Taiwan

While trademark infringement remains a real problem in Taiwan, brand owners have been reassured by the strengthened protection and slick administrative procedures which have developed in recent years. Global IP giants such as Baker McKenzie and Jones Day have established a firm foothold on the island, but many local firms are also offering first-rate IP services to domestic and foreign clients.

Firms: enforcement and litigation

1
Baker McKenzie
Formosa Transnational
Lee and Li Attorneys at Law
Tsar & Tsai
Winkler Partners
2
Eiger
Jones Day
Saint Island International Patent & Law Offices
TIPLO - Taiwan International Patent & Law Office

Firms: prosecution and strategy

1
Lee and Li Attorneys at Law
Saint Island International Patent & Law Offices
Tai E International Patent & Law Office
TIPLO - Taiwan International Patent & Law Office
2
Baker McKenzie
Eiger
Winkler Partners
Baker McKenzie
International brand owners are in safe hands with IP colossus Baker McKenzie, whose Taipei office works in harmony with the firm’s network across East Asia to dispatch the most testing trademark instructions with confidence and poise. Having forged close relationships with relevant government agencies, the team is a spirited ally in the fight against fakes. Cogent advocate Grace Shao has chalked up an admirable track record in the courtroom for clients in the entertainment, pharmaceuticals and high-tech sectors.
Eiger
Steeped in regional insight, fast-growing outfit Eiger devises clued-up trademark strategies for clients operating across Greater China. Surefooted in all aspects of IP management, it is especially well reputed for its contentious output. Go-to professional Eve Chen works for many prestigious clothing brands; she recently cleared the market of counterfeits and parallel imports for Abercrombie & Fitch. As chair of the IP Committee of Taiwan’s European Chamber of Commerce, hotshot litigator John Eastwood understands the priorities of global businesses; together with Chen, he represents Philip Morris in all brand rights matters in the country.
Formosa Transnational
A real flair for dispute resolution makes Formosa Transnational a preferred choice for trademark owners with complex contentious conundrums to resolve. The firm helped to cement its stellar reputation through its successful representation of Budweiser Budvar against longstanding adversary Anheuser-Busch in oppositions and administrative litigation. Formosa’s trademark chief is Fa-Li Lin, a flexible practitioner who handles even the most difficult matters with composure. Another major asset is top-tier trial lawyer Yulan Kuo, who combines profound IP wisdom with a fine-grained understanding of internet, advertising and marketing law.
Jones Day
With an expansive network around the globe, Jones Day is a compelling option for clients with cross-jurisdictional brand interests. As well as coordinating international portfolio management, the Taipei outpost stands out for its polished performances in trademark disputes. The fulcrum of the team is Jason Chen, a silver-tongued litigator who recently acted as lead counsel for China Petrochemicals Development Corporation in a high-stakes battle. His contentious nous was honed over a decade as the country’s first IP law judge.
Lee and Li Attorneys at Law
A distinguished presence on the Taiwan soft IP landscape for more than half a century, Lee and Li remains an elite player today. The main draw is Joseph Shih-Pin Yang, a seasoned prosecution maven with cutting-edge knowledge of case law. Working alongside him is the versatile Ruey-Sen Tsai, who shines brightest in administrative litigation and complex licensing negotiations.
Saint Island International Patent & Law Offices
The gilt-edged Saint Island International operates flawlessly on both sides of the contentious/non-contentious divide. Sage specialist Julia Hung provides perceptive rights management advice and robust advocacy to a panoply of household names. Accomplished in the registration of non-traditional marks, she recently won a favourable decision to secure 3D brand protection for KOSE. In another headline-grabbing victory, disputes whizz William Chen successfully defended Apple Daily’s trademark application against an opposition by Apple Inc. Commended by clients for her “responsive, practical approach”, the multi-talented Amanda Liu is another key contact.
Tai E International Patent & Law Office
With 35 dedicated professionals on staff, trademarks are central to the offering of general practice firm Tai E International, which ranks among the most prolific filers in Taiwan. One of its illustrious professionals, Fred Chi-Tai Yen, has a broad practice encompassing prosecution, mediation, arbitration and enforcement. Alongside his equally versatile colleague Amanda Hung, he recently obtained the cancellation of a confusingly similar trademark for Audi and cleared the market of counterfeit products for UMAREX.
TIPLO - Taiwan International Patent & Law Office
Equally adept at handling tactical prosecution and high-stakes disputes, TIPLO has earned a glowing reputation for its A-to-Z service. Superlative client service and deep IP insight are the cornerstones of the practice, best personified by department head Johnny Yang; having spent more than three decades at the coalface, he has seen and done it all. Business savvy and alert to the nuances of IP law, teammate HG Chen knows what it takes to get signatures on the bottom line of brand-rich deals. The skilful practitioners and well-oiled support systems at boutique Tsai, Lee & Chen resonate with many prestigious international brands, which entrust it with the stewardship of their crown-jewel assets across the entire trademark lifecycle. Underpinning the firm’s formidable reputation for contentious work is Crystal Chen, a tenacious litigator who adroitly coordinates cases across jurisdictional boundaries. The firm recently prevailed in court for Rimowa against a number of infringers and successfully pleaded for Kawasaki in opposition proceedings.
Tsar & Tsai
Tsar & Tsai draws on a deep talent pool to offer the full spectrum of trademark services, executing with poise on even the most demanding briefs. Its battle-hardened gladiators in the anti-counterfeiting arena have won an ardent following among players in the clothing and luxury goods sectors. Marshalling the IP department is the agile Joyce Ho, whose refined understanding of the commercial value of intellectual assets makes her a prized counsellor. Her broad-ranging knowledge means that she can tackle any brand rights conundrum.
Winkler Partners
Top-tier outfit Winkler Partners has attracted the attentions of a glittering clientele: it represents some eight of the world’s top 20 brands as ranked by Interbrand. The firm’s standing is further reflected by its prodigious prosecution work, with more than 1,400 applications filed in 2015. “An extremely knowledgeable and sophisticated counsel with a hands-on, practical approach”, trademark and competition law sage Peter Dernbach is an influential figure on the global IP scene and deftly manages matters across the region. Esteemed colleague Christine Chen is a crack litigator with a string of ground-breaking victories on her record, including the country’s highest-ever damages award in a trademark suit.

Individuals: enforcement and litigation

Eve Chen - Eiger
Jason Chen - Jones Day
William Chen - Saint Island International Patent & Law Offices
HG Chen - TIPLO – Taiwan International Patent & Law Office
Christine Chen - Winkler Partners
Peter J Dernbach - Winkler Partners
John Eastwood - Eiger
Joyce Ho - Tsar & Tsai
Yulan Kuo - Formosa Transnational
Fa-Li Lin - Formosa Transnational
Amanda Liu - Saint Island International Patent & Law Offices
Grace Shao - Baker McKenzie
Ruey-Sen Tsai - Lee and Li Attorneys at Law

Individuals: prosecution and strategy

Crystal Chen - Tsai, Lee & Chen Patent Attorneys & Attorneys at Law
Peter J Dernbach - Winkler Partners
Julia Hung - Saint Island International Patent & Law Offices
Amanda Hung - Tai E International Patent & Law Office
Grace Shao - Baker McKenzie
Joseph Shih-Pin Yang - Lee and Li Attorneys at Law
Johnny Yang - TIPLO – Taiwan International Patent & Law Office
Fred Chi-Tai Yen - Tai E International Patent & Law Office
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Issue 66