China and SARs: Hong Kong

A lively commercial hub and strategic conduit into the Chinese market, Hong Kong is a vital jurisdiction for many of the world’s most recognisable brands. As such, a plethora of prominent international firms maintain strong teams of IP lawyers in the special administrative region, catering to the full range of trademark needs. However, many home-grown independent firms provide a persuasive alternative, offering expert counsel informed by a nuanced understanding of local conditions.

Firms: enforcement and litigation

1
Baker McKenzie
Bird & Bird
Deacons
Hogan Lovells
Jones Day
Wilkinson & Grist
2
DLA Piper Hong Kong
Robin Bridge & John Liu
Rouse Legal
Simmons & Simmons

Firms: prosecution and strategy

1
Baker McKenzie
Deacons
Hogan Lovells
Wilkinson & Grist
2
Norton Rose Fulbright Hong Kong
Reed Smith Richards Butler
Robin Bridge & John Liu
Simmons & Simmons
Spruson & Ferguson
Vivien Chan & Co
Baker McKenzie
The Hong Kong office of global titan Baker McKenzie “performs an outstandingly effective trademark service”. Drawing on the firm’s unparalleled support structures, the local team executes brilliantly on the most varied and demanding instructions. Heading the IP group in Hong Kong and the mainland, Loke-Khoon Tan also marshals a specialist unit dedicated to fashion and luxury goods – a sector in which he has earned a glowing reputation. Leading the trademark team is Maria Smith, a sage portfolio manager with a keen instinct for the commercial value of intangible assets. Another key player is Christopher Smith, who has a 360-degree view of the Chinese legal landscape and operates seamlessly across the border. Completing this illustrious set, Shih Yann Loo is a cogent advocate, skilled in local and regional rights enforcement.
Bird & Bird
With a presence in Hong Kong for more than two decades, Bird & Bird cuts an impressive dash in the IP marketplace. While a subsidiary team in Beijing provides efficient trademark registration services, the professionals across the water focus on judicious strategic counsel and robust rights enforcement. Asia-Pacific IP group captain Matthew Laight is steeped in regional knowledge and deftly coordinates complex trans-jurisdictional briefs. Close ties with Chinese anti-counterfeiting agencies make him a valued ally in the fight against fakes. Another pillar of the practice, Alison Wong, is both a formidable litigator and a reassuring presence in licensing and transaction negotiations. She heads the life sciences group and commands immense respect for her work with pharmaceutical and healthcare brands.
Deacons
Commended for its “high-quality advice, depth of experience and smooth-running service”, Deacons provides top-notch protection to 50 of Interbrand’s 100 most valuable global brands. “Knowledgeable, responsive and commercially minded”, Charmaine Koo is one of Hong Kong’s most influential figures. A previous stint at a prominent media company has made her a star performer where entertainment law intersects with trademarks. Koo recently prevailed in the high-profile Voice of China dispute and also clinched a courtroom victory for tea distributor Tsit Wing. She co-heads the IP group alongside Annie Tsoi, a discerning adviser with 20 years’ experience under her belt. “Clear, pragmatic and responsive”, Vivian Poon draws praise for her adept prosecution work and flair for non-traditional trademarks; while Patsy Lau shines on trademark audits and brand management strategy. Sharp litigator Catherine Zheng has a pristine track record at China’s Supreme People’s Court; while on a recent instruction for JAC Capital, she demonstrated her talent for advising on IP-rich transactions. Another anchor of the team is Rodney Goh, a tried and trusted brand manager with a slew of big-name patrons.
DLA Piper Hong Kong
Part of an extensive regional network with bases in Beijing, Shanghai, Tokyo, Bangkok and Singapore, DLA Piper’s Hong Kong contingent provides sterling trademark services to prestigious clients with interests throughout Asia-Pacific and beyond. Versatile soft-IP lawyer Edward Chatterton is a master of prosecution, commercialisation and enforcement. Profoundly cosmopolitan, he is a go-to for complicated cross-border campaigns spanning Europe, the United States, China and Hong Kong; he recently impressed in a global anti-counterfeiting campaign for ASOS. The team’s other star quarterback is Horace Lam, co-head of the Asian IP practice and a rainmaker in the Greater China team; he adroitly navigates local brand protection obstacles for major multinationals.
Hogan Lovells
Hong Kong is the nerve centre of multinational player Hogan Lovells’ thriving Asian IP practice. Admired by competitors in the territory, the team offers the full spectrum of contentious and non-contentious brand protection services to a host of household names. A stand-out performer in must-win infringement suits, the cool-headed Henry Wheare is the lynchpin of the group. Venerable professional Kenny Wong is a further string to its bow; his deep trademark know-how makes him a much sought-after adviser.
Jones Day
Jones Day’s Hong Kong office is the pivot of its operations in Greater China, housing four of its six partners in the region. Upholding the firm’s reputation for top-tier contentious work, Chiang Ling Li is a hot-shot enforcer who recently secured substantial damages from counterfeiters for Weir Minerals. The “invaluable adviser” combines “a nuanced business sense with a knowledge of Chinese regulations”. Her right-hand man is Haifeng Huang, one of the country’s most seasoned litigators, with a history of representing large US and Chinese concerns in high-stakes disputes; he lately won a key High Court ruling for Patron Spirits. Far-sighted strategist Peggy Cheung has an aptitude for business-savvy brand management and IP-rich deals. She works hand in hand with Jones Day’s prosecution team in Beijing. Supported by close cooperation with their colleagues throughout East Asia and Australasia, Marks & Clerk’s trademark professionals win warm plaudits for their gilt-edged prosecution services. Few have a more comprehensive understanding of the intricacies of brand protection than Sandra Gibbons, a shrewd portfolio manager and former president of the Institute of Trademark Practitioners, active in Hong Kong for more than 20 years. “Practical and efficient, with a firm grasp of soft-IP matters”, Simon Speeks is another stalwart in non-contentious situations, known for his nimble and intelligent counsel on transactions. The entertainment, food and beverages sectors are happy hunting grounds for him. US high flier Mayer Brown JSM is an attractive option for major North American and European companies seeking insightful guidance through the brand rights landscape in Greater China. Offering the full suite of trademark services, it has a glittering client roster featuring the likes of Alibaba, adidas, Prada, Chanel and Jack Daniels. Co-leader of the worldwide IP practice, the “energetic and dynamic” Gabriela Kennedy devises creative Asian brand strategies and knows how to secure favourable results in company name hijacking scenarios. She recently obtained a crucial interlocutory injunction for Hang Seng Bank and got an IP-rich licensing agreement inked for Fung Retailing. Drawing on useful ancillary know-how in advertising and marketing, Rosita Li is a similarly effective tactician and a potent force in disputes. Adding further strength to the team is Benjamin Choi, whose splendid soft-IP prosecution practice is reinforced by a keen grasp of unfair competition law and broader commercial issues.
Norton Rose Fulbright Hong Kong
With an extensive web of offices and experts stretching around the globe, Norton Rose Fulbright provides a stellar IP offering to clients whose rights need to be protected and enforced in multiple jurisdictions. It matches an international perspective with a razor-sharp understanding of local commercial and legal conditions, to superb effect. Typifying this approach is the Asian-born Justin Davidson, who has a real affinity for the priorities of multinationals and how best to serve these in the Chinese context. Hailed by peers as “a safe pair of hands”, he is a distinguished porfolio manager with a particularly loyal following in the financial and banking sectors.
Reed Smith Richards Butler
Renowned commercial outfit Reed Smith Richards Butler has cultivated an impressive trademark team in Hong Kong. The strong regional networks it has forged allow it to operate proficiently throughout Greater China on behalf of a panoply of prestigious brand owners. Leading the line is the versatile and experienced Steven Birt, admired equally for his penetrating strategic insight and poised courtroom performances. A deep font of IP wisdom, he has carved out a real niche in the media, IT and entertainment industries.
Robin Bridge & John Liu
Hong Kong-based general practice Robin Bridge & John Liu has earned an enviable reputation for its trademark offering, not least thanks to its seamless management of the portfolios of mega-brands such as Richemont. With a focus on entertainment, toys and fashion, it recently masterminded a worldwide prosecution programme to expand legal protections for client Bruce Lee Enterprises. These efforts are aided by its own filing agency in Beijing. “An outstanding player in Greater China trademark matters”, all-rounder Anthony Tong provides strong leadership to the IP team. “Very client focused and business savvy, he goes the extra mile and gets the right result.” Master tactician and non-contentious specialist Anthea Loo is assisting Tiffany & Company in a bid to register the jurisdiction’s first-ever colour mark.
Rouse Legal
UK-based firm Rouse Legal has established solid footholds in Hong Kong, Taiwan, Macau and China, and is a trusted guide for companies seeking to establish themselves in the East Asian marketplace. A dab hand at multi-jurisdictional filings, the firm is nonetheless best known for its robust enforcement activities, particularly in shadow company litigation and anti-piracy campaigns. At the vanguard of these efforts is Adelaide Yu, whose close links with Hong Kong customs authorities make her a formidable opponent of copycats. She is currently working against alleged infringers for Intel and Babyzen. Multi-talented soft-IP practitioner Chris Vale skilfully handles contentious and non-contentious work for a slew of super-brands, including Mars, Coca-Cola, Red Bull and Google.
Simmons & Simmons
With 70 dedicated lawyers around the world, full-service giant Simmons & Simmons places great emphasis on its IP offering. Underpinned by the firm’s vast resources and expertise, its trademark professionals provide an outstanding A-to-Z service to a multitude of transnational clients. Dividing his time between London and Hong Kong, John Slater effortlessly dispatches all manner of international prosecution, rebranding and advertising briefs. His strategic vision is appreciated by the Noble Group, Hong Kong Dragon Airlines and YGM, whose portfolios he handles. Slater’s broad range of talents also includes litigation and managing IP-heavy transactions. Streamlined boutique Simone Intellectual Property Services maintains a position among Hong Kong’s trademark elite, providing tailor-made services to a host of established brands and young, innovative players. Immersed in Chinese IP law since the 1980s, name partner Joseph Simone is an authority on anti-counterfeiting and a clear-sighted brand protection adviser, with in-depth knowledge of online infringements and bad-faith trademark filings. Having previously plied her trade for a range of big commercial firms, the commercially attuned Helen Tang makes light work of the meatiest instructions.
Spruson & Ferguson

In October 2016, Ella Cheong Hong Kong and Ella Cheong Beijing were acquired by Spruson & Ferguson, a leading name in IP practice in the Asia-Pacific region. Astute portfolio manager and contentious strategist Coral Toh is a key contact in Hong Kong.

Vivien Chan & Co
“Thoroughness, responsiveness and deep expertise” are hallmarks of Vivien Chan & Co’s IP offering, which proves wildly popular with foreign and domestic brand owners alike. Heading up the “excellent team”, founder Vivien Chan is a revered figure in Asia-Pacific legal circles; her trademark insight is enhanced by a firm grounding in the wider dimensions of commercial law.
Wilkinson & Grist
An independent firm with over half a century’s experience in Hong Kong, Wilkinson & Grist has won ardent fans among foreign associates with its “truly 24-hour service, quick responses and clear advice”. A flair for internet law makes it a salient option when online matters overlap with brand rights issues. Marshalling the team is Yvonne Chua, a shining star in trademark, copyright and advertising law, with penetrating knowledge of the Chinese legal environment. “Always extremely well prepared”, prosecution whizz Andrea Fong operates smoothly across East Asian borders.

Individuals: enforcement and litigation

Yvonne Chua - Wilkinson & Grist
Justin Davidson - Norton Rose Fulbright Hong Kong
Gabriela Kennedy - Mayer Brown JSM
Charmaine Koo - Deacons
Matthew Laight - Bird & Bird
Joseph T Simone - SIPS – Simone Intellectual Property Services Asia Ltd
John Slater - Simmons & Simmons
Christopher Smith - Baker McKenzie
Loke-Khoon Tan - Baker McKenzie
Annie Tsoi - Deacons
Chris Vale - Rouse Legal
Henry Wheare - Hogan Lovells
Edward Chatterton - DLA Piper Hong Kong
Haifeng Huang - Jones Day
Chiang Ling Li - Jones Day
Rosita Li - Mayer Brown JSM
Shih Yann Loo - Baker McKenzie
Helen Tang - SIPS – Simone Intellectual Property Services Asia Ltd
Anthony Tong - Robin Bridge & John Liu
Alison Wong - Bird & Bird
Barry Joseph Yen - SKYS So Keung Yip & Sin Solicitors
Adelaide Yu - Rouse Legal

Individuals: prosecution and strategy

Edward Chatterton - DLA Piper Hong Kong
Peggy Cheung - Jones Day
Andrea Fong - Wilkinson & Grist
Rodney Goh - Deacons
Patsy Lau - Deacons
Maria Smith - Baker McKenzie
Anthony Tong - Robin Bridge & John Liu
Catherine Zheng - Deacons
Steven J Birt - Reed Smith Richards Butler
Vivien Chan - Vivien Chan & Co
Benjamin Choi - Mayer Brown JSM
Sandra Gibbons - Marks & Clerk Hong Kong
Horace Lam - DLA Piper Hong Kong
Chloe Lee - Chloe Lee & Co
Rebecca Lo - Rebecca Lo & Co
Anthea Loo - Robin Bridge & John Liu
Vivian Poon - Deacons
John Slater - Simmons & Simmons
Simon J Speeks - Marks & Clerk Hong Kong
Coral Toh - Spruson & Ferguson

Luminaries

Kenny KS Wong - Hogan Lovells

China and SARs: Hong Kong: The Bar

Senior counsel

Andrew Liao - Andrew Liao SC Chambers
Winnie Tam SC - Des Voeux Chambers
John Yan SC - Counsel's Chambers

Junior counsel

Philips Wong Bun Fai - Counsel's Chambers
Douglas Clark - Gilt Chambers
Sebastian Hughes - Prince's Chambers
Felix Ho Ming Pao - Counsel's Chambers
Colin Shipp - Counsel's Chambers
Ling Chun Wai - Des Voeux Chambers

Senior counsel

Solo practitioner Andrew Liao SC is a revered advocate and authoritative voice on IP matters. Hong Kong Bar Association chair Winnie Tam of Des Voux Chambers is a seasoned IP specialist who can plead a case with the best of them. Known for his incisive analysis and rigorous argumentation, John Yan SC of Counsel’s Chambers is another outstanding barrister.

Junior counsel

The perceptive Douglas Clark of Gilt Chambers has a distinguished history of advocacy in major IP disputes; his shrewd counsel on mainland Chinese matters is widely respected. Felix Ho Ming Pao at Counsel’s Chambers impresses with his polished courtroom performances and careful attention to client priorities. Peers praise the dedication and tenacity of Sebastian Hughes of Prince’s Chambers. Excelling on issues of the greatest complexity, Des Voux Chambers’ Ling Chun Wai is a persuasive choice for brand owners. The unflappable Colin Shipp of Counsel Chambers stands out for the consistent quality of his work. Thoroughness and attention to detail are hallmarks of Phillips Wong Bun Fai’s counsel.

Close

Register for more free content

  • Read more World Trademark Review blogs and articles
  • Receive the editor's weekly review by email
Register now  
Issue 69