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.
Intellectual property in Hong Kong
Baker McKenzie
Practice head(s):
Other key lawyers:
Shih Yann Loo; Maria Smith; Isabella Liu; Ruby Chan; Grace Wong; Kenny Cheung; Maggie Yang; David Wu; Andrew Sim
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)
Other key lawyers:
Ted Chwu; Alison Wong; Hank Leung; Victor Tse; Matthew Laight
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):
Other key lawyers:
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
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):
Other key lawyers:
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):
Other key lawyers:
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.
Rouse & Co. International (Overseas) Limited
Rouse & Co. International (Overseas) Limited 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.
Practice head(s):
Rachel Tan; Douglas Clark; Chris Vale; Adelaide Yu; Theresa Mak; Mary Man; Chad Dowle
Other key lawyers:
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.
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):
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.
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):
Other key lawyers:
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):
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):
Other key lawyers:
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):
Other key lawyers:
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:
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
Dorsey & Whitney
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):
Other key lawyers:
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.
Practice head(s):
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):
Other key lawyers:
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):
Other key lawyers:
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.
OLN IP Services Limited
OLN IP Services Limited (the IP group of Oldham, Li & Nie) assists clients ranging from start-ups to multi-nationals with all their IP and related corporate/commercial matters. It handles both contentious and non-contentious work; trademark or copyright infringements, passing off and anti-counterfeiting in addition to IP prosecution matters and licensing. Managing director, Benjamin Choi and partner Vera Sung have some 20 years experience in the protection of IP assets, while senior associate Evelyne Yeung has expertise on the non-contentious side; the protection of trade marks including collective and certification mark.
Practice head(s):
Benjamin Choi
Other key lawyers: