Singapore

Singapore is becoming a premier IP hub in the region, as was recently signalled by the creation of the Makara Innovation Fund, a S$1 billion fund designed to help innovative companies to develop their businesses and expand overseas. Among other moves, the recent reduction of fees for filing new registrations is helping to entice more applicants to the Intellectual Property Office of Singapore. The IP commercialisation and financing scene is also hot, with new initiatives and activities continuing apace. This is an exciting time for the city-state and its IP community.

Firms: enforcement and litigation

1
Baker McKenzie Wong & Leow
Bird & Bird ATMD LLP
Drew & Napier LLC
2
Allen & Gledhill LLP
Lee & Lee

Firms: prosecution and strategy

1
Allen & Gledhill LLP
Amica Law LLC
Baker McKenzie Wong & Leow
Bird & Bird ATMD LLP
Drew & Napier LLC
2
Dentons Rodyk & Davidson
Ella Cheong LLC
Lee & Lee
Marks & Clerk Singapore LLP
RHTLaw Taylor Wessing LLP
WongPartnership LLP

Firms: transactions

H
Amica Law LLC
Baker McKenzie Wong & Leow
Bird & Bird ATMD LLP
RHTLaw Taylor Wessing LLP
WongPartnership LLP
Allen & Gledhill LLP
Allen & Gledhill’s “highly reliable and commercial advice” across the IP spectrum resonates with innovative brand owners holding diverse portfolios. The firm is unafraid to turn the magnifying glass on its own service; this uncommon degree of self-reflection has led to some of the fastest response times in the jurisdiction. An outstanding roster of prosecution clients includes Samsung Asia, Shell Brands International, Sharp, Turner Broadcasting System and Singapore Post, many of which have come to rely on the firm for protection not only in Singapore, but also in China and India. Taking care of all these companies is the outstanding Pei Lin Low, a highly efficient manager of Singapore and worldwide trademark portfolios for large multinationals, who also oversees a team turning out top-drawer patent applications. Contentious lead Stanley Lai SC provides inspiring leadership to a powerful 50-strong IP team. “A really solid operator who can be aggressive when the situation requires”, Lai is one of Singapore’s top IP and commercial litigators.
Baker McKenzie Wong & Leow
Baker McKenzie needs little introduction as a global trademark law powerhouse; it has excellent professionals stationed in offices across the globe. Marking out the Singapore group – Baker McKenzie Wong & Leow – as a go-to in Asia is Andy Leck, a popular lawyer who receives some of the best feedback of anyone in the market. “Andy is very commercially focused and provides deeply strategic advice on portfolio matters, civil infringements and anti-counterfeiting. He takes the time to understand what you need, provides robust solutions and, ultimately, delivers great success.” “He is very responsive and pragmatic as an adviser, and has business acumen in additional to legal expertise.” Lately Leck has produced sterling work for Sanrio Company on routine enforcement actions; he also handled a landmark High Court case for Sanrio involving the issue of intermediary liability for the transhipment of infringing goods.
Bird & Bird ATMD LLP
“With perhaps just one exception, no other firm in Singapore has Bird & Bird’s demonstrated ability and technological sophistication to consolidate and manage a global trademark portfolio. The firm’s rates for this are by far the most reasonable, and it is flexible in the way it delivers the service.” Also setting the firm apart is a sector-focused approach which provides the team deep knowledge of the wider commercial issues that its clients face in their markets; crucially, the group can blend this understanding into the IP strategies that it puts forward. For the Singapore section, the key sectors include automotive and aviation, financial services, life sciences, retail and technology. The three-partner team is captained by Lorraine Anne Tay, who garners sparkling feedback from those she represents. “Lorraine is very hands-on with the work, and a commercially savvy, client-centric operator. She won’t take action just for the sake of it, and you can trust that she will always have your best interests – and budget – in mind.” “Thorough and dedicated, she goes the extra mile and adds incredible value with her ability to assist on trademark matters across Asia. She has an excellent knowledge of world IP matters and processes.” The chief IP enforcer here is Alban Kang, who recently represented Allergan in a successful trademark infringement and passing-off claim before the Singapore High Court – this was the first local decision regarding the comparative advertising defence to trademark infringement. “Sharp, experienced, personable and sensitive to cost”, Kang is an “enforcement pioneer” in Singapore.
Drew & Napier LLC
The litigation and enforcement practice is the jewel in the crown of Drew & Napier’s wide-ranging IP operations; the team is regularly on the frontline in cases that are shaping the market. Head of intellectual property Dedar Singh Gill, for example, successfully defended Petra Food against Nestlé’s claim for trademark infringement of its Kit Kat shape registrations; the Court of Appeal dismissed Nestle’s case in late 2016. This was the first time in Singapore that a panel of five judges, which is reserved for jurisprudentially significant cases, had convened in an IP dispute. “Every point he makes in court, Dedar seems to hit a home run.” Head of healthcare and life sciences Tony Yeo is another potent advocate, particularly in patent cases; Yvonne Tang, meanwhile, focuses on trademarks within the context of her broad infringement, anti-counterfeiting and administrative disputes practice. Dextrously crossing between the contentious/non-contentious practices is Siau Wen Lim, who blends fine-milled regulatory knowledge into her practice. Also recommended is Cecelia Girvin, a consultant whose patent and trademark registration and enforcement wisdom is a boon to colleagues and clients.
Lee & Lee
With more than 90 lawyers across a number of departments, Lee & Lee is a sturdy commercial law firm. Its well-established team of IP experts – which includes elite litigator Tee Jim Tan and worldwide portfolio coordination whiz Yee Swan Boo – has all the bases covered, so that brand owners can one-stop shop here with confidence. All-round prosecution, litigation and commercialisation ace Zechariah Chan has years of high-level in-house work on his résumé and imbues the practice with a commercial sensibility.
Amica Law LLC
Amica Law impresses as a “very strong, creative and results-oriented firm”. “One of its key strengths is its collegiate culture, which has helped to foster innovative and solutions-driven thinking.” Setting the tone in this regard are Jo-Ann See, Winnie Tham, Wilson Wong and Jason Chan, who form a brilliant team. An “exceptional leader”, See fulfils the prosecution needs of an extensive list of multinationals, including Starbucks, Amazon.com, Oracle, Philip Morris and Exxon Mobil. Someone who “cuts through issues swiftly to identify the best practical and commercial avenues to take”, Tham is another deft portfolio strategist. Her broad expertise makes her well suited to advising clients on freedom to operate – something she has been doing lately, alongside prosecution, for Musim Mas Holdings. IP transactional work is Wong’s metier; after his colleagues have obtained IP rights, he immediately sets to work identifying clever ways to maximise their value. Chan leads the litigation section with verve and shows his best form in complex disputes that throw up novel issues. He is well accustomed to working across borders and has recently been busy with enforcement activities throughout Southeast Asia for Babyzen.
Dentons Rodyk & Davidson
Dentons Rodyk & Davidson has “a good pedigree in intellectual property” and renders a complete protection, commercialisation and enforcement service to leading brands, primarily in the technology space. The full-service firm also runs an agency, Rodyk IP, composed of patent and trademark attorneys who focus on registration and prosecution activities. Clients therefore get the best of both worlds – the efficiency of a specialist filing outfit and the legal resources of a muscular commercial firm. Ai Ming Lee is a key contact for both arms of the organisation. A senior consultant with over three decades of experience on her CV, she is a sagacious counsellor on patent and trademark matters. Donaldson & Burkinshaw is an influential player in Singaporean intellectual property, having practised in the area for some 70 years. A top-five filer locally, the firm’s 40-strong team has also gained traction as an IP protector across the Association of Southeast Asian Nations, particularly among US, Japanese and European clients. Helpful in this regard are additional offices in Malaysia and Vietnam. Sitting at the head of the practice is Michelle Ng, a deft IP deal broker and a safe pair of hands for valuable portfolios. Litigants should look to Chi Duan Gooi for perspicacious and strategic representation. Her preparation work is flawless, so when it comes time to stand up in court, half of her battles are already won.
Ella Cheong LLC
Proving itself “practical, efficient and highly knowledgeable in trademark and domain name matters”, Ella Cheong LLC continues to fare well as an IP boutique in Singapore. Consistency and stability has been the story of the past 12 months, although existing clients, which include a worldwide leader in aeronautics and a major US retailer, are giving the firm expanded regional portfolio management responsibilities. The highly personal service provided by the team is reaping dividends. Steering the practice is Kar Liang Soh, who supports the business development of clients in many industries by delivering legal certainty – and strategic insight – on trademark law and other IP topics. He is well known for his domain name expertise, and was the first Singaporean appointed as a World Intellectual Property Organisation domain-name panellist. Balancing a weighty prosecution and contentious workload without ever sacrificing quality is Kevin Wong.
Marks & Clerk Singapore LLP
This globally famous IP specialist knows all about trademark protection in Asia. Crucial to the success of the firm’s regional mission is the Singapore branch, which is ideally located to act as a conduit for business activities across Southeast Asia, as well as for local matters; it performs both roles to the highest standard – this is Marks & Clerk, after all. The star of the show is Candice Kwok, who showcases “an excellent grasp of her clients’ exact needs” when providing “comprehensive, and timely advice”. Sources also note that “her responsiveness and outstanding customer service never fail to amaze”. Recently, she stewarded oppositions for defence technology leader Thales Optronique and revocation proceedings for Bentley Motors to a successful close.
RHTLaw Taylor Wessing LLP
Thinking commercially about intellectual property is something that RHTLaw Taylor Wessing excels at – not just on the transactional side, but in all areas of the practice. Portfolios are managed in a way that aligns with clients’ broader objectives, while litigation battles are fought with business wins in mind. Jonathan Kok has successfully established himself as an industry expert, and not just an outside party to consult on black-letter law. Client feedback bears this out: “He tells us when he feels it isn’t necessary to register, and has valuable suggestions on other things we could be doing – he has our best interests at heart.” “His advice goes way beyond the particular case at hand.” Moreover, he “is incredibly responsive, charges reasonable fees, and keeps you updated as matters progress”. Promoting a regional outlook at the firm is Rizwi Wun, who is responsible for the firm’s Korean desk. His thought leadership on technology law gives him a unique selling point.
WongPartnership LLP
WongPartnership is a top option for those who want to monetise their IP assets and do deals; the team acquits itself with distinction around the negotiation table and provides gold-standard guidance on IP-rich deals. “A strong all-rounder in intellectual property and technology, but with a focus on transactions”, Chung Nian Lam is a name for the contact book. He heads the IP, technology, telecoms and data protection practices, in which Jeffrey Lim also sits. Thanks to his broad base of knowledge, Lim is an expert at delivering holistic solutions to technology clients; his competence encompasses cyber security, data protection and regulatory law, among other things.

Individuals: enforcement and litigation

Highly recommended
Alban Kang - Bird & Bird ATMD LLP
Stanley Lai SC - Allen & Gledhill LLP
Andy Leck - Baker McKenzie Wong & Leow
Dedar Singh Gill - Drew & Napier LLC
Recommended
Jason Chan - Amica Law LLC
Cyril Chua - Robinson LLC
Chi Duan Gooi - Donaldson & Burkinshaw LLP
Ai Ming Lee - Dentons Rodyk & Davidson
Siau Wen Lim - Drew & Napier LLC
Max Ng - Gateway Law Corporation
Ravi Ravindran - Ravindran Associates
Tee Jim Tan SC - Lee & Lee
Tony Yeo - Drew & Napier LLC

Individuals: prosecution and strategy

Michelle SH Ng - Donaldson & Burkinshaw LLP
Jo-Ann See - Amica Law LLC
Lorraine Anne Tay - Bird & Bird ATMD LLP
Cecelia Girvin - Drew & Napier LLC
Sheena Jacob - JurisAsia
Candice Kwok - Marks & Clerk Singapore LLP
Margaret Law - Margaret Law Corp
Pei Lin Low - Allen & Gledhill LLP
Teresa O’Connor - Infinitus Law Corp
Kar Liang Soh - Ella Cheong LLC
Winnie Tham - Amica Law LLC
Mary Thomas - Schweiger & Partners (Singapore) LLP
Kevin Wong - Ella Cheong LLC
Audrey Yap Su Ming - Yusarn Audrey
Yee Swan Boo - Lee & Lee
Chung Nian Lam - WongPartnership LLP
Jeffrey Lim - WongPartnership LLP
Soo Ling See Tow - Colin Ng & Partners LLP
Francine Tan - Francine Tan Law Corporation
Yvonne Tang - Drew & Napier LLC
Rizwi Wun - RHTLaw Taylor Wessing LLP

Individuals: transactions

Zechariah JH Chan - Lee & Lee
Sheena Jacob - JurisAsia
Jonathan Kok - RHTLaw Taylor Wessing LLP
Chung Nian Lam - WongPartnership LLP
Margaret Law - Margaret Law Corp
Jeffrey Lim - WongPartnership LLP
Joyce A Tan - Joyce A Tan & Partners
Wilson Wong - Amica Law LLC
Audrey Yap Su Ming - Yusarn Audrey
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Issue 71