China and SARs: Hong Kong

Hong Kong is a major commercial hub in Asia and serves as a gateway to the Chinese market, which is becoming increasingly important for rights holders. As a result, Hong Kong is an essential place in which to maintain a high degree of brand visibility for international companies – especially those in the fashion and luxury space. The IP legal situation in the country is stable; everybody is looking towards the implementation of the Madrid Protocol, which is expected in 2019 and looks set to transform the market.

Firms: enforcement and litigation

1
Baker McKenzie
Bird & Bird
Deacons
Jones Day
Mayer Brown JSM
Wilkinson & Grist
2
DLA Piper Hong Kong
Ella Cheong & Alan Chiu, Solicitors & Notaries
Hogan Lovells
Robin Bridge & John Liu
Rouse Legal
Simmons & Simmons LLP
Stephenson Harwood

Firms: prosecution and strategy

1
Baker McKenzie
Deacons
Mayer Brown JSM
Wilkinson & Grist
2
Hogan Lovells
Marks & Clerk Hong Kong
Norton Rose Fulbright Hong Kong
Reed Smith Richards Butler
Robin Bridge & John Liu
Spruson & Ferguson
Stephenson Harwood
Baker McKenzie
Mighty international trademark player Baker McKenzie serves up integrated global solutions to even the most perplexing brand protection and enforcement conundrums. Best known for its efficient and cost-effective caretaking of portfolios through the utilisation of its highly sophisticated proprietary management software, the firm also delivers in the fight against fakes and sets the right tone in civil infringement litigation as well. The Hong Kong and China contingent provides gold-standard guidance to many multinationals, but also serves as an Asia-Pacific hub for Hong Kong-based companies. Loke-Khoon Tan holds the IP group’s tiller with a steady hand. “One of Hong Kong’s IP pioneers”, his name resonates among the luxury goods crowd. A tech-savvy operator, he has a wealth of internet, social media and domain name expertise for patrons to draw on. Maria Smith takes charge of the trademark practice and leads by example, holding her team to the highest standards of quality and efficiency. Other names for the address book are Shih Yann Loo, a cross-border IP rights enforcer, and Christopher Smith, a veritable authority on all things related to China.
Bird & Bird
Bird & Bird’s integrated China and Hong Kong IP group is home to six partners, one counsel and close to 40 professionals in total. Acting as shield and sword, the unit is equipped to handle anything a brand owner can throw at it. The Bird & Bird professionals cultivate refined sectoral knowledge, which puts them in a position to offer commercially oriented advice that in-house counsel can present to the C-suite. Matthew Laight – who helms the Asia-Pacific IP group – is a high-technology buff who melds patent and trademark expertise in a way that is compelling for big electronics brands. His seamless handling of multi-jurisdictional disputes amplifies his appeal yet further. Alison Wong is the life sciences and healthcare guru in Hong Kong; her broad portfolio management, monetisation and litigation expertise means she can advise clients holistically. Lately, she has been assisting a leading energy drink company with civil and criminal enforcement.
Deacons
The most famous Hong Kong law firm, full-service Deacons is a major player in the IP arena. Its large, highly specialised, seven-partner, 24-lawyer team keeps the firm at the top of the local filing charts and well able to handle conflicts, whenever they flare up. The market feedback speaks for itself: “In prosecution, the team reliably secures the broadest protection and provides deeply strategic advice that helps you avoid problems down the road.” Clients seeking IP protection are spoilt for choice in terms of experienced partners; the “highly responsive and commercial” Vivian Poon is a top choice when it comes to registering non-traditional marks; “top notch” Rodney Goh is the person to call for “strategic, practical and clear advice” on pan-continental trademark briefs and is “extremely knowledgeable”; Patsy Lau works miracles when devising portfolio structures that maximise IP value. The litigation section of the firm is also top class, but Catherine Zheng and Charmaine Koo are the standout stars. “Zheng is an elite expert on trademark and domain name matters in China and can be relied on completely. She is highly responsive and produces work and results that are consistently excellent.” Koo scores highly for “advice that goes straight to the heart of the matter”. A master litigator who has fought IP battles all the way up to the Court of Final Appeal, she is also an authority on entertainment law. She co-heads the IP department with Annie Tsoi, who is the main Deacons expert on China IP issues.
DLA Piper Hong Kong
DLA Piper has an impressive geographic footprint in this part of the world with 14 offices – seven in Asia and seven in Australia and New Zealand – all of which work harmoniously to build watertight regional IP protection for multinational brand owners. The firm also covers countries across the region which other firms do not and has cultivated a reliable associate network in many emerging markets. Leading the crew in Hong Kong is Edward Chatterton, a touchstone lawyer for well-known brands, including McDonald’s, AOL and Fitbit. “Edward is great at explaining how the IP system works in China and comparing and contrasting it with the system in Europe. A really nice guy, he’s great to work with and easy to be around – someone you can message anytime. He really puts himself into his clients’ shoes and makes you feel like you’re part of the action.”
Ella Cheong & Alan Chiu, Solicitors & Notaries

Ella Cheong & Alan Chiu entered the market in October 2016 but, despite being a relative newcomer, the full-service IP boutique is already a household name due to the stature of its founding partners. An IP legend, “Ella Cheong is a first-rate professional with many notable accomplishments to her name. She possesses profound knowledge of patent and trademark law and is a strategic visionary in the most complex cases”. The “perfect lawyer”, Alan Chiu acts for a striking array of luxury brands and famous multinationals operating in many sectors. Sources call him “second to none in the anti-counterfeiting and enforcement area” and praise his “sophisticated tactics and business-relevant guidance”. “He goes the extra mile to devise and execute practical solutions when you’re in difficult waters and ensures that his team of lawyers and paralegals offer the most cost-effective services. He puts his clients’ interests ahead of everything and sees issues from a global perspective.”

Hogan Lovells
Offering “a broad spectrum of high-quality contentious and non-contentious services for an impressive client base”, Hogan Lovells is a sensible choice for multinationals. Its Hong Kong bureau serves as the epicentre of its Asia IP practice and is home to Kenny Wong. The multi-award winning counsel has a complete understanding of IP and IT law, as well as an enviable practice in the gaming and entertainment areas. Generous with his knowledge, he frequently takes to the podium as a lecturer and speaker on a range of IP topics.
Jones Day
Hugely respected for its hard-hitting litigation practice, Jones Day is engaged by multinationals on inbound China litigation, as well as by Chinese companies on outbound cases. When a shrewd performance is needed in a do or die IP case, clients reach out to Chiang Ling Li and Haifeng Huang, two of the most seasoned and tenacious IP enforcers in Asia. Peggy Cheung engages in dispute resolution and gets exceptional results, but also undertakes a wide variety of IP transactional work.
Mayer Brown JSM
Gold-tiered Mayer Brown JSM boasts an expansive IP practice in Asia; its expert panel of sophisticated professionals deliver crisp results on the full range of contentious and non-contentious trademark matters. During 2016-2017, the litigation section has accrued a string of high-profile wins, especially while acting on behalf of a rapidly increasing number of luxury goods and fashion brands in the fight against fakes. Meanwhile, it has been business as usual for the firm when it comes to representing globally famous brands with large portfolios. Gabriela Kennedy is a resolute leader of the Asian prosecution practice and co-head of the firm’s global IP practice. A perspicacious brand strategist with whetted enforcement skills – and a leading light on alternative dispute resolution – she is an IP doyenne. Fellow partners Rosita Li and Benjamin Choi are respected as “immensely practical lawyers” who bring versatility and transactional expertise to the practice respectively.
Robin Bridge & John Liu
Intellectual property is a central pillar of Robin Bridge & John Liu’s full-service offering. Its dynamic team obtains, safeguards, monetises and enforces rights for a swathe of prestigious brands from Europe and other parts of the world. The side’s unique selling point is the presence of managing partner Anthony Tong, who garners some of the most effusive client feedback of anyone in Hong Kong. “Anthony consistently provides a first-class service – he is responsive, commercial, proactive, efficient and effective.” “It is very reassuring to have him in your corner, due to his vast experience, profound knowledge and positive attitude.” He has taken the lead on a number of significant projects recently; he has advised the cigar industry in Hong Kong on a joint submission to the Hong Kong Government and Legislative Council regarding the proposal to increase the health warning coverage on cigar packaging and he is also working with the Global Anti-counterfeiting Group and Business Action to Stop Counterfeiting and Piracy to look at the IP implications of the One Belt One Road initiative. He is also bringing new clients to the firm, for example, Zwilling JA Henckels recently entrusted the team with its Hong Kong portfolio. His fellow partner Anthea Loo is also incredibly popular: “Anthea is an invaluable adviser for Hong Kong and China matters and gives prompt advice and clear explanations.”
Rouse Legal
Rouse is a formidable force in Hong Kong and China – its branch in the former was one of its first posts outside the United Kingdom and has served as a reliable platform for its dynamic Asian IP practice over the years. Few firms have as much skill and knowledge as Rouse when it comes to protecting intellectual property in emerging Asian markets – and few are as dextrous on both the portfolio and enforcement sides, Among its many unique capabilities, the set is an authority on shadow company litigation. China-Hong Kong infringement litigation is something that Adelaide Yu knows all about; she has lately been getting results for Babyzen on this front. In Hong Kong, she has provided sterling representation on civil and criminal cases for Swedish watch company Daniel Wellington and handled Kimberly-Clark Worldwide’s shadow company issues. “Adelaide is remarkably forward-thinking and an experienced international brand strategist who is responsive, enthusiastic and easy to work with. Long-time Vietnam and Hong Kong country manager, Chris Vale is another key figure in Rouse and an important name to have on speed dial. He thinks like an in-house lawyer and brings a commercial eye to the practice.
Simmons & Simmons LLP
“Hugely experienced in intellectual property”, Simmons & Simmons is a one-stop shop for multinational brands. The set in Hong Kong, and its integrated international team, cultivates long-term and intimate relationships with its clients in order to provide trenchant solutions to legal issues that pose business problems. Eminent practitioner John Slater is the main man in Hong Kong. The sage counsellor oversees the prosecution and maintenance of the portfolios of Cathay Pacific and Dragonair, Aquascutum and Maus Frères International Services (owner of Aigle and GANT) and brings the heat in litigation.
Wilkinson & Grist
Quality comes first at Wilkinson & Grist, a commercial law leader with a “prominent, solid trademark filing and enforcement practice with a wide range of clients and referral relationships”. Working hand in glove with its Beijing IP agency, the firm dispenses joined up Hong Kong-China strategic brand advice to help international and local rights holders overcome any obstacle. Notably, it was the first non-People’s Republic of China entity to be approved by the Chinese government to set up an agency and its significant first-hand experience of working in China sets it apart from rivals. Andrea Fong has spent her entire career at Wilkinson & Grist and oversees the IP group with an assured hand. Her knowledge encompasses all aspects of portfolio management, litigation and monetisation. Serving as a consultant to the group, Yvonne Chua is a former head of the practice and an authority on all aspects of regional IP protection.
Marks & Clerk Hong Kong
UK import Marks & Clerk is a beacon of trademark prosecution excellence in Asia. “The firm has highly skilled professionals in Hong Kong who deal with matters quickly and expediently, while keeping clients fully updated.” Endorsed by foreign associates for his “practical approach, efficiency and in-depth trademark knowledge”, Simon Speeks acquits himself with distinction acting for US corporations with interests in China. He divides his time between Hong Kong and Beijing, as does all-rounder Sandra Gibbons, a “skilled, commercially focused professional who is friendly, helpful and a crystal-clear communicator”.
Norton Rose Fulbright Hong Kong
International player Norton Rose is one of the best firms in Hong Kong when it comes to transactional mandates and the commercial exploitation of intellectual property; the team also knows a thing or two about litigating patents and trademarks in China. IP and technology aficionado Justin Davidson is a draw for multinational companies. He works with dexterity across the contentious/non-contentious divide and takes a rigorously commercial approach to all of his activities.
Reed Smith Richards Butler
Reed Smith is one of the few firms to be recommended in the US, Europe and Asia regional chapters of the WTR 1000. Not only is it in a position to advise brands globally, it is well suited to regional work in Asia, given its IP resources in Hong Kong, Beijing, Shanghai and Singapore. Capitalising on all of this is Steven Birt, a perspicacious IP adviser with a focus on Greater China. “What sets SIPS apart from others is its combination of fluency in English and Mandarin and its first-hand familiarity with US businesses and legal departments – it means there are no barriers to effective communication. Its analysis is also far deeper and more insightful than that undertaken by other Chinese firms. It is responsive, practical and, most importantly, gets superb results.” “Joseph T Simone and Helen Tang are trusted and highly cost-effective advisers. They take the time to understand your business and always look for ways to innovate and provide creative solutions. They are wholeheartedly recommended to anyone needing IP services in China, Hong Kong and Taiwan and many other jurisdictions in the region.” Simone, who founded this outstanding boutique, leads the government affairs practice and is a source of abundant insight on registry matters and enforcement. Hong Kong, China and worldwide trademark prosecution is Tang’s province. Smart negotiator Troy Rice is the main contact for commercial IP matters. “Troy is easily accessible and his work is precise and comprehensive.”
Spruson & Ferguson
“Spruson & Ferguson can be relied on for prompt, commercially sensible IP solutions.” The firm, which recently acquired Ella Cheong Hong Kong & Beijing, manages client relations flexibly and is able to do so because of its technically sophisticated internal systems and forward-thinking approach. It also stands out as one of the few regional players with a unified ownership structure – different branches do not compete with one another to claim credit for work, leaving the focus purely on the client. Hong Kong-based Coral Toh coordinates multi-jurisdictional anti-counterfeiting efforts with panache and supplements her vibrant enforcement practice with a variety of portfolio management activities.
Stephenson Harwood
Riding a wave of glittering feedback, Stephenson Harwood makes its debut in the WTR 1000 Hong Kong listings this year. It has significantly strengthened its IP practice in Asia in the past two years; it formed an association with Weitu Law Firm in China which ramped up its Chinese coverage and shortly after this recruited Jonathan Chu to its Hong Kong team. Judging from the outstanding reviews he receives, bringing him on board was a smart move. “Jonathan is a lateral thinker and amazing problem solver who is as commercially savvy as they come. He exudes knowledge and integrity and is a brilliant strategist.” He truly is a master of enforcement and IP transactions. Not one to be outdone, Chu’s partner Jezamine Fewins is also a magnet for praise. “The depth of her knowledge and experience with civil procedure and her understanding of the nuances of enforcement in China and Hong Kong is of enormous benefit; she is equally skilled in procuring IP rights, too.” “Her cease and desist letters are so effective, that infringers usually comply with all her demands, which saves you from having to resort to expensive court proceedings. She stands out for her extreme responsiveness, 24/7 work ethic and value for money.” “Vivien Chan & Co’s IP services are thorough and comprehensive and its trademark advice is highly practical and client focused.” Vivien Chan herself is an eminent figure in the Hong Kong legal community and a respected IP expert who keeps her ear to the ground by attending international IP events. As a result of the sheer breadth of her expertise, she does not see IP matters in isolation, but approaches them within their broader commercial context.

Luminaries

Kenny KS Wong - Hogan Lovells

Individuals: enforcement and litigation

Alan Chiu - Ella Cheong & Alan Chiu, Solicitors & Notaries
Yvonne Chua - Wilkinson & Grist
Gabriela Kennedy - Mayer Brown JSM
Charmaine Koo - Deacons
Matthew Laight - Bird & Bird
John Slater - Simmons & Simmons LLP
Christopher Smith - Baker McKenzie
Loke-Khoon Tan - Baker McKenzie
Annie Tsoi - Deacons
Chris Vale - Rouse Legal
Edward Chatterton - DLA Piper Hong Kong
Jonathan Chu - Stephenson Harwood
Justin Davidson - Norton Rose Fulbright Hong Kong
Jezamine Fewins - Stephenson Harwood
Haifeng Huang - Jones Day
Chiang Ling Li - Jones Day
Rosita Li - Mayer Brown JSM
Shih Yann Loo - Baker McKenzie
Helen Tang - SIPS
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
Rodney Goh - Deacons
Patsy Lau - Deacons
Maria Smith - Baker McKenzie
Catherine Zheng - Deacons
Steven J Birt - Reed Smith Richards Butler
Vivien Chan - Vivien Chan & Co
Benjamin Choi - Mayer Brown JSM
Andrea Fong - Wilkinson & Grist
Sandra Gibbons - Marks & Clerk Hong Kong
Chloe Lee - Chloe Lee & Co
Rosita Li - Mayer Brown JSM
Rebecca Lo - Rebecca Lo & Co
Anthea Loo - Robin Bridge & John Liu
Vivian Poon - Deacons
John Slater - Simmons & Simmons LLP
Simon J Speeks - Marks & Clerk Hong Kong
Coral Toh - Spruson & Ferguson
Anthony Tong - Robin Bridge & John Liu

Individuals: transactions

Ella Cheong - Ella Cheong & Alan Chiu, Solicitors & Notaries
Alan Chiu - Ella Cheong & Alan Chiu, Solicitors & Notaries
Jonathan Chu - Stephenson Harwood
Gabriela Kennedy - Mayer Brown JSM
Charmaine Koo - Deacons
Troy Rice - SIPS
Anthony Tong - Robin Bridge & John Liu
Alison Wong - Bird & Bird

China and SARs: Hong Kong: The Bar

Senior counsel

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

Junior counsel

Douglas Clark - Gilt Chambers
Sebastian Hughes - Prince’s Chambers
Ling Chun Wai - Des Voeux Chambers

Senior counsel

Lauded as “one of the most experienced counsels solo practitioner Andrew Liao SC has been at the forefront of many headline-grabbing cases in Hong Kong. Winnie Tam SC of Des Voeux Chambers is another outstanding barrister and a leading arbitrator and mediator. Having served until recently as chair of the Hong Kong Bar Association, she has been pivotal in the development of the local IP landscape. “Among the most active IP silks in Hong Kong”, John Yan SC is “incredibly bright and meticulous in his preparation for cases”. He operates out of Counsel’s Chambers.

Junior counsel

Douglas Clark is an experienced IP barrister with numerous high-profile victories in Hong Kong and China on his résumé. A source of infinite insight on IP and commercial strategies, he never fails to understand what a result means beyond the courtroom. Sebastian Hughes has a diverse litigation practice of which intellectual property forms a significant part. The World Intellectual Property Organisation mediator and arbitrator is also admitted to arbitration centres in Hong Kong and Kuala Lumpur. Ling Chun Wai of Des Voux Chambers represents parties in a diverse array of commercial and administrative cases and is a seasoned pro in IP, particularly trademark, disputes.

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Issue 72