter & Gamble in relation to Gillette’s disputed “MACH3” and “Feng Su 3” marks and advised the client through the entire appeal process from the PRC Trademark Review and Adjudication Board (“TRAB”) to the Beijing Higher Court.
Led by the 'highly regarded' Matthew Laight, Bird & Bird's six-partner Greater China offering (which includes two partners based in mainland China) provides 'customer-centric' advice to leading global brands, regional heavyweights, and local SMEs across the waterfront of their Asia Pacific IP needs. The team is 'very strong' at handling the various needs of clients within the life sciences and health care sectors, an area that Alison Wong excels, both on the contentious front, where she regularly handles complex multi-jurisdictional patent litigation, as well as on transactional matters, including on the negotiation of R&D agreements and technology licensing. As part of his broad-ranging brand protection and transactional IP offering, the 'highly-regarded' Hank Leung has a niche advising on the monetisation of IP assets for gaming/e-sports clients. Counsel Victor Tse has a strong reputation for technology companies and venture capital firms on the effective commercialisation of IPR, and is also well-placed to advise on drafting, analysing and prosecuting patent applications, by virtue of his dual qualification as a patent attorney.
‘An established top-tier specialist IP practice in Hong Kong, long regarded as one of the leading firms in town.’
‘The team is very customer-centric.’
‘Matthew Laight, Alison Wong, Hank Leung, and Ted Chwu are all highly regarded experts, particularly in relation to patent-related matters. The firm has a suite of high-profile clients, including pharmaceutical companies’
‘Hank Leung is easy to talk to and provides a number of solutions to our problems.’
Li & Fung
The Hong Kong Intellectual Property Department, HKSAR
- Representing Merck KGaA in a major cross-border trade mark dispute
- Advising Riot Games on trade mark portfolio management and also the protection of their game characters and e-sports league properties
- Advising Shanghai Tang on trade mark and designs portfolio
With eight partners focused on IP matters, as well as access to an in-house team of patent attorneys, independent Hong Kong big-hitter Deacons has the resources to handle the full scope of contentious and non-contentious IP matters, directly from clients, as well as on a referral basis from other law firms. Triple qualified in Canada, UK, and Hong Kong, and also benefiting from a science background, Charmaine Koo is the 'go-to practitioner' across a myriad of IP matters relating to trade marks, copyright, passing off, and patents. 'There's a reason why everyone in the market instructs her', Koo combines strong commercial instincts with deep knowledge of the underlying law and technology/science being used, whether it be in the context of advice on commercial contracts, or high-stakes litigation. One of the few Hong Kong solicitors with postgraduate qualifications, lawyer and patent attorney Jeffrey McLean is a key resource on the patent front, with his work spanning disputes, as well as portfolio management and prosecution advice. 'Very talented' Patsy Lau co-heads the team with Koo and specialises in the protection of large multinational and regional trade mark portfolios.
‘The team is very professional, efficient, and effective. Its dedication to work and its clients is an example for all IP firms to follow. The firm stands head and shoulders over almost all IP firms we work with.’
‘Knowledgeable, not just in law but also in the field/industry (healthcare). The application of the law in the right context makes it helpful and useful to make sound commercial decisions.’
‘Deacons’ IP practice team calls in the best trade mark brains in Hong Kong.’
‘Patsy Lau and Charmaine Koo are the people we work with the most and it is from their work and their support that sets them apart from other IP practitioners.’
‘Patsy Lau is a very talented trade mark practitioner.’
- Representing PCCW Group in a telecoms patent infringement court proceedings brought against them by a US entity, Two-Way Media Ltd in the Hong Kong Court of First Instance. Also handling its global trade mark portfolio.
- Acting for the Ping An Insurance group of companies in two court actions: (1) 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. (2) 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.
- Defending Alibaba in proceedings commenced by cosmetics supplier Mary Kay involving complex questions regarding Online Content Provider liability for a third party seller’s product, as well as jurisdiction issues regarding e-commerce sites operating across borders.
Led by the 'excellent' Gabriela Kennedy, Mayer Brown's two-partner team is particularly strong at advising on branding strategy and portfolio management throughout Asia Pacific, where it is also able to leverage significant resources on the ground in key offices, including Singapore, Thailand and Japan. Kennedy is also well-versed at handling matters at the intersection of TMT and IP (including advice on licensing agreements and other technology-related commercial contracts work), while her contentious work includes the representation of clients in trade mark and licensing disputes, as well as in her role as an arbitrator at the Hong Kong International Arbitration Centre (HKIAC) for Intellectual Property Disputes. Although the team was weakened at a senior level by the recent retirement of Rosita Li, it has successfully nurtured a sizeable roster of more junior talent, including Amita Haylock, whose promotion to partner at the beginning of 2020 is a testament to her broad-ranging IP and TMT disputes offering, in particular.
Alibaba (and many of its subsidiaries)
Airport Authority Hong Kong
Agoda Services Company Limited
Alexandre de Paris International
Asia Video Industry Association
Composers and Authors Society of Hong Kong
DTS, Inc (under Xperi Corporation)
Jardine Matheson & Company Ltd / Dairy Farm Group
Hong Kong Jockey Club
Hang Seng Bank
LVMH Fashion Group
Mandarin Oriental Hotel Group Limited
Ocean Park Corporation
Philips International B.V.
Procter & Gamble
San Miguel Brewing International Limited
South China Morning Post Publishers Limited
Sun Hung Kai Properties
Television Broadcasts Limited
The Bank of New York Mellon
The Mentholatum Company
The Robinson Group Limited (Kim Robinson)
- Advising a global sportswear company on all trade mark work including enforcement, litigation and licensing matters, and prosecution.
- Advising Royal Golden Eagle (RGE) International on a host of IP matters in Asia and implementing strategies devised for it from the firm’s in-depth report as a result of the audit of their IP portfolio (which comprises thousands of trademarks and numerous patents and design rights as well as domain names). The firm is also advising RGE on the establishment of a sustainability consortium platform with other industry players and the use of a blockchain solution to trace materials production/sourcing.
- Advising Groupe Renault on a number of IP issues following an Asia-wide audit of existing trade mark portfolio which identified gaps in the portfolio and articulated a prosecution strategy, as well as the actions to take to build brand awareness and carry out effective enforcement in Asia.
Working on standalone mandates and forming an integral part of the firm's overarching global IP capability, Norton Rose Fulbright advises regional and multinational technology, manufacturing, life sciences, financial institutions, and further education clients seeking to acquire, commercialise and enforce their IPR. Portfolio management continues to inform a sizeable proportion of work handled by the team, whether it be in the context of advising international clients on their Greater China requirements or project managing the global portfolio needs of Hong Kong-based companies, including core client Crown Worldwide (which the office continues to advise on its global strategic trade mark requirements). As part of his broad-ranging IP expertise, 'very influential' team head Justin Davidson regularly handles patent-related work for life sciences companies, both in an advisory and prosecution capacity, as well as on a growing amount of PRC-related disputes. Stanley Ng's arrival from Deacons in June 2019, strengthens the firm's credibility on the patent ligation front, and is part of a talented group of associates that also includes Maggie Chong.
‘Norton Rose’s trade mark team is very responsive.’
‘Justin Davidson is very influential to the Hong Kong IP department.’
Curozone Ireland Limited
Key Bioscience AG
Tillotts Pharma AG
Hudson Institute of Medical Research
Jacobson Pharma Corporation
EON Surgical Ltd.
Teleflex Medical Incorporated
Starpharma Pty Ltd.
Crown Worldwide Holdings Ltd.
ASTRI (Hong Kong Applied Science and Technology Institute)
City University of Hong Kong
- Advising GSK on trade mark prosecution issues, including the management of their trade mark portfolio and renewals in Hong Kong and Macau.
- Advising Hong Kong Applied Science and Technology Research Institute Company Limited (ASTRI) on its technology licensing deals.
- Appointed as global managers of BNP Paribas trade mark portfolio.
Led from Hong Kong by Eugene Low and also able to access significant resources in mainland China (including the ability to advise on local law matters by virtue of the firm's establishment of Hogan Lovells Fidelity), Hogan Lovells' seven-strong team is well-placed to advise clients across a fairly balanced spread of contentious and non-contentious IP work. Leveraging the firm's global network of offices, the team can assist international clients on the management of their IP portfolios throughout Asia, and also provide the IP commercialisation advice (including on licensing and distribution agreements) associated with international brands seeking to establish operations in Hong Kong. On the litigation front, the team has recently handled numerous copyright, trade mark and passing off matters, areas that solicitor advocate Andrew Cobden has experience alongside his niche patent law prowess. Recently promoted to senior associate, PJ Kaur is particularly noted for her trade mark portfolio management, enforcement, and litigation expertise for fashion, cosmetics, and pharmaceutical clients.
- Advising Merck & Co., Inc. in connection with a major cross-border litigation concerning rights in the MERCK trademark and trade name.
Jones Day's Hong Kong office forms a key part of the firm's cohesive Asia IP offering, which also draws upon the expertise of lawyers based in mainland China and Taiwan. Much of the work it handles is of a cross-border nature and the team excels in advising multinational companies on the protection of their IPR throughout Greater China, as well as providing counselling on Asia-related technology transactions to help minimise IP risks. Hong Kong-based partner Haifeng Huang co-heads the firm's China IP practice and regularly represents US and Chinese IT and pharmaceutical clients on IP disputes. The team also regularly provides the IP due diligence on M&A matters involving significant IPR.
Other key lawyers:
Rouse Legal Hong Kong
Rouse Legal Hong Kong's three-partner team provides legal and consulting services, particularly as it relates to trade mark matters and is recognised for its 'excellent reputation handling IP portfolio matters and enforcement'. In this regard, international and domestic clients have access, not only to the know-how of experts in the local Asian markets, but also practitioners spread throughout its international network, as well as the benefit of cutting-edge tech products (including the firm's centralised portfolio management product, Rouse Hub). Rachel Tan combines her duties as managing partner of the Hong Kong office with her role as head of the firm's global trade marks offering and remains a pivotal member of the team that was strengthened on the litigation front by the arrival in January 2020 of Douglas Clark from Glit Chambers.
Other key lawyers:
‘Rouse is the type of firm which you know you can trust, as it has the knowledge and the determination to roll out a range of very successful enforcement strategies to ensure our products are not compromised.’
‘The firm has an excellent reputation for handling IP portfolio matters and enforcement.’
‘Quality service and advice, always reliable and consistent.’
‘The solution-focused and pragmatic Adelaide Yu is a very unique operator and is very well known in the industry, both in Hong Kong and China.’
‘Theresa Mak goes above and beyond and provides exceptional service.’
Universal City Studios LLC
Daniel Wellington AB
New Balance Athletics, Inc.,
Shiseido Company Ltd.
NBA Properties, Inc.
Spin Master Limited
Jaguar Land Rover
Western Digital Technologies, Inc.
- Trade mark prosecution and branding strategy advice to Canada Goose.
Led from Hong Kong by Andrea Fong and also benefiting from a sizeable Beijing presence, Wilkinson & Grist is instructed by a raft of high-profile international brands to manage and protect their trade mark portfolios throughout Hong Kong and China. Some of this work takes on a contentious complexion and includes invalidation applications, as well as enforcement work. The firm is also increasingly active in patent portfolio management.
Inter IKEA Systems B.V.
Johnson & Johnson
Adidas International Marketing B.V.
The Coca-Cola Company
Academy of Motion Picture Arts and Sciences
Galaxy Entertainment Group
Richemont International SA
Universal Music Limited
Costco Wholesale Corporation
Dr. Ing. h.c.F. Porsche Aktiengesellschaft
Genting Hong Kong Limited
Exxon Mobile Corporation
- Continuing to manage IKEA’s trade mark portfolio in Hong Kong and China.
- Assisting The Coca-Cola Company on clearance work and are responsible for prosecuting and maintaining client’s portfolio of nearly 1,000 trade mark registrations and applications in Hong Kong.
- Assisting Costco Wholesale Corporation in conducting clearance searches and advice to the client on filing strategies in China.
Clifford Chance's Hong Kong-based team excels in advising on complex multi-jurisdictional mandates (including on the IP-related due diligence associated with M&A in the region), by dint of its ability to leverage resources spread across the firm's global network of offices. Team head Ling Ho has an excellent reputation for handling IP and broader tech-related disputes, in addition to IP-based commercial contracts work. Ho has recently handled the IP issues associated with several matters in the fintech space.
Other key lawyers:
‘We had no idea how we would be able to settle our IP issues in Hong Kong but the team patiently guided us and showed us solutions.’
- Advised a Chinese fintech company on a potential dispute arising out of a data sharing and licensing agreement in relation to exclusive use, allowed exceptions and territorial scope.
- Acting for a start-up subsidiary of an international insurance company in the development of an online platform for direct to consumer term life products with insurance companies in Hong Kong and China.
- Represented a Hong Kong property and infrastructure conglomerate on its trade mark portfolio in Hong Kong and China.
Led from Hong Kong by Edward Chatterton and also benefiting from practitioners on the ground in Beijing and Shanghai, DLA Piper provides 'commercial, responsive and pragmatic' advice to international companies on the IP-related issues associated with establishing and operating business activities in the region. The team has recently advised numerous high-profile global food and beverage companies, including Five Guys and McDonald's, on their Greater China-related IP portfolio management. The team also regularly advises on IP-related commercial issues (including the drafting of licenses, franchising and publishing agreements), while on the litigation front, it has considerable experience handling domain name, copyright and trade mark disputes.
‘The team provides commercial, responsive, and pragmatic advice. Valuable in navigating complicated concepts and different jurisdictions.’
‘Edward Chatterton and Joanne Zhang provide spot-on advice. They fully understand our business and IP strategy and take the workload off of our internal legal counsels.’
Five Guys Enterprises
Manolo Blahnik International
Oath Inc (Formerly AOL)
- Representing McDonald’s with on-going advice in relation to its full range of IP matters in Hong Kong, the PRC and Macau, including managing its IP and trade mark portfolio in Greater China.
- Advising Five Guys on the full range of IP and brand protection matters in Hong Kong, China and Macau.
- Advised Moet Hennessy on combating parallel importation of Moet and Hennessy products into China, Hong Kong, and Vietnam.
Led by the 'practical and efficient' Steven Birt , following his arrival at the beginning of 2019 from Reed Smith Richards Butler, Minter Ellison's 'intelligent and responsive' IP team has rapidly gained inroads into the local market and garnered some notable instructions from international household goods and European clothing and bag brands on the management and protection of their IP portfolios throughout Greater China. Other work includes advice on licensing and distribution agreements, and the representation of clients engaged in trade mark and copyright disputes.
Other key lawyers:
‘The team is intelligent, responsive, and a pleasure to work with.’
‘Steven Birt is practical and efficient.’
Crocodile Garments Limited
Treasury Wine Estates
LKK Health Group
- Acting for Duracell in High Court litigation against parties counterfeiting Duracell’s packaging.
- Acting for Duracell in high court litigation against parties using Duracell’s name.
- Acting for LKK Health Group in its protection of famous trade mark rights through pursuing trade mark oppositions.
Although it was weakened somewhat following the departure of Jonathan Chu to CMS in December 2019, Stephenson Harwood maintains a solid IP offering. The 'very responsive and thorough' Jezamine Fewins heads the team and excels at handling IP matters at the intersection of employment law, including representing clients on issues relating to the theft of confidential information and trade secrets.
‘Jezamine Fewins is very responsive, thorough, and pleasant to work with.’
Eu Yan Sang International Limited
Asia Standard Management Services Limited
Bonhams 1793 Limited
CHINA KWEICHOW MOUTAI DISTILLERY (GROUP) CO., LTD. 贵州茅台酒厂（集团）有限责任公司
S E A Holdings Limited
Coindu , Componentes Para A Industria Automovels S.A.
Utmost Worldwide Limited Hong Kong branch
Slide & Hide Systems Pte Ltd
Peter Stupp Design Mode GmbH
- Representing minority shareholders in a joint venture vehicle which manufactured vodka where the majority shareholders and directors misappropriated the assets of the company including accounts receivables and the registered trade marks of the company through transfers and the execution of fraudulent assignments.
- Successfully defended Asia Standard Management Services Limited in opposition proceedings brought by China Oceanwide.
- Representing one of the world’s largest insurance companies in trademark infringement and passing off proceedings issued in the High Court against a Hong Kong entity which was using its English and Chinese trademarks.
Headed by Janet Wong , Dorsey & Whitney LLP's four-strong IP team is best-known for its trade mark capability and the ability to effectively formulate and maintain brand protection strategies throughout Greater China for local and multinational clients from a range of industries.
Other key lawyers:
Chow Tai Fook Jewellery Co., Ltd, Hearts on Fire Company
World Trade Centers Association
Sightsage Foods and Nutrition Inc.
Two Sigma Investment, LP
Feel the World, Inc. DBA Xero Shoes
Microsaic Systems Plc
Perry Street Software, Inc.
Hoyt Archery, Inc.
Narciso Rodriguez Corporation and NR Class 3, LLC
Eken Electronics Limited
- Assisted Sightsage to formulate its brand protection strategies, to develop and protect its trade mark portfolio for its marks in the Asia Pacific region, and to advise on all related prosecution matters.
- Successfully obtained a favourable decision for Two Sigma Investment on the non-use cancellation review and advised on a number of brand management and enforcement matters in China, Hong Kong and Taiwan.
- Advised Microsaic Systems Plc in the selection of Chinese trade name, conducting trademark clearance searches and advising on filing of a number of trade mark applications in China.
Led from Hong Kong by Gordon Milner and aided by significant resources in Shanghai, Morrison & Foerster has a particular focus acting for technology and life sciences clients on the commercialistion of their IPR, including advice on R&D agreements, licensing agreements, and technology transfer. The team also regularly provides the IP overlay on technology-related M&A handled by the firm's private equity/venture capital group.
Jiangsu Hengrui Medicine Co., Ltd.
Everest Medicines Limited/Everest Medicines II Limited
The Dairy Farm Group
- The firm represented Jiangsu Hengrui Medicine Co., Ltd. on its $165m exclusive license agreement with Novaliq GmbH.
- The firm represented Roblox in its joint venture with Tencent to publish and operate the Roblox platform in China.
- The firm advised Alibaba Group Holding Limited in Alibaba’s acquisition of a 33% equity interest in Ant Financial, China’s leading financial services company.
Well-established independent Hong Kong-based firm Oldham, Li & Nie provides 'concise and accurate advice' to local SMEs, China-based corporates, and multinational entities on brand protection throughout Greater China. Team head Vera Sung's broad IP offering includes expertise across trade mark, patent, and copyright matters, enabling her to provide effective advice to many international clients seeking to preserve and protect their brand throughout the region. While it is better-known for its advisory and portfolio management expertise, the team also handles a range of contentious IP matters, including advice on trade mark and domain name disputes, and is able to draw upon the firm's broader commercial litigation credentials, should the need arise.
‘The team’s advice is concise and accurate.’
‘Vera Sung is trustworthy and very responsive.’
- Successfully defended a stationary company against trade mark infringement allegations by arguing and submitting evidence showing the use of their mark in China is as an OEM act and the goods bearing mark did not circulate in the Chinese market and therefore no infringement.
- Advised a pharmaceutical company on patent revocation on two pharmaceutical patents.
- Represented an online trading platform on the defence of US proceedings regarding an alleged trade mark infringement.
Led from Hong Kong by Gino Cheng , Winston & Strawn LLP's Asia IP practice forms an integral part of the firm's overarching global offering and regularly works alongside US colleagues for Asian clients in patent disputes before the US federal courts and in International Trade Commission (ITC) investigations. The team is also well-versed in advising IP-rich multinational companies on compliance measures to better protect their IP and trade secrets throughout Greater China. This part of the practice is ably supported by the firm's Global Privacy and Data Security Task Force.
Activision Blizzard Inc.
Electronic Arts Inc.
2K Sports, Inc.
Take-Two Interactive Software, Inc.
Rockstar Games, Inc.