Annie Tsoi > Deacons > Hong Kong, Hong Kong > Lawyer Profile

Deacons Offices

Deacons
5TH FLOOR, ALEXANDRA HOUSE
18 CHATER ROAD, CENTRAL
HONG KONG
Hong Kong
Visit website 852 2825 9211 852 2810 0431

Annie Tsoi

Annie Tsoi photo
+852 2825 9255 annie.tsoi@deacons.com View profile

Work Department

Intellectual Property practice group

Position

Partner, co-head of Intellectual Prorperty practice group

Career

Annie is Co-Head of Deacons’ Intellectual Property Department and Head of China IP Practice Group.

Annie is qualified in Hong Kong and England and Wales.  She holds an LLB (Hons) from the University of Hong Kong.

Annie has more than 25 years’ experience in advising on all aspects of intellectual property work in China and on the unique challenges arising from doing business there.  Annie has advised many major Hong Kong and international clients on strategic issues in Mainland China relating to the protection, enforcement and commercial exploitation of intellectual property rights including managing complex intellectual property portfolios and she represents some of the world’s leading companies in the luxury goods, cosmetic, pharmaceutical, entertainment, fashion and electronics industries.

Annie has advised extensively on the IP aspects of acquisition and restructuring of businesses including technology transfer, licensing and cooperation issues, technology development and improvement.  Annie also advises on Internet-related regulations and domain name disputes.

Annie is an active member of many committees and serves as the First Deputy Secretary General, Assistant Secretary General and Chairman of Independent Members of The International Association for the Protection of Intellectual Property (AIPPI) and is also on the BIP Asia Steering Committee (2021), HKTDC and the IP Committee of the Law Society of Hong Kong.

Annie is the recipient of many awards and accolades including recognition by Legal 500 as a Recommended Lawyer for Intellectual Property (Foreign Firms, China) (2021), by World Trademark Review 1000 (WTR 1000) as a WTR Global Leader: Hong Kong (2021) and a Gold Tier Individual in Prosecution and Strategy in Hong Kong (2019 – 2021), and by Managing IP as a Trade Mark Star in China (2017 – 2021).

Highlights

  • Advised a Silicon Valley semiconductor company (a leading provider of highly integrated semiconductor products that enable intelligent processing for networking, communication and the digital home), on all IP-related issues in a cross-border asset acquisition and migration of R&D employees
  • Advised a UK company on cross-border commercial acquisition for the exploitation of R&D facilities in China
  • Advised a US IT solution provider serving the global hospitality industry on cloud computing and relevant data privacy issues in China
  • Advised a well-known Swiss watch brand in connection with worldwide trade mark portfolio, trade mark infringement, infringing domain names and cyber-squatting cases
  • Advised one of Hong Kong’s largest public institutions on trade mark infringement and unfair competition matters
  • Advised a major Italian sportswear company on a re-financing scheme based on IP rights in the Greater China region, trade mark infringement and unfair competition cases in China
  • Represented leading German electronics and chemical company in infringing company names cases
  • Represented Hong Kong, US and Swiss companies in relation to mergers and acquisitions and the transfer of IP rights

Languages

English
Cantonese
Mandarin

Memberships

First Deputy Secretary General, Assistant Secretary General and Chairman of Independent Members, The International Association for the Protection of Intellectual Property (AIPPI)

Member, The BIP Asia Steering Committee (2021), HKTDC

Member and IP Committee, The Law Society of Hong Kong

Member, The Law Society of England and Wales

Member, The Asia Patent Attorneys Association (APAA)

Member, The Hong Kong Institute of Trade Mark Practitioners (HKITMP)

Adjunct Associate Professor, Faculty of Law, The University of Hong Kong

Jurisdiction Council Member for Hong Kong and Co-Chair of the Organising Committee of the 2015 Annual Meeting, The Inter-Pacific Bar Association (IPBA)

Education

LLB (Hons), University of Hong Kong

PCLL, University of Hong Kong 

Lawyer Rankings

China > Intellectual property: foreign firms

Deacons fields a deep bench comprising patent attorneys qualified in Australia, China, Europe and the UK, all of whom are well-versed in large trademark portfolios and prosecution matters. Headquartered in Hong Kong, the team further draws on support from representative offices in Beijing, Shanghai and Guangzhou. The dual-qualified Annie Tsoi (China and the UK) advises on all aspects of IP and is an advisor to leading global companies in the luxury goods, cosmetic, pharmaceutical, entertainment, fashion and electronics sectors. Tsoi co-heads the practice with the triple-qualified Catherine Zhen (New York, Canada and China) who specialises in China IP protection strategy and contentious matters. Other recommended individuals include Dora Si, whose expertise further spans setting up e-platforms and partnerships with local e-commerce platforms for foreign clients, and Tracy Li, who was promoted to partner in January 2023.

Hong Kong > Intellectual property

Drawing upon a deep understanding of the law and the relevant commercial drivers, Deacons provides a ‘market-leading service’ to global, Asian and Hong Kong-based IP-rich companies across a broad swathe of their contentious and non-contentious IP requirements. Patsy Lau excels in maintaining, developing and enforcing extensive IP portfolios throughout the region and is recognised for her exceptional trade mark expertise both by clients across a range of sectors, and by peers, for example, through her former role as President of the Hong Kong Institute of Trade Mark Practitioners. Drawing on strong legal and technical knowledge, Jeffrey McLean is at the forefront of the firm’s patent prosecution work, helping to proactively manage multinational portfolios in consumer, electronic, biochemical and mechanical technologies in China and around the Asian region, particularly South East Asia. Theresa Luk was recently promoted to partner in recognition of her multi-faceted practice, which includes IP litigation and commercial expertise, including for clients in the media and entertainment space. The vastly experienced Charmaine Koo also maintains a vibrant practice in her role as a consultant, handling trade mark infringement matters, commercial and data privacy issues, as well as compliance and regulatory issues relating to marketing and advertising. Annie Tsoi and Catherine Zheng co-head the team.

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Top Tier Firm Rankings

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