Intellectual property in Hong Kong
'Consistently involved in the largest mandates in the region', Baker McKenzie's six-partner team has the strength-in-depth to effectively resource a tremendous volume and variety of contentious and non-contentious matters across the waterfront of IP issues. Aided by a strong presence on the ground in China, (which through the firm's joint Operation with PRC law firm FenXun Partners enables it to provide advice on both international and local Chinese laws) as well as across many key jurisdictions in the region and internationally, the team is able to provide a highly coordinated service to numerous well-known brands seeking to protect and enforce their IP portfolios. Team head Loke-Khoon Tan has considerable experience on behalf of luxury, retail and consumer goods clients, in relation to PRC-related trade mark enforcement and anti-counterfeiting planning. Ruby Chan is also recommended and has extensive experience in the management and protection of regional and global trade mark portfolios, covering both commercial IP as well as contentious IP issues.
Other key lawyers:
Louis Vuitton Malletier
- Advising AIA, one of Asia’s largest listed life insurance companies, in relation to protection for a tagline to be used in connection with its latest product launch in relation to health and wellness services in 18 jurisdictions.
- Advised and successfully obtained a well-known status for the Chinese name of Givenchy. Notably this case marks the first time one of the brands under the LVMH fashion group has been granted a well-known status in China.
Headed by the 'superb' Matthew Laight, Bird & Bird's four-partner team has a strong reputation in Greater China and throughout Asia Pacific, as a result of its competencies across the spectrum of IP matters, including as it relates to trade mark protection and portfolio management, IPR commercialisation and litigation. Benefiting from numerous practitioners with specialist science and engineering backgrounds, the firm is perhaps best known for its 'very strong capability on the patent litigation front', particularly on behalf of life sciences and healthcare clients. Its knowledge within the patents space is underscored not only by numerous high-profile litigation victories over the years but also by its ongoing role as sole external adviser to the Hong Kong government on its plans to reform the Hong Kong patent system, introduction of the brand new Original Grant Patent system, and the formation of Hong Kong's first-ever patent office. Alison Wong heads up the firm's life sciences practice in Asia and is noted for an ability to effectively coordinate complex patent litigation throughout the region. Counsel Victor Tse's experience as both a lawyer and a patent attorney ensures he is a firm favourite with clients across both advisory and litigation. Recently promoted to partner, the 'responsive and practical' Hank Leung has a growing reputation in the region on behalf of clients in the technology, media, luxury, retail and consumer goods industries across brand protection and transactional IP matters.
‘The extremely responsive team provides accurate, insightful, and business-focused solutions.’
‘Hank Leung is relaxed yet reliable and is the “go-to-person” whenever you feel unsure about any trade marks issue.’
Li & Fung
Intellectual Property Department, The Government of HKSAR
Helen of Troy
- Continue to advise Li & Fung and a large number of its subsidiaries in the retail and consumer sector on IP protection strategies in Hong Kong, PRC and Macau.
- Advising Hong Kong-based company Imperial Pacific International Holdings on the strategic trade mark portfolio management of its brands across Asia (PRC, HK, Macau, Singapore, Malaysia, the Philippines, South Korea, and Japan) and the US.
- Represented Oaktree Capital on a rare appeal to the PRC courts from a .cc domain name dispute. This is a significant case as it is rare for domain name squatters to actively and aggressively appeal a domain name dispute case to the courts.
- Continue to manage Philip Morris’ extensive trade mark portfolio and design registrations in Hong Kong.
- Assist Vans on trade mark matters in Hong Kong and Macau, including trade mark applications, non-use cancellations and oppositions.
Deeply entrenched in the local business ecosystem and also benefiting from excellent insights of the regulators and courts by virtue of the firm's longstanding presence in the country, Deacons has a very balanced offering across the spectrum of IPR, from both a contentious and non-contentious perspective. Patsy Lau now leads the firm's efforts on the trade mark front, following Vivian Poon's recent departure, and is noted for her ability to provide a 'very effective and coordinated service' to local Hong Kong businesses on their global portfolio management requirements, as well as on behalf of international clients on their Greater China strategies. The firm also benefits from the expertise of numerous patent attorneys who provide the technical input in relation to patent prosecution work, as well as on patent litigation. The team is also regularly involved in complex and high-profile disputes, including Charmaine Koo's representation of Alibaba as the defendant in a closely watched case brought by cosmetics supplier, Mary Kay, against it, raising complex questions regarding online content provider liability for a third-party seller’s product as well as jurisdictional issues regarding e-commerce sites operating across borders.
‘The team provides a responsive and knowledgeable service.’
Gmedia Hong Kong Limited and Gmedia Information Technology (Beijing) Co
Ping An Insurance (Group) Company of China Ltd (2318.HK) and Ping An of China Securities (Hong Kong) Company Limited
Tsui Wah Holding
- Acting for Ping An Insurance (Group) Company of China in a court action for passing off against another company listed in Hong Kong.
- Acting for the PCCW Group in patent litigation brought against them by a US entity, Two-Way Media in the Hong Kong Court of First Instance.
- Representing Gmedia in a patent infringement action in Hong Kong against Tencent over the use of Gmedia’s 2D (QR) code technology in Tencent’s Weixin and Wechat products.
- Advised Tsui Wah on the franchising of its first “Tsui Wah” outlet outside of China.
- Represented Valentino against Ash (HK) Limited in a Hong Kong Court action claiming copyright infringement and registered design infringement.
Co-headed from Hong Kong by Chiang Ling Li and Haifeng Huang , and also able to tap into a strong presence in mainland China (as well as a fully licensed IP agency in Beijing), Jones Day provides a 'well-rounded offering' to multinational corporates and local entities across their IP prosecution, litigation, and commercial activity/portfolio management. The firm is particularly strong on behalf of technology and life sciences companies, with work including patent litigation and technology licensing disputes. Huang has an excellent track-record representing US and Chinese entities in IP disputes; he recently successfully represented Qualcomm in the defence of a high-profile trade mark action filed against it by a Shanghai company which asserted that Qualcomm's Chinese company name infringed the plaintiff's trade marks. The team also regularly provides the IP due diligence on M&A matters involving significant IP assets.
Other key lawyers:
- Assisted Moody’s in preparing and filing UDRP complaints against Yaosheng, the registrant of www.riskcalc.cn and www.riskcalc.com.cn and obtained a favourable award from Hong Kong International Arbitration Center.
- Successfully represented Qualcomm in the defence of a trade mark action filed against it by a Shanghai company asserting that Qualcomm’s Chinese company name (GAO TONG) infringed the plaintiff’s trademarks.
Benefiting from vast experience across Hong Kong and Asia Pacific, Mayer Brown 's four-partner team provides 'practical, business-oriented and responsive' advice to local and international clients from the fashion, consumer goods and technology sectors, in particular. Rosita Li is particularly strong at handling trade mark litigation and portfolio management for some major brands; she recently secured victory for Timbird in litigation against a PRC company for using its logo for the defendant's hotel. The team has also successfully developed a strong offering in relation to digital copyright matters. 'Vastly experienced' team head Gabriela Kennedy is one of the few practitioners listed as an IP arbitrator with the Hong Kong International Arbitration Centre and also handles a wide range of issues including enforcement, litigation and licensing for high-profile clients throughout the region. Amita Haylock was made partner in November 2019. Janice Yip, a former solicitor with the Intellectual Property Department of Hong Kong, and Joanna Hui were recent new additions to the team.
Alibaba (and many of its subsidiaries)
Airport Authority Hong Kong
Agoda Services Company
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
Ocean Park Corporation
Procter & Gamble
San Miguel Brewing International
South China Morning Post Publishers
Sun Hung Kai Properties
Television Broadcasts Limited
The Bank of New York Mellon
The Mentholatum Company
The Robinson Group Limited (Kim Robinson)
Zhejiang Medicine Co
- Advising a European sportswear company on trade mark work including enforcement, litigation and licensing matters, and prosecution.
- Representing Royal Golden Eagle International on the implementation of IP strategies.
- 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.
- Representing Timbird in litigation against a PRC company for using their logo for the defendant’s hotel.
- Assisting Wynn Resorts on the protection and enforcement of its IP rights in Asia.
Headed by the 'extremely helpful and accesible' Eugene Low from Hong Kong, and also benefiting from a significant presence in Beijing and Shanghai, Hogan Lovells is able to provide a coordinated and efficient service to international and Asian clients on the protection, exploitation and enforcement of their IPR. On the contentious front, the firm is well-versed in handling trade mark and copyright litigation, and as a result of the firm's establishment of Hogan Lovells Fidelity in the Shanghai Free Trade Zone, is one of the few foreign law firms that can provide direct IP litigation representation in China. Counsel Andrew Cobden has vast contentious experience in the market (he has higher rights of audience before the Hong Kong courts), and is particularly noted for his expertise handling patent litigation within the pharmaceutical sector.
‘The team approaches matters in a practical way, and provides in-depth analysis, ensuring that we always reach a commercial solution.’
- Representing Merck & Co in connection with a major cross-border dispute concerning rights in the MERCK trade mark and trade name.
- Act for a number of telecom operators in Hong Kong in the issue of writs against the Government for the recovery of excessive licence fees following the judgment of the Court of Final Appeal in FACV 11/2017.
- Represented Tencent in a variety of contentious cases, including the successful enforcement of various IT contract claims.
Led by the 'smart and diligent' Justin Davidson, Norton Rose Fulbright provides a 'helpful and knowledgeable service' to multinationals and Asian companies, including on patent and trade mark prosecution, commercialisation and enforcement. Aided by a huge global network of offices, the team is particularly accomplished at managing the IP portfolios of major international businesses. As well as spearheading the Greater China aspects of the global portfolio requirements of international clients, the team is also the driving force behind the coordination of the international strategies of Hong Kong-based companies (including Crown Worldwide). Davidson is also very well regarded for his patent litigation expertise, which regularly sees him acting for technology and pharmaceutical entities in multi-jurisdictional disputes throughout Asia. Senior associate Maggie Chong is also recommended and regularly assists clients with managing, protecting and commercialising their intellectual property portfolios across Asia.
Other key lawyers:
‘Justin Davidson is always quick to understand the major structure of the case, locate the key issues and give creative opinions.’
‘Justin Davidson has excellent knowledge of IP law.’
ASTRI (Hong Kong Applied Science and Technology Institute)
Bank of Montreal
Crown Worldwide Holdings
Royal Bank of Canada
- Acting as global managers of BNP Paribas’ trade mark portfolio.
- Provide patent prosecution and patent advisory services in relation to technology for clients in the life sciences industry.
- Managing the global trade mark portfolio of Hong Kong-headquartered company Crown Worldwide.
- Advising Hengfeng Tyres on global trade mark issues in over 40 jurisdictions.
- Advising GSK on trade mark prosecution issues, including the management of their trade mark portfolio and renewals in Hong Kong and Macau.
Rouse Legal Hong Kong
Specialist IP boutique Rouse Legal Hong Kong provides a 'very responsive and competent' service to international and regional businesses on their IP enforcement and prosecution requirements. The 'very creative and helpful' Rachel Tan is 'one of the best trade mark strategists in the region' and regularly assists clients 'achieve their strategic objectives in Hong Kong and China'. In addition to her core fee-earning work on behalf of clients, Tan is also involved in lobbying efforts to promote the reform of China's trade mark laws. Although it is best-known for its trade mark expertise, the firm is also increasingly active on patent and transactional IP matters.
Now Health International (Investments)
- Represents Canadian headquartered toy company, Spin Master Limited, on its trade mark prosecution and enforcement work.
- Continues to advise MARS, Inc. on its trade mark portfolio and IP protection strategy in Hong Kong.
- Advising WM. Wrigley JR. Company on its trade mark portfolio and IP protection strategy in Hong Kong and Macau.
- Represent Jaguar Land Rover on portfolio management and contentious matters.
- Advise Western Digital Technologies on trade mark prosecution and enforcement matters.
Although it is perhaps less active on IP litigation than some ranked firms, Wilkinson & Grist is 'very strong in relation to trade mark filing and prosecution' and picks up a tremendous volume of work on behalf of international clients in the food and beverage, automotive and luxury goods industries.
Led by Ling Ho from the firm's Hong Kong office and also supported by practitioners spread through the firm's Asia Pacific network of offices, Clifford Chance excels in acting for international corporates (many of them institutional clients of the firm) on their Greater China trade mark/brand portfolio management matters, as well as for regional clients on their international IP requirements. Recent highlights include Ho's work, alongside practitioners from the firm's Shanghai office, for an infant nutrition company in an appeal to the PRC Supreme People's Court on trade mark infringement and unfair competition actions against a Chinese entity. The team also excels at handling transactional/commercial IP matters, with regular work including advice on technology transfers, licensing arrangements, joint venture agreements and IP due diligence related to M&A handled by the firm.
‘Clifford Chance’s Intellectual Property (“IP”) practice group distinguishes itself from peers by its good business acumen, proficiency in IP-intensive transactions, practical working approach and result-orientation. My in-house peers may turn to this practice group to get its expertise in IP-intensive transactions.’
‘Ling Ho(the partner), Yi Yang(of counsel) and Ernest Shen (the associate) had delivered high-quality services relying on its rich experiences in cross-jurisdiction IP-intensive transactions, good business acumen and deep insights into business contexts. All these make this team unique compared with other competitors and worthy of recommendation.’
- Assisting a Hong Kong property and infrastructure conglomerate on the coordination of its trade mark portfolio in Hong Kong and China.
- Managing the brand portfolio for a luxury car manufacturer, including successfully overcoming pre-emptive registrations and dealing with infringers.
- Providing strategic advice and support to a hospitality group on its worldwide trade mark portfolio, including advising on options, methods and actions against conflicting registrations and applications, strengthening the portfolio of trade marks and copyright, investigation and enforcement.
- Representing a Chinese internet company in a dispute with its joint venture partner (a well-known listed online game company) in relation to a range of issues, including in relation to joint distribution of online games.
- Represented a world-leading luxury goods holding company group across a number of copyright infringement/passing off disputes and other actions against infringers in Hong Kong.
Led from Hong Kong by the 'humble yet decisive' Edward Chatterton and able to leverage an 'impressive global platform', DLA Piper provides 'knowledgeable and pragmatic advice' to international and regional entities from IP-rich industries including, fashion and luxury brands, life sciences, pharmaceuticals and technology. Particularly strong in relation to IP portfolio management, the team is able to provide a very cohesive service to clients across the Greater China region, in particular, by virtue of a strong presence on the ground in Beijing and Shanghai. The team also regularly advises on IP-related commercial issues (including the drafting of license, franchising and publishing agreements), while on the litigation front it has considerable experience handling domain name disputes, copyright litigation and trade mark enforcement matters.
‘The team provides clear strategic guidance.’
‘Edward Chatterton has a sixth sense of what the client needs.’
‘Joanne Zhang is always reachable and knows our strategy and cases inside out.’
FA Premier League
Cirque du Soleil
- Advising McDonald’s across a wide spectrum of IP matters in Hong Kong, the PRC and Macau, including managing its trade mark portfolio in Greater China.
- Advising Pokerstars (the world’s largest online poker gaming provider) on the full range of IP matters across China, Hong Kong, Macau, Singapore and Malaysia, including on issues related to brand protection, prosecution, oppositions, invalidations and enforcement actions.
- Advising Five Guys on the full range of IP and brand protection matters in Hong Kong, China and Macau.
- Advising on Avon’s trade mark portfolio in China and Hong Kong.
- Advised Orkla (and a number of companies within their group) with regard to IP protection for their consumer goods portfolio to enter the Chinese and Hong Kong markets.
Spearheaded out of Hong Kong by Jezamine Fewins, Stephenson Harwood's team provides 'client-oriented and insightful' advice across a range of matters, particularly as it pertains to the enforcement of IPR. Increasingly visible in the local market and also able to leverage the expertise of lawyers on the ground in mainland China, the team has recently handled a raft of passing off and infringement actions on behalf of domestic and international clients from the technology and financial services sectors. Leveraging her employment law expertise, Fewins also has a particular specialty in representing clients on matters involving the theft of trade secrets and confidential information by employees. Former practice co-head Jonathan Chu, together with senior associates Mengyi Chen and Candy Tong agreed to join CMS associated Hong Kong firm Lau, Horton & Wise LLP in January 2020.
‘The team displays superb market insight, has good language capability and reasonable billing practices.’
Eu Yan Sang International
Hot Toys Limited
Bonhams 1793 Ltd
All In Pay Network Service Co.
FDG Electric Vehicles
Orange Sky Golden Harvest
Asia Standard Management Services
LRS (Lucozade Ribena Suntory)
- Successfully defended Asia Standard Management Services in trade mark litigation brought against it by China Oceanwide.
- Representing Armstrong (AWI Licensing LLC and Armstrong China Holdings Limited) in a passing off claim in the High Court of Hong Kong against a Hong Kong infringer.
- Representing Allianz Se in trade mark infringement and passing off proceedings issued in the High Court against a Hong Kong entity which was using its English and Chinese trade marks.
- Representing Xiaomi in a trade mark dispute with Apple Inc.
- Advised Saito blockchain on the coordination of the prosecution of its international patent applications for its blockchain technology.
Headed by Steven Birt, following his and a team of three associates' arrival from Reed Smith Richards Butler, Australian firm Minter Ellison's nascent IP offering is well-placed to service existing corporate clients of the firm on their IP needs, as well as to continue to handle work for the plethora of clients that followed Birt to his new firm. Birt has a very strong reputation throughout the greater China region on contentious and non-contentious matters, from both a regulatory and enforcement perspective; he has been particularly active of late representing Duracell on enforcement work in the Hong Kong Court.
Other key lawyers:
Treasury Wine Estates
- Acting for Duracell in High Court litigation against parties counterfeiting Duracell’s packaging.
- Representing 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.
Headed from Hong Kong by Gordon Milner and also aided by a significant presence in mainland China, Morrison & Foerster has a focus on helping regional and international technology and life sciences companies successfully commercialise their intellectual property rights, including providing advice on licensing arrangements and technology transfers. The team also often handles the IP due diligence associated with transactions undertaken by the firm in the TMT sector.
Everest Medicines Limited/Everest Medicines II Limited
The Dairy Farm Group
- Represented Everest Medicines II Limited, a portfolio company of C-Bridge Capital, in its exclusive collaboration, license and supply agreement with VenatoRx Pharmaceuticals, Inc.
- Represented Everest Medicines II Limited in its exclusive collaboration and licensing arrangement with Spero Therapeutics, Inc.
Led by the experienced Vera Sung, Oldham, Li & Nie's 'responsive' five-strong team provides 'very appropriate advice' to local SMEs and larger international businesses across a range of contentious and non-contentious IP issues. The firm is particularly active in the publishing, retail and travel sectors and regularly acts for respondents and claimants in trade mark and passing-off actions.
All individuals in the team are highly professional and responsive.
- Helped an online seller discharge an infringement claim incurring only minimal damages.
- Representing a major financial institution in Hong Kong across all trade mark disputes faced by the client.
- Represented a manufacturer of sunglasses in relation to two Hong Kong trade mark disputes with the goal of achieving a global settlement.
- Successfully represented a brand of well-known cosmetic products from Korea in securing a declaration of invalidity of trademark registration against a squatter in Hong Kong.
- Represented a print media and broadcasting conglomerate in trade mark litigation.
Led by John Slater , Simmons & Simmons' Hong Kong office forms an integral component of the firm's overarching international brands group which assists corporates on the protection and commercialisation of their intellectual property rights throughout EMEA and Asia Pacific. As well as helping coordinate the trade mark and patent portfolio strategies of multinationals throughout Greater China, Slater has also been pivotal to securing work for local clients, including most recently Ant Financial.
CATHAY PACIFIC AIRWAYS AND HONG KONG DRAGON AIRLINES (Cathay Dragon)
Maus Frères International Services (LACOSTE, AIGLE International, GANT AB)
Asia Miles Limited
AECOM Technology Corporation
New World Development Company
Afton Chemical Corporation
Take-Two Interactive Software
Ant Small and Micro Financial Services Group Co.Ltd (Ant Financial/Alipay)
Aspen Asia Company Limited
King Street LLC
- Searching, filing and prosecution of several trade marks for well-known toy company, BANDAI.
- Managing the global trade mark portfolio of HNH International .
Led by Gino Cheng – who is praised for his 'ability to understand complex technologies' – Winston & Strawn LLP is known in the market for the ease with which it is able to 'work seamlessly together' with lawyers from across the firm's international network on cross-border contentious matters. This manifests itself most clearly and commonly by the team's representation, alongside the firm's market-leading US offering, of Asian clients on patent disputes in the US federal courts and International Trade Commission (ITC) investigations. While this remains the core of the practice, the team has been increasingly active in relation to handling local disputes/arbitration including as it relates to trade secrets.
Other key lawyers:
‘The team was responsive and knowledgeable and also displayed excellent communication skills in both Chinese and English.’
‘They made an otherwise cumbersome process a pleasant experience.’
‘Gino Cheng worked tirelessly in meeting our demands.’
Activision Blizzard Inc.
Electronic Arts Inc.
2K Sports, Inc.
Take-Two Interactive Software, Inc.
Rockstar Games, Inc.
- Represented a group of video game developers in defending against patent infringement allegations.
- Represented a group of video game developers in USPTO Board review of a patent related to computer connection method.
- Represented a group of generic drug manufacturers in defending against alleged infringement of patents related to bipolar depression and schizophrenia drug.