Intellectual property: Local firms in Singapore
At Allen & Gledhill LLP, Stanley Lai, SC leads a 'very experienced team' of intellectual property specialists, patent attorneys and design and trade mark executives who handle a wide range of contentious and transactional IP matters in the biotechnology, pharmaceuticals, software and entertainment sectors. Lai primarily focuses on contentious IP, particularly in relation to patent prosecution, passing off, copyright infringement and data protection issues. Pei Lin Low is 'a safe pair of hands' and 'an experienced patents lawyer'; she also assists with the management of patents, trade marks and design portfolios. 'Strong all-round IP lawyer' Gloria Goh advises on regulatory aspects in the pharmaceuticals, cosmetics and food industries as well as acting in disputes involving trade marks, copyright, domain names and infringements claims. William Ong is noted for disputes involving trade secrets and confidential material.
‘The uniqueness of A&G’s Intellectual Property legal practice lies in their practical commercial approach combined with legal principles in resolving IP legal issues. Business people appreciate such approach without legal jargon and saves both time and money.’
- Representing the defendant in a copyright dispute brought by the Composers & Authors Society of Singapore, concerning alleged infringement by non payment of licence fees in relation to music on the defendant’s Pay TV service.
- Managing the Singaporean and worldwide patent prosecution portfolio for various multinational corporations in the telecoms, technology, logistics and retail sectors.
- Successfully acted for a tobacco company in defending an opposition to the registration of the trade mark application by CTBAT International, related to the client’s trade mark on the grounds of bad faith.
Baker McKenzie Wong & Leow handles the full gamut of intellectual property work, spanning regulatory IP portfolio management and branding, trade mark and design registration, enforcement and prosecution. Andy Leck heads the practice and is 'one of the best IP litigators and strategists'; he has recently acted for Motion Picture Association of America in the precedent-setting decision by the Singapore High Court granting a site-blocking application against such a large number of infringing websites. Lim Ren Jun's practice covers IP commercial transactions, regulatory issues, licensing, franchising, data protection and product liability. Abe Sun is 'an exceptional patent lawyer' with 'strong experience in the technology industry'.
‘Baker McKenzie’s team, especially the patent practice group, has a very good understanding of the technicalities and the relevant local and foreign laws’.
‘Trade mark and patent expertise are excellent. Andy Leck is a leading IP litigator and Abe Sun is one of the best patent strategists regionally. They interlink well with other legal specialists within the broader network of offices to bring together a cohesive team to help resource in-house counsel.’
‘Abe Sun is incredibly thorough in his explanations and is very business oriented.’
‘Abe Sun is an exceptional patent lawyer who has strong experience in the technology industry. He has very good communication skills and can work very well with the internal team to prepare the patent registration.’
Motion Picture Association of America, Inc.
Fox Networks Group
The Premier League
- Acted for various clients, including Fox Networks Group Asia, Singapore Telecommunications, StarHub and The Premier League, in private criminal copyright proceedings before the Singapore Courts, against retailers of Illicit streaming devices.
- Acted for Fox Networks, Singnet (Singtel), and the Football Premier League in a site-blocking application with respect to novel issues of copyright law surrounding illicit streaming devices.
- Successfully acted for Motion Pictures America Association in a landmark decision by the Singapore High Court with respect to a site-blocking application where a “dynamic site blocking” order was granted.
- Acting for Sanrio Company, owners of characters such as ‘Hello Kitty’, in various brand enforcement and trade mark litigation matters.
Bird & Bird ATMD LLP's intellectual property team is 'very personable, efficient and one of the most capable in the market', with 'top-notch' expertise in the automotive, financial services, life sciences, consumer goods and technology and media industries. Its three partner team is able to assist clients with branding and the commercialisation of IP, management of global portfolios, trade mark filing and opposition disputes and enforcement action. As 'one of the best trade mark non-contentious strategists', practice head Lorraine Tay is highly involved in the management of cross-border IP trade mark and design portfolios. Alban Kang focuses on patent and IP-related litigation where he frequently represents software, pharmaceutical companies and trade mark owners in technical, complex multi-jurisdictional litigation. Anan Sivananthan and Gene Kwek are also of note for IP registration, clearance, protection and monetisation.
‘The team at Bird & Bird is very personable, efficient and capable. Highly organised and detail oriented.’
‘Non-contentious trade mark specialists and experts.’
‘Lorraine Tay understands the clients’ business needs and requirements and consistently provides creative, but practical advice. She is absolutely the best.’
‘Lorraine Tay is one of the best trade mark non-contentious strategists. She goes the extra mile to sort out trade mark administration issues associated with maintaining a global trade mark portfolio.’
Singapore Shipping Association
Teva Pharmaceutical Industries
B. Braun Melsungen AG
Monster Energy Company
- Acted for Singapore Shipping Association and the Association of Singapore Marine Industries in a patent revocation action against Hitachi and Mitsubishi.
- Represented Teva Pharmaceutical Industries Ltd/Drug Houses of Australia in a patent infringement case.
- Representing Merck KGaA in its multi-jurisdictional trade mark dispute with Merck & Co, on grounds of trade mark infringement, passing off and breach of contract.
- Advising on the global brand management, portfolio management and IP advisory work for Banyan Tree Group.
- Advising Ascott International Management on its global brand management and IP portfolio work.
Drew & Napier LLC stands out for its 'outstanding depth of knowledge, aggressiveness in litigation strategy and business savviness', according to one client. Core areas of expertise include patents, designs and trade marks, copyrights, licensing and franchising, branding and commercialisation, as well as advising on regulatory issues affecting the life sciences and pharmaceutical industry. Managing director Tony Yeo is 'an absolutely first-class litigator'; he recently represented Becton Dickinson Medical, in a leading patent infringement dispute commenced by B. Braun Melsungen concerning medical catheters. Yvonne Tang's practice focuses on trade marks and copyright infringement, while Siau Wen Lim advises on general IP and regulatory matters, particularly those concerning gaming, product advertising, labelling, and branding. Meryl Koh frequently works alongside Yeo on patent and trade mark infringement disputes.
‘A fantastic legal team. They work closely as one unit. Their depth of knowledge, aggressiveness in litigation strategy and business savviness is outstanding.’
‘Tony Yeo is an absolutely first-class litigator. Amazing in the court room. He is not only able to provide high-level strategic advice, but is able to also zoom in and pick up on the minute details. Great depth of knowledge.’
Boylondon Korea Co.
Exxon Mobile Corporation
- Acting for lab grown diamond technology company, in a patent infringement suit commenced by a subsidiary of the De Beers Group.
- Acting for a leading cruising operator in a trade mark opposition dispute concerning a competitor’s trade mark application.
- Defending medical company in a patent infringement claim commenced by B. Braun Melsungen, relating to medical catheters.
- Acting for a global retailer in an opposition to the registration of a trade mark.
- Advising a Japanese retailer in defending an opposition brought by The Scotch Whisky Association against its trade mark application.
Offering 'real industry expertise' in sports, gaming, energy, technology and retail, Rajah & Tann Singapore LLP is 'the first amongst its peers', according to one client. Specialising in non-contentious and litigation work in the sports, media and gaming industries, Lau Kok Keng is 'one of the most reputable IP lawyers in Singapore'; he acted for FIFA on its brand protection campaign for the 2018 FIFA World Cup in Russia and advised the Singapore National Olympic Council on a sponsorship agreement with Borneo Motors Singapore. Nicholas Lauw has 'strong technical knowledge' and is frequently involved at the cutting edge of IP-related issues such as infringement relating to Google ad-words, judicial site blocking, eMoney regulations and patent infringement relating to solar energy generation.
Lau Kok Keng
Other key lawyers:
‘Rajah &Tann’s IP team has good domain knowledge in the sports industry and sports fraternity in Singapore. They are client centric and take the time to understand the idiosyncrasies of sports associations. They provide us with sound legal advice and assistance but value add with invaluable strategic insights and business advice whenever needed.’
‘Rajah & Tann is the first amongst its peers.’
‘Lau Kok Keng is one of the most reputable IP lawyers in Singapore; his wide breadth of knowledge of IP matters and the Singapore sports industry coupled with his genuine understanding of the issues faced by sports associations in Singapore is unique in the market. ‘
‘Nicholas Lauw is the go-to lawyer for all IP matters. He has strong technical knowledge and never fails to deliver practical and commercial advice.’
Sony Interactive Entertainment
Lenovo Enterprise Solutions (Singapore)
Singapore National Olympic Council
- Acting for the Sunseap Group in an application to strike out the defendants’ counterclaim seeking revocation of a patent.
- Advising United Overseas Bank on taking ownership of patents, valuation of the patents, and the sale of patents.
- Successfully acted for defendednt, Bottles & Bottles, a well-known wine retailer, against claims brought by a competitor, of alleged trade mark and copyright infringement, passing off and violation of Australian consumer law.
- Assisted the Singapore National Olympic Council with a sponsorship agreement with Borneo Motors Singapore for provision of Toyota vehicles as the official cars for various sponsorship benefits in connection with the 2019 Southeast Asian Games in the Philippines, the 2020 Summer Olympic Games in Tokyo, the 2020 Winter Youth Olympics in Lausanne, and the 2021 Southeast Asian Games in Vietnam.
Amica Law LLC is a boutique intellectual property practice that provides 'commercial and legal expertise at good value for money'. It advises on the commercialisation of rights, IP transactions, patent and trade mark protection and portfolio management, as well as handling taking protection and enforcement measures. Jo-Ann See is experienced in IP matters across a range of industries, including entertainment, telecoms, technology, food and beverage, hospitality and consumer products. On the contentious side, Jason Chan has acted in disputes raising novel issues in the biotechnology and computer electronics space.
Other key lawyers:
‘Amica Law provide solid and up-to-date legal expertise, commercial and practical business sense and good value for for money‘.
Philip Morris International
iNova Pharmaceuticals (Singapore)
Razer Asia-Pacific Pte
Starbucks Coffee Company
- Managing the worldwide trade mark portfolio of Razer Asia-Pacific, an electronic consumer goods company.
- Representing Element Six Technologies Ltd, a member of the De Beers Group, in a patent infringement dispute concerning patents for the manufacturing of synthetic diamonds.
- Representing T2 Singapore Pte. Ltd. in a global dispute against TWG Tea Company Pte. Ltd. concerning the use of the latter’s allegedly proprietary tea blend names, which has included a High Court trade mark infringement and passing off action and multiple opposition proceedings.
- Acting for Pfizer in defending a patent infringement case brought by Millennium in the High Court of Singapore, following an opposition to Pfizer’s license application for the distribution of a generic pharmaceutical product by Millennium Pharmaceutical.
- Advising Philip Morris International on protection and enforcement strategies, border control and anti-counterfeiting issues.
Dentons Rodyk & Davidson LLP is very active in patent litigation, particularly in the field of pharmaceutical and electromechanical inventions; its team is currently representing Bristol–Myers Squibb in a patent infringement case against Novartis under the patent linkage regime implemented through the US-Singapore FTA. On the non-contentious side, the practice assists local and international clients with acquiring and protecting trade marks, patents, designs and copyright, as well as with the commercialisation of IP rights through licensing and franchising. Ai Ming Lee is experienced in patent disputes concerning semiconductors, telecoms, pharmaceutical and biotechnology issues. Woon-Chooi Yew, Gilbert Leong,Catherine Lee, Chai Chong Low are other key partners.
Ai Ming Lee
‘Can recommend Dentons to other Japanese potential client because they can understand a Japanese way of thinking, and we are satisfied with their response speed and careful work. They also have listened to our thoughts patiently in order to understand our demand accurately. ‘
Bristol-Myers Squibb Pharma Co.
Integrated Health Information Systems
Merck Sharp & Dohme Corp
- Represented NexPlanar Corporation / Wah Lee Tech in a patent infringement case involving chemical mechanical polishing pad technology used in semiconductor manufacturing.
- Acting for Bristol–Myers Squibb Pharma Company in ongoing patent infringement litigation against Novartis under the patent linkage regime implemented through the US-Singapore FTA.
- Representing Merck Sharp & Dohme in a patent infringement case against Drug Houses of Australia, commenced under the patent linkage regime implemented through the US-Singapore FTA.
- Represented Singaporean company, Boby Footwear Pte Ltd, in filing multiple oppositions against Japanese firm Otafuku Glove in relation to the trade mark Otafuku.
- Represented Comité Interprofessionnel du Vin de Champagne in filing an opposition against local firm Amigos y Vinos Pte Ltd in relation to the trade mark ‘Champengwine’.
Combining expertise in intellectual property, technology and commercial transactional work, Taylor Vinters Via LLC 'has an exceptional understanding of the commercial interests' and counts multinationals such as Changi Airport Group among its clients. Its team supports clients in the protection, commercialisation and enforcement of IP assets and rights worldwide. The practice is particularly active in trade mark opposition matters and is also regularly instructed to advise on trade mark portfolio management and filing strategies. Yingyu Wang is the lead partner to note; Bryan Ghows has left to launch his own firm, Ghows LLC, in 2019.
‘The team at Taylor Vinters has an exceptional understanding of the commercial interests and considerations of businesses. They weave this tightly into the advice and work that they produce even without prompting.’
‘Approachable and practical advice. Always swift to deal with queries and to move to a resolution without unnecessary complexity.’
‘Wang Yingyu holds herself to high standards and this can be seen in the high quality of work.’
Supernova Pte Ltd
Aqua Concepts Ltd
Akira Back LLC
Global Beverage Industries Pte
Vox Hibernicis HK Limited
- Managing Supernova’s trade mark portfolio.
- Assisting the Aqua Restaurant Group in management of an IP and trade mark portfolio.
- Advising Global Beverage Industries on the management of its trade mark portfolio in Singapore and Central Asia.
Gateway Law Corporation is particularly strong for cross-border trade mark portfolio management and patent prosecution. Founding director Max Ng Chee Weng also advises on the commercialisation of intellectual property rights and on the preparation of specific contracts in the areas of licensing, franchising and technology law.
Max Ng Chee Weng
Lee & Lee
Led by senior counsel Tan Tee Jim SC, Lee & Lee acts for entities ranging from multinational corporations to major IP rights bodies and small and medium enterprises. The practice handles trade mark registrations, patents, registered designs and domain name issues internationally; trade mark opposition and revocation actions and other intellectual property prosecution and enforcement work. Toh Kok Seng and Zechariah Chan are the other names to notes.
Tan Tee Jim SC
Other key lawyers:
Toh Kok Seng; Zechariah Chan
Ravindran Muthucumarasamy leads the practice at Ravindran Associates, a boutique practice specialising in intellectual property law. The 'very dedicated and agile team' assists client with the management of IP portfolios, including the prosecution of trade marks, patents and designs; commercial IP transactions; data protection and regulatory matters. Sukumar Karuppiah is noted for trade mark enforcement and patent prosecution work, and often represents clients before courts in Singapore and Malaysia.
Other key lawyers:
‘A real depth of local and international knowledge and experience in the field of intellectual property. The partners and their supports are approachable, friendly, diligent and capable of thinking outside the box. They are safe hands and deliver beyond expectation.’
‘Although Ravi is a well-respected IP practitioner, he continues to show curiosity and willingness to explore new issues in IP law. Ravi is also very willing to accommodate client’s needs and expectations to ensure that solutions are practical and effective.’
‘Reasonableness, hard-working but friendly, easy to communicate with and to assist in finding clear solutions to complex problems not just locally but regionally. Ravi Ravindran is an exceptional IP practitioner who is able to put his clients at ease and deliver on his promises.’
- Represented a leading European fashion houses in its appeal to the Court of Appeal regarding the liability of freight forwarders carrying counterfeit goods.
- Represented the patent proprietors in an action before the Singapore High Court under Regulation 23(8) of the Health Products (Therapeutic Products) Regulations 2016 for prospective patent infringement.
RHTLaw Taylor Wessing LLP
Bynd Artisan Pte. Ltd.
Lao Shu Foods Pte. Ltd.
Pu Tien Holdings Pte Ltd
Eliphant Pte Ltd
AlphaBit Consulting Pte Ltd
- Acting for Bynd Artisan Pte. Ltd in prosecution and trade mark portfolio management.
- Advised Lao Shu Foods Pte. Ltd on its trade mark portfolio and the protection of their trade marks in Asia, as well as assisting with prosecutions.
- Assisted with a global trade mark registration for AlphaBit.
- Assisting Gray Tech, an online retail start-up specialising in luxury accessories for mobile and cryptocurrency-related products, with global IP issues.
Withers KhattarWong LLP acts for household brands including Renault F1, Valentino and Vivienne Westwood, as well as charities, artists and galleries in multi-jurisdictional intellectual property disputes and also assists with IP exploitation and arranging tax-efficient licensing. Jim Lim's practice spans copyright, designs, patents, trade marks and trade secrets matters.
‘Withers KhattarWong LLP provided the answers and solutions in advance. They are pro-active and review all angles.’
‘The lawyers work as a team leveraging off each other to provide a comprehensive overview of the advice. Having seen them work as a team, I can see the difference in the results and outcomes. Withers KhattarWong LLP has a logical way of operating. We were able to present the outline of a complex case and it was completely understood and digested. ‘
Sea Group (Formerly Garena Group)
Raffles Medical Group Limited
Wipro Unza Group
Eurostar Group (Dubai, UAE)
Global Schools Holdings Pte. Ltd.
- Acted for Singapore Casket against a former business partner and his related business entities in a dispute over the use of Singapore Casket’s Chinese name.
- Advised the DKSH Group on its acquisition of the consumer goods distribution business, Auric Pacific Group in Singapore and Malaysia for approximately S$218m.
- Acting for the Wipro Unza Group in a series of trade mark oppositions in South-East Asia against Unilever N.V.
WongPartnership LLP's 'knowledgeable and professional' team has a strong offering in transactional IP, advising on the IP aspects of M&A acquisitions, joint ventures and commercial exploitation through franchising. Its team also assist brand owners, including Resorts World Sentosa and Les Amis Group on the management of trade mark portfolios. Department head Lam Chung Nian 'can be counted on to deliver quality and effective legal advice' ; his practice spans contentious and non-contentious IP, media, fintech and data protection. Kylie Peh is another figure to note. Jeffrey Lim left the practice in October 2018.
Lam Chung Nian
Other key lawyers:
‘Knowledgable and professional.’
‘Very strong intellectual property practice headed by Lam Chung Nian.’
‘Lam Chung Nian who heads the IP, Technology & Media practices is outstanding. He has very good in-depth knowledge and expertise in his fields of work and can be counted on to deliver quality and effective legal advice.’
A Menarini Asia-Pacific
Changi Airport Group (Singapore)
Cheetah Mobile, Inc
Cordlife Group Limited
Health Promotion Board, Singapore
- Advised Gordon Dadds International on the transfer of the various IP assets of Ince & Co, following its international acquisition.
- Advised Singcaps on legal structuring and issues relating to its establishment as a new collecting society representing the interests of music composers, lyricists and publishers.
- Advised the National Arts Council on its launch of The Art and Consequence of Collaboration with the Australian Network for Art & Technology and Experimenta, jointly organised by National Arts Council, Culture Academy and Esplanade –Theatres on the Bay.