Intellectual property in Taiwan

Baker McKenzie

Baker McKenzie handles a broad sweep of contentious and non-contentious intellectual property matters for a stellar roster of multinational corporate clients and leading domestic entities alike. Global trademark registrations and patent portfolio reviews are core competencies for the team, while recent highlights include successful dispute rulings and infringement filings on behalf of some of the world’s most well-known companies. Joint practice heads Lindy Chern and Grace Shao frequently advises on and directly handles various IP enforcement matters for clients in the entertainment, tech, and pharmaceutical sectors. Da-Fa Feng’s technical expertise and experience in patent litigation sees him working with an array of tech and material science sector players on high-profile arbitrations and injunctive proceedings. Jo-Fan Yu is recommended for digital infringement and cyber security matters, while Monica Chao concentrates on trademark prosecution and enforcement in the luxury goods sector. All named lawyers are based in Taipei.

Practice head(s):

Lindy Chern; Grace Shao

Other key lawyers:

Da-Fa FengJo-Fan Yu; Monica Chao

Testimonials

‘The team combines patent engineers and lawyers with our engineers, and work fluidly between both disciplines, communicating effectively with clients.’

‘I very much appreciate Da-Fa Feng; a lawyer with an engineering background. He can simultaneously think like an engineer and a lawyer, to consider the best route for clients. Very smart and considerate.’

Key clients

Louis Vuitton Malletier (LVM)

Motion Picture Association International

Eiger

Eiger‘s IP practice is a popular choice among some of the most well-known multinationals in the global market. While traditionally strong among luxury retail groups, consumer goods manufacturers, and financial organisations, the team is increasingly sought out by food and e-commerce companies, and domestic entities requiring assistance cross-strait IP matters, including civil and criminal enforcement and litigation proceedings. In addition to his corporate client base, experienced co-practice head John Eastwood also works closely with the European commission, the US state department, and the Taiwanese government on IP policy reviews. The other joint practice head Heather Hsiao handles trademark enforcements and brand protection initiatives for western fashion houses and blue-chip social media platforms. Trademark specialist Michael Werner is a key contact for the firm’s German language clients, while Wendy Chu is recommended for her experienced in the media and entertainment space.

Practice head(s):

John Eastwood

Testimonials

‘Great service, practical advice.’

‘John and the team are awesome and our go-to people; not just for Taiwan, but also China and Hong Kong.’

 

Key clients

Varian Medical Systems

Conair

Dolby

Amazon

eBay

Miranda Kerr

Tiffany

Whitmor

Schaeffler/FAG

Lenovo

Work highlights

  • Handling opposition matters for eBay.
  • Handling trademark opposition litigation on behalf on Amazon, acting against a major Taiwanese online retailer.
  • Working closely with Tiffany on a variety of brand-protection initiatives in the Taiwan market.

Formosan Brothers Attorneys at Law

Formosan Brothers Attorneys at Law‘s dedicated intellectual property desk advises well-known tech companies and transnational corporations on various issues related to patents, trademarks, and copyrights. Yvonne Lin specialises in fair trade law and licensing matters for clients in material science, and automotive manufacturing, and semiconductor production. Jessie C.Y. Lee handles trademark licensing negotiations for high-tech companies in Taiwan, Japan, and the US, while dual-qualified (US and Taiwan) Yow-Lun Su is noted for his knowledge of counterfeit law. Tim Tsai is recommended for his knowledge of medical and healthcare IP.

Other key lawyers:

Yow-Lun Su ; Tim Tsai

Innovatus Law

Innovatus Law‘s agile IP team works with various public sector entities and well-known corporates on a mix of regulatory and commercial advisory mandates. Practice head Jamie Yang routinely handles cross-border copyright and trademark issues, working with a diverse global clientele from the worlds of content production, publishing, VR, and architecture. Dora Chiang concentrates on fintech and capital market matters, and draws on her public policy background to actively contribute to various ministry of culture projects regarding IP strategy.

Practice head(s):

Jamie Yang

Other key lawyers:

Dora Chiang

Testimonials

‘Everything runs perfectly!’

‘Jamie is very professional in matters related to contracts, such as IP, rights, and risk. She has patience in all our communications, we appreciate it very much.’

‘Jamie and her associates are excellent. They truly adopt a personal approach and provide the service with great efficiency. I worked with them on a feature film development and production project which won top awards in Taiwan. Jamie and her team are able to consider the practice and suggest ways to get around the relationships and commercial and legal interests in the deal.’

‘Jamie stands out as she is very dedicated to her clients, with efficiency and clarity that simply make her one of the best lawyers I’ve ever worked with.’

‘The legal team at Innovatus Law are approachable, competent, and efficient. Professionalism, with high standards of integrity and prompt response for time-sensitive matters.’

‘Very in-depth knowledge of Intellectual Property matters. Can apply legal concern to various industry circumstances.’

‘Jamie Yang is the best lawyer I have worked with. She is extremely capable in the IP and copyright area, and what makes her go above and beyond is that she stands at a higher level, not only consulting for IP and copyright, she also helps us develop IP and copyright legal strategies in combination with our technical and business strategies, which eventually help our company scale up and be more profitable.’

 

Key clients

National Communications Commission

Taiwan Creative Content Agency

Ministry of Culture

FamilyMart Co., Ltd.

Kuai Kuai Co., Ltd.

ENLA Media Limited

Each Other Films

Joint Entertainment International Inc.

Work highlights

  • Advised the Ministry of Culture on drafting rules and potentially creating a digital copyright title ledger for music in Taiwan, reviewing recently promulgated US Music Modernization Act and best practices.
  • Invalidated trademark registrations of an adverse prior shareholder of Kuai Kuai, and obtained an order from the Trademark Office confirming Kuai Kuai as a famous brand name.
  • Prepared the investment agreement between Each Other Films and its key investors, the director’s and producer’s agreements along with all necessary rights agreements for “Gou Mie (English name: Little Big Women),” one of the highest grossing Taiwanese films in 2020.

Jones Day

Jones Day‘s position as one of the foremost IP practices in the market is underpinned by its extensive client base and robust capabilities in multiparty, cross-border engagements. The team is especially strong in patent and trade secret work, both in the domestic market and on mandates concerning US and mainland Chinese entities. The practice is jointly led by three partners: IP law committee director Jason Chen; trademark and privacy policy specialist Po-Chien Chen, and Simon Yu, who regularly handles cross-border copyright infringement matters. Barry Lai is recommended for his knowledge of the software, circuits, and electronic component industries.

Practice head(s):

Jason Chen; Po-Chien Chen; Simon M. Yu

Other key lawyers:

Barry Lai

Key clients

Taiwan Semiconductor Manufacturing Company Limited

Ability Opto-Electronics Technology Co. Ltd

Educational Testing Service

E-Lead Electronic Co., Ltd.

Gudeng Precision Co., Ltd.

Gogoro Taiwan Limited

Work highlights

  • Representing Taiwan Semiconductor Manufacturing Company Limited in connection with potential patent disputes, license agreements, investment projects, protective orders, and with drafting and prosecuting U.S. patent applications.
  • Representing Ability Opto-Electronics Technology Co. Ltd in connection with civil and criminal claims relating to certain high-profile trade secret and copyright matters brought by Largan Precision.
  • Representing Educational Testing Service in civil and criminal copyright infringement cases against infringers.

Lee and Li, Attorneys-at-Law

A deep roster of blue-chip international conglomerates and domestic corporates from a wealth of sectors turn to Lee and Li, Attorneys-at-Law‘s preeminent copyright enforcement and maintenance practice. The team is noted for its expertise in copyright protection and management, licensing, and multi-jurisdictional registration, as well as its frequent participation in public research on IP legislation reform. Dennis Huang assists Taiwanese, mainland Chinese, and major western corporations in a host of licensing issues. Gloria Lu is a key contact for the firm’s high-tech clients, while Roger Chang is recommended for patents and associated commercial strategies. Winona Chen is noted for her knowledge of patent enforcement and fair trade law.

Work highlights

  • Represented Akzo Nobel (China) Investment Co., Ltd. in taking actions against a local company who infringed the client’s photographic work.

Saint Island Group

With offices across the width and breadth of Taiwan, the partner-heavy IP group at Saint Island Group is highly regarded by clients for its broad technical expertise in patent and trademark services, covering a number of highly regulated fields including mechanics, electronics, IT, pharmaceuticals, and material science. The team is especially noted for its robust semiconductor-related practice and cross-border advisory mandates for various government agencies across east Asia. Practice head Tony Chang works with public sector bodies and multinationals on various IP protection matters. Patrick I.C. Yun has extensive knowledge in patent prosecution and validity matters in material science, software, industrial design, and IT. Frank Liu is noted for his work with Japanese financial services clients on IP protection strategy reviews. Julia Hung is recommended on account of her international trademark expertise, including prosecution work. All named lawyers are based in Taipei.

Key clients

INTEL

TSMC

HP

Panasonic

Samsung

Nitto

Denko

NIKE

FORD

IKEA

SWATCH

ADOBE

STARLUX Airlines

BenQ

Sitronix

Work highlights

  • Preparing an analysis report for the Japan Taiwan Exchange Association on IP protection strategies related to repair parts and industrial consumables in Taiwan.
  • Assisting TSMC in patent filing and prosecution in Taiwan and abroad.
  • Advising Starlux Airlines on creating a global trademark portfolio and assisting the client in seeking trademark registration in a wide array of jurisdictions.

Top Team International Patent & Trademark Office

Top Team International Patent & Trademark Office‘s intellectual property group is a strong choice for domestic and international corporates. The sizeable team is highly capable in global patent drafting, assisting clients in Taiwan, Japan, the US, and Europe with thousands of successful filings. Trade secrets and associated licensing strategies are also core competencies. Veteran practitioner Henry C.W Hong focuses on operations management and patent strategy development for semiconductor manufacturers, IT companies, and material handling facilities. Peggy Wu works with a broad spectrum of start-ups, independent inventors, and established companies  on transnational patent and design issues. Lydia Wong QC is noted for her experience in construction, solar power, film production, and apparel. Yung-Ning Hu is recommended for her knowledge of engineering and manufacturing patents.

Other key lawyers:

Yung-Ning Hu

Testimonials

‘Peggy and her team are exceptional attorneys and beyond any doubt the best IP team in Taiwan.’

 

Tsai Lee & Chen Patent Attorneys and Attorneys at Law

Fielding a sizeable, multilingual team, Tsai Lee & Chen Patent Attorneys and Attorneys at Law advises a diverse roster of SMEs and blue-chip corporates alike from the worlds of semiconductors, IT, telecoms, engineering, and life sciences. Numerous Fortune 500-listed companies turn to Crystal Chen for assistance on the full gamut of patent, copyright, and trademark issues. Jesse K Y Peng  is a highly experienced barrister who opines on IP infringements and patent right enforcement options for domestic and foreign companies. US-qualified patent agent Candy K Y Chen is a central figure in the firm’s patent administration practice, while the dual-qualified (US and Taiwan) Nick J C Lan is noted for his knowledge of international and Taiwanese IP laws.

Other key lawyers:

Jesse K Y Peng ; Nick J C Lan

Testimonials

‘We have worked with Candy for at least 11 years, and she has been consistently professional and competent in every case. Jesse Peng is also an excellent attorney.’

Key clients

Applied Materials

Corning

Qualcomm

Gogoro

Rimowa

TSMC

Quanta Computer

AU Optronics

Hitachi Chemical

ASUSTek Computer Inc.

Ferrari N.V.

LVMH (Moët Hennessy Louis Vuitton) Group

Work highlights

  • Representing Rimowa at the appellate court, persuading the court to accept a post-sale confusion theory in a case claiming unfair competition against a well-known symbol of goods.
  • Successfully represented Celine & Givenchy in a copyright infringement claim and damages award before the Supreme Court.
  • Advised Takeda Pharmaceuticals on the cancellation of a similar trademark registration.

Tsar & Tsai Law Firm

The intellectual property practice of Tsar & Tsai Law Firm is routinely engaged by a myriad of high-profile corporate clients seeking patent and trademark advice.  The team is experienced in the full-spectrum of non-contentious IP work, including copyrights, trade secrets, licensing, and anti-piracy strategies. The highly experienced Jennifer Lin acts for public and private sector entities, representing various government in IP negotiations with foreign partners, and obtaining patent approvals for pharmaceutical companies. Joyce Ho assists high-tech clients with IP rights protection, licensing agreements, and customs issues concerning counterfeit goods. Jeanne Wang is recommended for multi-jurisdictional IP matters.

Practice head(s):

Joyce Ho

Other key lawyers:

Jennifer Lin; Jeanne Wang

Winkler Partners

With a client list made up of many prominent global bands, Winkler Partners is routinely engaged on patent and trademark-related instructions by leading companies from the worlds of luxury goods, entertainment, software, semiconductors, and pharmaceuticals. The team is experienced in securing geographic indications and registering non-traditional trademarks while cooperating with all the relevant regulatory authorities. Peter Dernbach assists foreign and local clients in obtaining and licensing their IP rights, with recent highlights including region-wide trademark applications and clearances for major e-commerce sites. In addition to her far-reaching contentious practice, Christine Chen also coordinates international patent applications for Taiwanese clients with foreign operations. Ling-Ying Hsu is recommended for copyright and trade secret protection.

Practice head(s):

Peter Dernbach

Other key lawyers:

Christine Chen; Ling-Ying Hsu

Zoomlaw Attorneys-At-Law

Headquartered in New Taipei City – and with branches in Hsinchu and Suzhou – Zoomlaw Attorneys-At-Law‘s broad regional footprint makes it ideally placed to advise Taiwanese and PRC clients on a litany of global trademark and patent filing requests. The group is noted for its technically savvy bench, fielding a number of patent engineers whose sector expertise ranges from semiconductors and integrated circuit designs to power generation, telecoms, and nanotechnology. In recent months, the team has been retained by a growing  number of international tech companies to handle all of its patent applications in the cross-strait region. Based in the firm’s New Taipei City headquarters, managing partner Kuo-Hua Fan is a highly experienced consultant and arbitrator in cross-strait matters, while also handling global anti-counterfeiting actions and risk management strategies regarding international trading. Melody Foo and Ling-Hao Kuo  – also based in New Taipei City – are similarly recommended.

Practice head(s):

Kuo-Hua Fan

Other key lawyers:

Melody Foo; Ling-Hao Kuo

Key clients

Tingyi (Cayman Islands)Holding Corp

WEIYU TECH CO.,LTD.

Innodisk Corporation

3R Life Sciences Corporation

CHIPMAST AUTOTRONIX CO., LTD.

Institute of Nuclear Energy Research of Atomic Energy Council (INER)

Chanble Co. Ltd.

Face to Face Noodle House

National Taiwan University