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

5TH FLOOR, ALEXANDRA HOUSE
18 CHATER ROAD, CENTRAL
HONG KONG
Hong Kong
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Annie Tsoi

Work Department
Intellectual Property practice group
Position
Partner, Co-head of Intellectual Property practice group, Head of China IP 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
Hong Kong > Intellectual property
Deacons operates a knowledgeable IP team, recognised for providing extensive counsel in ‘a pre-emptive manner’, ensuring a highly proficient service to its notable client list. Key areas of expertise include handling complex IP litigation, and the team is highly renowned within the entertainment and media sector. Co-headed by Annie Tsoi and Catherine Zheng, the group is further spearheaded by the ‘exceptionally capable’ Charmaine Koo. As head of IP commercial and litigation, Koo is recommended for handling complex court litigation and data privacy issues for leading companies, alongside being a leading entertainment lawyer. Additionally, Jeffrey McLean is regularly instructed on patent prosecution and ligation. Theresa Luk handles IP litigation and commercial transactions. Patsy Lau has extensive knowledge in protecting trade mark portfolios throughout the region.
China > Intellectual property: foreign firms
Based in Hong Kong, Deacons often advises international clients on IP matters involving mainland China. The ‘excellent’ team has a great track record in IP litigation, handling a mix of trade mark and patent matters. Annie Tsoi helms the IP group and advises Hong Kong and international clients on the protection, enforcement, and exploitation of IP rights. Co-lead Catherine Zheng handles litigation, enforcement and portfolio management for trade marks and copyrights, while Dora Si advises clients on brand protection and anti-counterfeiting strategies.
Lawyer Rankings
Top Tier Firm Rankings
- Commercial, corporate and M&A: Leading independent Hong Kong Law Firms
- Intellectual property
- Investment funds
- Labour and employment
- Real estate
Firm Rankings
- Construction
- Fintech and financial services regulatory
- Private Client and Family
- Antitrust and competition
- Capital markets (debt)
- Capital markets (equity)
- Corporate (including M&A)
- Data protection and cyber security
- Dispute resolution: litigation
- Insurance
- TMT
- Banking and finance
- Dispute resolution: international arbitration